Orphan works legislation on the way

When the Gowers Review recommended that legislative and administrative action be taken to deal with the problem of orphan works - works that appear to be out of copyright but for which no author or copyright owner can be identified - I recall that many practitioners said "what problem?". It seems to me that if you can't identify who to ask for permission to use a copyright work, it's not going to be a work that commands a significant royalty and therefore your exposure is small. That's advice that I think a lot of clients have had from their lawyers over the years - perhaps put aside a contingency fund in case someone appears with a claim for royalties, but it's not likely to come to much.

The British Library evidently thinks otherwise, according to a pretty nonsensical press release on the subject, saying "Orphan Works are a vital stepping stone in the copyright roadmap". It's a sad day when a cultural institution of such importance as the BL produces such a horribly mixed metaphor. And I'd have thought that orphan works were more like roadworks or landslides than stepping stones.

The same press release tells us what the BL's Principles on Copyright Law are. One of them states: "Researchers and libraries need to be able to make available 'fair dealing copies' of anything in their collections, including sound and film recordings that Fair Dealing does not currently relate to." Surely the British Library understands that a proposition is a bad thing to end a sentence with? And what do they mean by "Fair Dealing" (the capitalisation makes it seem more important, doesn't it?)? Section 29 is limited in this way in its scope, but section 30 isn't, so this sweeping statement about fair dealing is only partly correct. And section 29, now that not only does study have to be private but also research must be non-commercial, permits very little, begging the question of what on earth a "fair dealing copy" might be. I thought the Act was alredy pretty accommodating when it came to libraries making copies for those purposes, where the library user (I should probably call them a "customer" or "client") gives the prescribed certificate.

Not a development that I will get excited about. Not, at any rate, in a positive way.

One can never have too many patent judgments ...

Teva UK Ltd v Merck & Co, Inc [2009] EWHC 2952 (Pat) (20 november) is one of those patent cases that looks as if it will teach you more about the science involved (in this case, treatments for glaucoma) than about the law. it involves questions about amendments to a patent, added matter and inventive step, runs to 164 paragraphs and concludes (in the judge's precise words):

i) the Patent as proposed to be amended is invalid for lack of inventive step;

ii) had the Patent as proposed to be amended not been invalid, I would have allowed the amendment to claim 1, but not the amendment to claim 18 (which adds matter);

iii) unamended claims 1 to 6 and 8 to 9 lacked inventive step;

iv) unamended claim 20 added matter.

I'll see if there is more to it than has met my eye so far.

What price an intellectual property indemnity?

Coincidentally, I spent Tuesday morning lecturing on software licences, including a long discussion with one of the five people on the course about how to deal with third party software incorporated into what the software industry is pleased to refer to as a "solution". I suggested that the indemnity is the important thing to consider. Today I find The Codemasters Software Co Ltd v Automobile Club De L'Ouest [2009] EWHC 2361 (Pat)- a decision from 17 September by Arnold J - considering the effect of an indemnity clause, although not in a sofware licence.

The claimants, to whom I'll refer as Codemasters (I don't like the fashion for filling articles and blog postings with defined terms like a contract, but I'll resist the temptation to call them Reg, because it's not their name - Robyn Hitchcock fans will understand the reference, though how many of them will read this?), sued ACO who are the organisers of a certain well-known motor race - and, I learn from the judgment, an associated series of races. My friend Jacques - I wonder what became of him? perhaps I should look on LinkedIn and so on - used to be a member of the club and marshalled at the Vingt-Quatre Heures. Anyway, what happened was that Codemasters, who produce computer games, entered into an arrangement with ACO which included - or purported to do so - permission to include representations of certain motor cars that might be found competing in the events. As far as tehar manufacturers were concerned, however, ACO had no right to do so. Codemasters have obtained, or are negotiating to obtain, the permissions they need but unsurprisingly are looking to ACO for redress.

The case concerned the interpretation of the indemnity clause, which read:

10.3 Each party (the 'Indemnifying Party') will indemnify, defend and hold harmless the other party and its affiliates, parent companies, subsidiaries, and their respective directors, officers and employees, from any and all claims, causes of action, suits, damages or demands whatsoever, arising out of any breach or alleged breach of any agreement or warranty made by the indemnifying Party pursuant to this Agreement.

The warranty given by ACO read:

10.1. ACO represents, warrants and covenants to Codemasters that:

(i) has the legal right to enter into this Agreement, to fully perform all its obligations hereunder, and to grant all rights and licenses which it is granting under this Agreement, free, clear and unencumbered, and without violating or breaching the legal equitable or contractual rights of any person anywhere in the world;

(ii) the use and reproduction of the Endorsements as authorized hereunder will not infringe, violate or breach any intellectual or industrial property or moral right (or any rights of a similar nature) anywhere in the world.

"Endoresements" included "Car manufacturer names, marks and car designs for all participants in the Championships". ACO argued that the indemnity only covered claims made under other agreements - not under teh Agreement itself. That sounds dodgy, because it goes against what most people would assume was the whole purpose of the Agreement and the indemnity clause, but in the judge's words "it is common ground, and in my judgment rightly so, that clause 10.3 is, on any view, not felicitously drafted". He went on to observe, in a nice phrase, that "it is easier to accept apparently uncommercial consequences if a clause is clearly drafted than if it is not". The trouble lay in those words "pursuant to" near the end of the clause. Oh, how I loathe those compound prepositions that most lawyers find irresistable! A simple "in" would have avoided the ambiguity - as, in the other direction, would "separate from and in consequence of", a double compound preposition ... both of which interpretations were possible, according to the judge. Anyway, he didn't see any compelling reason to prefer one construction over the other, so he stood back and considered the purpose of the clause and the commercial effect of the rival interpretations: and he thought that its purpose was reasonably clear:

It seems to me that the purpose of the clause is to provide an indemnity against claims and demands arising out of, so far as Codemasters are concerned, its exploitation of the rights granted under the Agreement. In my experience, it is common in intellectual property licence agreements, though by no means universal, for the licensor to indemnify the licensee against claims by third parties that exploitation of the licence rights has the consequence that the licensee has infringed, or is alleged to have infringed, the third party's rights.

The judge considered why an indemnity to that effect might be included - indeed, is commonly included - in such contracts, and opined that one of the reasons the indemnity was not satisfactory as it stood was that it tried to be mutual. Examples of the sort of thing that the indemnity might cover in the opposite direction were, he thought, "distinctly unimpressive". Other arguments also failed to impress, and he concluded that teh relevant clause was to be construed in the manner contended for by the claimaints. It's probably what most of us expected when we started reading the judgment, but the comments on drafting are well worth remembering.

Representation before the Community courts

Case C‑59/09 P is an appeal to the Court of justice of the European Community by Hasbro against what it argued was a decision of the CFI refusing to allow it to be represented in other proceedings before the court by a Trade Mark and Design Litigator. The court reckoned that the letter saying that Hasbro could not be so represented was not a decision which could be the subject of an appeal, within the meaning of Article 56 of the statute of the Court of Justice. It does not decide that a Trade Mark and Design Litigator cannot represent a client at a hearing (though I suppose that in practice because the original decision stands that is the practical effect of it), nor does it address the underlying question of whether such a person is a lawyer within the meaning of Article 19.

Jonathan Goldsmith has written about the decision recently on the Law Society Gazette blog (here) and incurred the wrath of my old friend (I mean longstanding) Tibor Gold. I find my self with no strong views about this, but don't get me started on the use of the title "atorney" ...

Moral panics and the Copyright Laws

A lecture by Bill Patry, Google's senior copyright counsel, to Benjamin N Cardozo School of Law in New York on 12 October. Well worth an hour of anyone's time to listen ...

Court of Appeal on disclosure

The Court of Appeal's judgment in Leo v Sandoz is out, and written up by the IPKat here. Floyd J had found the patent valid, an it was common ground coming into the appeal that if that were the case it was infringed by Sandoz's product. Validity was the only issue for Jacob and Patten LJJ, and that turned first on whether the claimed product was novel over an earlier patent for a different use of the same medicine, and second on whether it was obvious because a person skilled in the art (Jacob LJ pointed out that this would in practice be a team of people) would have "come upon the invention without any expectation of successfully finding a better product." Such an obviousness attack should, he said, be scrutinised with great care: "one must be very confident that the steps said to lead to the discovery of a new and beneficial product 'by accident', as it were, were at the least really likely, almost mandated. If you need to do research to find an invention then, for a finding of obviousness, that research must be of a kind which a skilled man would do, not which he might do" (emphasis added).

The appeal raises difficult issues about the principles on which appeals should proceed, too. The appellants would only succeed if they could show that "the decision of the lower court was wrong" (CPR Part 52.11(3)). The attack on the judge's findings of fact, evaluation of the evidence and value-judgement conclusions amounted to one of "perversity" - that no judge could reasonably have reached them on the evidence. The application of the relevant CPR to such cases was considered by the Court of Appeal in more detail and some stringency in Merck's Patents [2003] EWCA Civ 1545 [2004] F.S.R. 332 at [62-71] per Buxton LJ and [71] per Sir Andrew Morritt V-C. The Biogen principle [1997] RPC 1 at p.45 per Lord Hoffmann is also relevant in an obviousness case: "The Judge's conclusion must be reached as an overall assessment of the relevant evidence, both technical and non-technical. If he has made such an assessment, weighing all the factors involved, then it will be difficult indeed to show that he has made an error of principle", according to Jacob LJ. Unsurprisingly, he did not consider that the appellant had succeeded in climbing the mountain that this lot placed in its way, and Patten LJ agreed.

October 2009 IP update

I've recorded the IP update for October, available here with written notes here. The sound file runs for about 48 minutes.

You will shortly be able to get CPD points for listening to this and doing a few multi-choice questions, but you'll have to go through CPD Channel and pay a modest fee to get the points.

If you have any comments, I'd be delighted to receive them. At least, I hope I would be delighted - even if your comments are critical, I would be delighted to know that you have at least listened ...

Too many law reports

I have been looking at the Incorporated Council of Law Reporting website, as good a way to pass some time as any other ... and chatting to Charon QC this morning on the phone I recalled something that I thought I had read on a page on that site: "The almost universal view among judges in England is that too much, rather than too little, is reported."

I find this when I look at the reports pouring out of the Patents Court and elsewhere and appearing on BAILII. To make matters worse, they often run to hundreds of paragraphs these days - and you plough through them - or even just jump to the end - only to discover that there isn't anything important in them. OK, you might have picked up a few useful bits of trivia about recombinant DNA or potato separators along the way, but nuggets of law were what you really wanted. Maybe I should confine myself to reading Court of Appeal judgments in future? But a diet of nothing but Jacob LJ might be a bit too rich, albeit simultaneously enlightening and entertaining.

Domain names: a passing off and trade mark infringement case - just like old times!

Wasabi Frog Ltd v Miss Boo Ltd is an old-school passing off and trade mark infringement case to deal with a domain name problem. Just the sort of case that has hardly been seen since dispute resolution procedures were introduced, ten or so years ago. It shows that there is still room for good old-fashioned litigation, although Jane Lambert has raised the important question of whether the parties should have explored other methods of dispute resolution. It looks to me as if taking this expensive route enabled the claimant to get what it needed in very short order - the defendant's trade mark application was published in late August, and by early November they have an injunction. And of course the injunction runs in the world of bricks and mortar retailing as well as on-line, so using Nominet's DRS wouldn't have been as effective and hardly any quicker. Using the DRS (or another registrar's similar procedure, such as the UDRP) is fine for dealing with domain name registrations, but where a trade mark infringement is concerned something else is probably needed.

Trade mark case delayed by Christmas

Legal Week reports that a trade mark infringement case between Asda, the supermarket chain (owned by Wal-Mart) and Specsavers, the high street optician chain, has been delayed to allow for the fact that as a term of their appointment to Asda's panel, Pinsent Mason had to agree that lawyers working on the account would work for three days over Christmas stacking shelves.

While I am sure that the lawyers will get to know their client better as a result, I'm not sure that stacking shelves will teach them much about the business. If the report is accurate - and I do treat everything I read in the press with suspicion - it seems to me that no-one's interests are being served save those of Asda's shareholders. Junior lawyers (it doesn't seem to apply to partners) lose days over Christmas, prospective part-time workers lose the opportunity to earn some money, and Specsavers have to wait for their day in court. If Pinsent Mason's social responsibility efforts are reduced to the extent that they are obliged to give time to a client, that would be the icing on the cake.

Potato separators: better than slurry ...

Long ago, when I first discovered that area of law that had recently become known as intellectual property and found myself embroiled in issues relating to industrial designs, the arguments revolved around motor vehicles - Morris Marina exhaust pipes, Transit van panels, and even copies of the Caterham (né Lotus) 7. then along came unregistered design right, and we moved into the field of agricultural machinery - pig fenders and slurry separators.

Today the judgment of Floyd J in Grimme Landmaschinenfabrik GmbH & Co KG v Scott (t/a Scotts Potato Machinery) [2009] EWHC 2691 (Pat) has been published. The machine in question is a potato separator - preferable in so many ways to a slurry separator, although I don't suppose it's necessary to bring them to court - and there is an unregistered design right angle as well as a patent angle. UDR had in fact expired at the end of last year, but the judge found some infringements: he also found some infringements of the patent, at the same time as holding that the first claim was invalid for obviousness.

Another brick in the wall

Years ago, I felt offended by the assumption in some quarters that intellectual property rights whould have holes knocked in them to permit what might broadly be called copying. I reasoned to myself, and anyone else who would listen, that it was right that someone who had created a design or whatever else it might have been (but in my life it was usually designs) should have exclusive rights over it.

It all came about because I was working in the motor industry and my sympathies (though I should have been neutral) tended to lean towards the car manufacturers. On what basis did the then BL or Ford or any of them owe the parts makers a living? They had taken the trouble to design the cars, and create the market for replacement parts (and for original equipment components too, of course). There appeared to be a lot of potential free-riders hoping to take advantage.

Whether I was correct or not, Parliament was determined to make the spares market free - well, the government was, and perhaps Parliament went along with it, despite my working the words "fair weather umbrella" into a second reading speech I drafted for one MP friend. Consumer benefit was assumed to lie in cheap spare parts. The House of Lords had already done the damage in BL v Armstrong, I suppose, so Part III of the Copyright, Designs and Patents Act was just the icing on the cake. I don't think the change has caused the demise of the car industry - though something seems to have damaged it in the intervening years.

More recently, I have been railing against intellectual property absolutists. Today I read that Lego are off to the Court of First Instance to argue that they should be entitled to keep a four-by-two plastic brick on the CTM register. Is this another instance of absolutism, of overreaching intellectual property rights that should be trimmed back? Or is it a legitimate way to try to stop free riding?

One man's meat, as they say ... To me, Lego is Lego and should be in perpetuity. I am young enough to have played with it as a child, and whatever has come along since simply isn't the real thing to me. Any argument that lego still deserve protection for their innovation is hollow, of course: they have had fifty or more years to cover the development costs and make a healthy profit. But I do find the sight of copyists and imitators claiming to be entitled to avail themselves of someone else's brilliant idea unedifying. Is a trade mark the right way to protect something like this? Well, to my mind the issue has transcended design or copyright law (even patent law) and the product is serving a trade mark purpose. It embodies Lego's reputation, and so long as they maintain that reputation and teh shape trade mark speaks so clearly about the origin of the product, it should be protected.