Copyright does not belong in the fashion world

Hat tip to Ed Grey (@EditorPatentEd) for the link to this piece on TechDirt, which perfectly encapsulates so much of what I find baffling about the fashion world, and presents a pretty good case for keeping copyright out of it. Thank goodness, at least, that over here we don't allow copyright to get involved very much any more - not since 1989 - and UK UDR is short, Community UDR fleeting.

Protecting trade secrets - to the maximum

An interesting piece from the FT about Cosworth, the racing engine manufacturers (inter alia). Once upon a time they supplied engines to most of the teams taking part in the World Championship, and indeed so long as you had a Cosworth DFV engine, a Hewland gearbox and some fabrication skills you could build yourself a Formula 1 car - as Peter Connew did. How scathing we who learned about motor racing by reading Denis Jenkinson's reports in Motor Sport used to be about "Cosworth kit-cars". But Cosworth are still going, albeit not under the same ownership, while the other Formula One engine manufacturers from back in the DFV days have all gone, except for the perennial Ferrari.

Followers of Formula 1 motor racing are familiar with the teams' efforts to keep their technical secrets to themselves. They try to get a peek at each others' machines on the grid, and if a stricken car has to be lifted by crane to be recovered, there's a rush to see the underside. As for the engines, the FT story tells us that Cosworth don't sell their products, only hire them out, and they are fitted and maintained not by the constructors' mechanics but by the engine maker's. A far cry from the old days, when the team probably had about half-a-dozen people at a race.

The engines are sent back to the Cosworth factory for servicing and repair (which was also the case 40 years ago), and when they are finished with secrecy is preserved by casting all 4,000 individual parts (maybe more parts than in a cooking road car, although I remember that Rolls-Royce used to assemble their products, back in the Crewe days when I had friends there, visited the factory, and even counted them among my clients, from 20,000 individual bits and pieces) into a furnace. The ultimate in recycling, perhaps.

Limits claims for competition infringements

The Competition Appeal Tribunal has restricted the scope of "follow on" claims, on a narrow (but perfectly proper) interpretation of Section 47A of the Competition Act 1998, which was added by the Enterprise Act 2002.

This provides a mechanism for “follow-on” claims for damages – following on, that is, from a finding by the authorities that the competition rules had been breached. But in Emerson Electric v Le Carbone (Great Britain) Limited the Competition Appeal Tribunal held that the claim was ill-founded because Carbone had not been an addressee of the European Commission's decision. It did not follow on: it was a new matter, and Emerson would have to go to all the trouble of proving a breach, which is what section 47A tries to short-circuit.

The decision was that there had been an illegal carbon and graphite products cartel which included Le Carbone-Lorraine SA, the GB company's parent. Emerson were not simply naïve in getting the wrong company, though: they based their case on the argument that the two Carbone companies formed a single undertaking and the parent had been named in the decision in a representative capacity.

The British Carbone company applied to strike out the claim, on the grounds that it was not an addressee of the decision. The CAT rejected Emerson's argument about representative capacity, partly because there was nothing in the decision to suggest that the British company had been involved in the infringement. The decision did, it was true, refer to a British subsidiary, but the defendant was not the only one at the time of the infringement. There was nothing to suggest that the Commission meant the defendant, nor was there anything to suggest that the two companies formed a single undertaking. Even if the company was indeed the UK subsidiary referred to, that would not mean that the Commission had found it to be infringing the rules. There might be evidence to support a decision that it too had infringed the competition rules, but that was a completely different matter.

Although the decision to strike out the claim is hardly surprising in the circumstances, it does show us that section 47A has very limited scope. The option of bringing a follow-on claim before the CAT will be available to a very small class of claimants, very different from the High Court's approach (as shown in Cooper Tire and National Grid) which tends to make it the forum of choice for cartel claims.

Time limits in the Patents Rules

There's a statutory instrument just out amending the Patents Rules, to take account of recent decisions about when time limits prescribed in legislation start. The Patents (Amendment) Rules 2011 (SI 2011 No 2052) amend a whole raft of rules, in the words of the explanatory note, to

... amend the various time periods prescribed ... by substituting a reference to “beginning immediately after” for the references to “beginning with” so that when computing a period of time by reference to a relevant event, the date on which the relevant event occurred is not included.

Stallman on unitary patent

As I just observed on my Dictionary of IP Law blawg, Richard Stallman talks a lot of sense, though perhaps the message gets confused because a lot of rather hysterical people follow him. But each day I am less convinced of the benign effect of any part of what we know as the intellectual property system, and I certainly don't believe that software patents should be encouraged, so I lean some way towards his position. And the reason I was posting to the other blawg this morning was because of an absolutely spot-on comment about the utility of the portmanteau expression "intellectual property" appended to a recent piece in the Guardian about the dangers of patent inflation if and when we get CRAP, or the Unitary Patent as it is officially known. I think the unitary patent litigation system also plays an important role in this.

He makes the very good point that granting software patents will be the preserve of the EPO (with national offices also banging out national patents, which will probably become pretty unimportant especially for the sort of undertaking that goes in for gigantic software patent portfolios with which to beat up competitors, whether as first strike or retaliation). National courts will lose the ability to strike them down, but will the unified litigation system be rigorous enough to keep them in check?

A software patent that produces a genuine novel technical effect that itself is a patentable invention doesn't seem to me to be objectionable. What we are talking about here is a machine doing something new, and software controlling it. A patent for such an invention isn't actually a software patent at all, because the software itself is not the subject of the protection. Not an easy line to draw, as we know, but at least we have an idea of the territory in which the border lies.

Mr Stallman makes the interesting point - which, forgive my ignorance, I have not seen expressed so clearly anywhere else - that the EPO searches for such a technical effect in the invention itself, not in the inventive step that makes the invention patentable. The software operating a computer does not have to result in a new machine, just an existing machine doing something new, and there is a world of interesting difference between the two. But I'm not here to explore that, just to draw your attention to an interesting piece on the subject - which I will go away and think about.

Trolls and tolls

Interesting piece by Tim Harford (The Undercover Economist) in the FT about patent trolls. He says:

The three pillars that enable patent trolling are: the existence of absurd patents; the forbidding cost of the legal process; and the business model of buying up patents as assets in their own right, rather than building blocks for innovation.

Concludes that more transparency in the market, better information about the prices at which deals are done, would help. It shows how tricky it can be to tell a troll from a legit toll collector - which is why that third pillar cannot simply be removed. But it does all come back to the widespread malaise of treating IP as an end not just a means to an end.

As for the first of those pillars, if only we could get away from stupid patents, how much better the world would be - but if the patent system is there, people are surely going to keep trying to get them.

Red Shoes

Can the colour of the sole of a shoe be protected as a trade mark? Christian Louboutin has registrations in the EC system and in the US, and probably lots of other places too. And the colour appears to be pretty distinctive. It's been in use for years, though apparently Valentino has produced shoes with red soles since the ’60s.

The other week Louboutin failed to convince a Federal judge in New York that it stood a good enough chance of winning an infringement case against Yves St Laurent, and was refused an injunction pending trial  (Christian Louboutin S.A. v. Yves Saint Laurent America, Inc.). Read all about it on my friend Mike Atkins's Seattle Trademark Lawyer blog here. Or on my friend Ron Coleman's Likeihood of Confusion blog, here (posting by Matthew David Brozik, another EC fan). Or (a late addition) Fox Rothschild's Fashion Law Blog, written in a very engaging style by Staci Riordan - who sets out three reasons why Louboutin failed, including its "awful" trade mark.

Now, there are big differences between trade mark laws here and on the other side of the Atlantic, not all down to the malign (in the case of trade marks) influence of the European Union. In both, a colour may be registered as a trade mark, but it will have a hard time demonstrating sufficient distinctiveness, and rightly so. Before exclusive rights can be granted in something as mundane as a colour, which then becomes unavailable to others in the same business, a stern test must be passed. Establishing sufficient distinctiveness will often entail limiting the scope of protection, perhaps by specifying a Pantone® number. "Red" will rarely be enough. In the US, Qualitex Co. v. Jacobson Prods. Co. established that a non-functional colour can acquire distinctiveness, but it must be easier for dry cleaning equipment than for fashion items. Dry cleaning companies probably don't get too hung up about the colour of the equipment they use. Pink for glass fibre insulating material (Corning, if I remember correctly) is also acceptable - an arbitrary choice of colour, serving as a badge of origin, not interfering with the commercial free speech of the competition. Maybe one test would be, if the question "why?" comes immediately to mind, it's a strong trade mark ...

Colour plays a much more important role in the fashion industry than it does in the dry cleaning equipment or home insulation sectors. It will accordingly be harder to register one as a trade mark. Indeed it should be very, very difficult, especially when it's an unspecific term like just "red", and the judge, the Honorable Victor Marrero of the United States District Court for the Southern District of New York, who reportedly cracked every shoe- and foot-related joke known to humankind in the course of his judgment, was not convinced that the trade mark owner would succeed at trial. I'd like to think the same thing would happen here: not that I expect the generosity of the relevant trade mark office to become exhausted, although they should be taking steps to keep rubbish off their registers, but at least if it came before a judge.

“Intellectual Asset Management for Universities”: The new guide by IPO - guest posting by Mehmet Artemel, Bogazici University, Istanbul

I am delighted to be able to publish a review of the IPO's recent publication by my good friend Mehmet Artemel from Istanbul - who knows much more about the topic, and is therefore much better qualified to comment on the guide, than me ... and he's probably less prejudiced about things like institutions changing their names and talk of "intellectual assets" than I am, too.

Published in May 2011, the new guide by the UK Intellectual Property Office (IPO) has been produced by a committee of representatives from PraxisUnico, the Higher Education Funding Council for England (HEFCE), Universities UK, the Association for University Research and Industry Links (AURIL), the Biotechnology and Biological Sciences Research Council (BBSRC), and the Department of Business, Innovation and Skills (BIS) under the chairmanship of IPO.

The Guide comprises 45 pages in total including five chapters and three annexes. The length of each chapter ranges between 3 to 7 pages i.e. chapters 1 and 3, and chapter 4, respectively. As it has already been noted by Professor Jeremy Phillips, the Guide is “… well written and clearly presented; some technical stuff, such as the explanation of the different Lambert agreements, is left to the annexes” (see IP finance, Universities and intellectual asset management: a guide, Monday, 23 May 2011, available at http://ipfinance.blogspot.com/2011/05/universities-and-intellectual-asset.html).

Essential IP terms and knowledge/technology transfer related expressions are explained throughout the Guide, as they arise, in a plain and straightforward language. The Guide is, indeed, so readable that there may exist a fair chance of overlooking some of the valuable practical advice that is recommended as well as the highlighted potential pitfalls that exist along the path of developing and implementing a successful IP strategy for universities. Likewise, much of the less prominent but equally significant, ancillary issues that are mentioned in the Guide within the context of intellectual asset management policies at universities risk escaping the reader’s attention. It may, therefore, not be such a bad idea, for those who are truly interested in the subject, to prepare their own checklists where relevant. Talking about checklists, there is a set of self-reminder questions at the end of each chapter that are listed inside a box that is superimposed on a photograph. Readers, it is suggested, might be advised to prepare their own checklists instead of confining themselves to the series of questions (and one checklist proper, at the end of chapter 3) that are provided in the Guide.

The scope of the Guide
The Guide does not set out to “provide an IP strategy that can be applied across all institutions” (Executive Summary, p. 2; Chapter 1, p. 9) nor contend to be a definitive or comprehensive tool for the management of IP. Quite to the contrary, an admission, which is almost reminiscent of a disclaimer, reads as follows:

“... this Guide is concerned with the management of IP in a narrow sense.” (Chapter 5, p. 29)

As is stated in the Executive Summary, the Guide is written with primarily senior administrators in higher education and research institutions in mind:

“This Guide is for vice-chancellors, senior decision makers and senior managers in universities and is intended to help them set strategies to optimise the benefits from the intellectual assets created by their staff and students.” (Executive Summary, p. 2)

Presumably, with this audience in mind, and indeed on account of the nature of the subject, management related terminology dominates the language of the text. Equally, definitions of intellectual property related terms which are provided throughout the text are indicative of the fact that the Guide does not, rightly so, assume that all readers should necessarily be conversant with IP terminology.

As T. S. Eliot puts it, “last year’s words belong to last year’s language” and hence, therefore, the stress on ‘knowledge transfer’ as opposed to ‘technology transfer’ prevails; perhaps, not surprising considering that IP commercialisation has tended to become invariably associated with ‘technology transfer’ and by extension with ‘hard IP’ or patents, which in the past might have had the undesired effect that led academics in certain disciplines to be under the impression that their contribution to the academe was deemed less significant. This may be interpreted as another sign of the Guide’s all-embracing approach to welcoming IP related contributions that may derive from diverse disciplines in academia as is revealed from the following:

“Firstly, it should be apparent that IP is not merely that which is formally protected for example by patents. Indeed the majority holding of a university’s IP is likely to be in teaching materials, software and output works such as literature or film or sound in the case of arts centred-[sic] universities.” (Chapter 4, p. 23)

The predominant use of the term “knowledge transfer” or “knowledge exchange” in the Guide accords, moreover, with the nomenclature in the European Commission Recommendation of 2008, on “The management of intellectual property in knowledge transfer activities and Code of Practice for universities and other public research organisations” (provided conveniently under Annex A of the Guide) where there are 37 references to “knowledge transfer” and only a single mention of the term “technology transfer”.

The rationale for the new Guide
The Lambert Tool Kit (1st edition, 2005; 2nd edition, 2008) and the European Commission Recommendation C (2008) 1329 referred to above, are reported in the Guide as “the two major advancements” that have taken place in relation to the management of IP since the publication of the IPO’s original Guide in 2003. (Chapter 4, p. 21)

The guide is written in response to certain changes that have been observed in the field of knowledge transfer over the last decade, which are identified in the report as follows:

• There have been many changes in the world of IP commercialisation and in the context in which it is undertaken (Chapter 1, p. 8)
• Developments in innovation theory; the growth of the “open innovation” paradigm; evolution of ‘mass collaboration’ and ‘user-generated’ innovation that is facilitated by new social media tools; the growth in value of non-IP business assets such as business models (Chapter 1, p. 8) 
• The need for universities to recognise that that the purpose of the IP created by them is “to create wider social and economic benefit, and not only revenue generation” (Chapter 1, p. 9) 
• The change “in the role of the knowledge transfer office which no longer focuses only on an intellectual property professional service” but has “a broader role in the innovation system” (Chapter 1, p. 9) 

In sum, as the Guide puts it:

“These changes have forced new reflections on the content of the Guide, particularly as IP commercialisation has become more complex. Each institution needs clear objectives in its IP strategy, and this Guide aims to demonstrate how these objectives should be developed within an individual institution in order to gain the maximum overall benefit from its IP.” (Chapter 1, p. 9; emphasis supplied)

The comparators for the Guide in its assessment of the changes that have occurred over time are the findings and observations made in its own former guide that was published in 2003. Perplexingly, unlike other reports that have been mentioned in the text for which comprehensive references and links are provided, the new Guide appears to be resolute in not supplying a full reference to the original guide anywhere in the report, save for furtive allusions as follows: “Since the first IPO Guide in 2003 ...” (Foreword, p. 1); “The first edition of this Guide was published in 2003 ...” (Chapter 1, p. 8); “When the previous Guide was written ...” (Chapter 2, p. 15); “... since the original edition of this booklet was published in 2003” (Chapter 4, p. 21).

“The Purpose of this Guide”
The above title, which happens to be the very first subheading under Chapter 1, may conveniently serve as a useful section heading for the purposes of this review, to identify the objectives which the Guide has set itself.

The Guide is written with a view to (emphasis supplied)

• “... assist in the generation of IP policies that allow each institution to seize the opportunity and meet the responsibility to use their IP to secure maximum benefit for the economy and society” (Foreword, p. 1) 
• “... help senior university managers set strategies to optimise the benefits from the intellectual assets created by their staff and students” (Chapter 1, p. 7) 
• “... assist institutions to develop an intellectual property strategy that is consistent with their wider policy framework, their organisation, and their contribution to the economy and society” (Chapter 1, p. 7) 
• “... demonstrate how these objectives should be developed within an individual institution in order to gain the maximum overall benefit from its IP” (Chapter 1, p. 9) 
• “... demonstrate how the maximum value can be gained from IP...” (Chapter 1, p. 9) 
• “... assist in the design of internal measures and systems” (Chapter 5, p. 29)

The Role of Universities

The Guide, as will be seen from the above section, does not shy away from laying down certain responsibilities for universities unequivocally which it sees as fundamental for the benefit of the economy and society at large. Accordingly, universities are expected to:

• Act as “stewards of ... knowledge for all”, and consequently “to find ways to use this remarkable knowledge pool ever more creatively” (Chapter 2, p. 11) 
• Ensure “that IP in the UK is used to best effect for innovation and growth”, in their capacity as “key players in [the] economy” (Chapter 4, p. 21) 
• Use for public benefit the IP that they generate, based on “the overriding principle of a universities’ [sic] charitable status” (Chapter 4, p. 21)

An “individual business model”
The sensitive tone of the Guide would seem to transpire through the careful choice of the language adopted in the text. Cognizant of underlying tensions that may exist in different academic institutions vis-à-vis commercialisation of IP, the Guide is keen to draw a distinction between “individual” (Chapter 1, p. 9) business models that are “consistent with the institutional structure” (Executive Summary, page 3) as opposed to a uniform “IP strategy that can be applied across all institutions” (Executive Summary, p. 2).

It is stressed again and again throughout the text that the recommendations in the Guide are not intended to act as a blueprint that is to be adopted blindly by all universities in a uniform manner. This is one of the points on which the Guide deserves to be given full credit for. The expertise and inclination for which different universities might have become associated with is recognised as a starting point and accordingly the corresponding need to develop appropriate customised strategies that accord with each institution’s mission is acknowledged. This is expressed succinctly in the Executive Summary at page 3 in the following words:

“This Guide illustrates the need for universities to look at their IP policies in relation to their individual business models.” (emphasis supplied)

The Guide frequently reminds readers of this premise, in every single chapter (see Executive Summary at pp. 2 and 3; in Chapter 1 at p. 9; in Chapter 2 at p. 12; in Chapter 3 at p. 17; in Chapter 4 at p. 22; and in Chapter 5 at p. 31) that deals with another facet of intellectual asset management, by repeating that “there is no ‘one size fits all’ approach to IP management”. (Chapter 1, p. 9)

 

Common ‘areas’ for all universities

According to the Guide, notwithstanding the requirement for a customised IP policy that is in tandem with each university’s “own individual mission, those areas where policies are needed are the same for all” (Executive Summary, p. 3). Areas that are identified in common irrespective of the differences that may exist between universities are such as the right to ownership of IP by staff or students (Ibid).

A roadmap for developing an effective IP strategy

At the risk of missing out some of the valuable information that is stacked under some subheadings in the Guide, it might, nonetheless, prove a useful exercise to attempt to sketch out a roadmap that follows the steps, as recommended in the Guide, to be taken for the development and implementation of an IP strategy in respect of those areas that are common to all universities.

The different stages in the shaping of an IP policy as well as the recommendations and cautions that are provided in the text have been either paraphrased or quoted as far as space would allow for the purposes of this review. References are given for further details in the Guide. The fact that the number of steps, as determined by the reviewer, happens to be the same as the total number of the chapters in the Guide is purely coincidental, and should not, therefore, confuse the reader.

STEP 1

Each institution must establish its own goals in line with its mission (Chapter 1, p.7; Chapter 2, pp. 11, 12, 15, 16; Chapter 4, p. 21; Chapter 5, p. 32)

Caution: A “one size fits all approach” will not work (Executive Summary, pp. 2-3; Chapter 1, p. 9; Chapter 2, p. 12; Chapter 3, p. 17; Chapter 4, p. 22; Chapter 5, p. 31)

Example quoted from the Guide:

“A university IP policy should reflect the mission of the institution. Whilst the mission of the University of the Arts London, for example, will differ significantly from that of Imperial College London, their IP policies will have some elements in common but will also have differences.” (Chapter 3, p. 17)

• STEP 2

• Each university must determine its own business model (Executive Summary, pp.2-3; Chapter 1, p.9; Chapter 2, pp.11, 12, 15; Chapter 3, p. 17) 
• The IP policy must follow the business model of the university Chapter 3, p. 17)

Caution: Each university’s IP strategy will differ according to its overall business model (Executive Summary, p. 3, Chapter 2, p.11)

2.1 Each university must consider the “three main roles for IP in the university business model”, as listed below under 2.1.1 – 2.1.3 (Executive Summary, p. 2; Chapter 2, p. 11)

2.1.1 Role 1: Ensure that ‘freedom to operate’ is maintained (Executive Summary, pp. 2-3; Chapter 2, pp. 11-12; Chapter 4, p. 27)

Caution: Parties (i.e. university and industry) must discuss and identify specific issues instead of seeking a quick solution (Chapter 2, p. 12)

2.1.2 Role 2: Ensure that teaching models and research results are protected (Executive Summary, p. 2; Chapter 1, p. 7; Chapter 2, pp. 11-13; Chapter 4, pp. 22-23)

Caution: University must be careful to protect its ‘background IP’ (Chapter 4, p. 23)

2.1.3 Role 3: Do not overlook IP that might generate revenues (Chapter 2, p. 13-14)

Caution: University must not set unrealistic expectations to profit from IPRs (Chapter 2, p. 14)

STEP 3

IP policy should be focused on three areas in particular, as listed below under 3.1 – 3.3 (Chapter 1, p. 7)

3.1 Area 1: Internal rules (e.g. disclosure, confidentiality, and ownership of IP) (Chapter 3, p. 17)

Caution: Excessive fragmentation of IP ownership should be avoided (Chapter 3, p. 18)

3.2 Area 2: A policy for IP contracts (i.e. collaboration agreements and research contracts); in drafting a policy three key issues must be borne in mind, as listed below under 3.2.1 – 3.2.3 (Executive Summary, p. 3; Chapter 4, p. 21)

3.2.1 Issue 1: Distinguish between ownership and access rights (Executive Summary, p. 3, Chapter 2, pp. 12-13; Chapter 4, pp. 21, 23)

Caution: The rights of access in terms of both present and future potential uses (Chapter 4, pp. 23, 25)

3.2.2 Issue 2: Bear in mind the charitable status of universities and the consequences of commercialisation (Executive Summary, p. 3; Chapter 1, p. 9; Chapter 2, pp. 13, 16; Chapter 4, p. 21)

Caution: IP that results from university research is ultimately “a charitable asset to be used for public benefit”; commercialisation of IP will not by itself mean that “the public use obligation has been fulfilled” (Chapter 1, p. 9; Chapter 4, p. 21)

3.2.3 Issue 3: Uphold ethical standards (Executive Summary, p. 3; Chapter 4, p. 21)

3.3 Area 3: A knowledge exchange policy that lays down a framework for commercialisation and the sharing of financial returns from knowledge transfer activities (Chapter 1, p. 7)

Caution:

• Negotiate IP agreements on a case by case basis (Executive Summary, p. 3); in this context, the Guide recommends the use of The Lambert Tool Kit, which is aimed at “increasing the flow of IP from universities to business” and which represents “a consensus bargain between industry and academia” (Executive Summary, p. 3; Chapter 4, p. 21; see in particular Chapter 4 and Annex A for details of the Lambert system and the Lambert Model Agreements) 
• Be aware of the advantages and disadvantages of alternative forms of commercialisation and determine the type of exploitation, which would be most suitable for the IP (Chapter 3, p. 19) 
• Retain a right to ‘the research exception’ (Chapter 4, p. 28) 
• Beware of the temptation to overvalue contributions to a project when negotiating over shares of potential revenues; the Guide notes, that “There are signs that this is a growing problem in some areas of university-business technology transfer” (Chapter 4, p. 27) 
• Do not be pre-occupied with the anticipated value of IP which can stall negotiations at an early stage (Chapter 4, p. 22) 
• Be careful about the extent of access allowed to background IP (Chapter 4, p. 23) 
• Avoid joint ownership of IP (Chapter 4, p. 23) 

STEP 4
(Note that ‘STEP 4’ does not correspond to Chapter 4 of the Guide but is the 4th stage as identified by the review)

Each university must implement its IP policy across its own subject mix (Chapter 3, p. 17)
Caution: Conflicts may result from IP-related activities “when parts of an institution evolve separately” (Chapter 2, p. 15)

STEP 5

Universities should monitor and evaluate their IP policies (Chapter 5)
Caution:

• Separate evaluation frameworks for revenue and costs should be used (Chapter 5, p. 30) 
• Each university should identify those indicators that are in line with its objectives (Chapter 5, p. 32) 

5.1 The use of performance indicators has two advantages, as listed below under 5.1.1 – 5.1.2 (Chapter 5, p. 29)
Caution:
Research expenditure to output (e.g. patents and licence revenue) ratios should be used with caution (Chapter 5, p. 30)
Where indicators, such as disclosures, patent applications, and patents granted, are to be used as a benchmark for the commercial applicability of research outputs, it would be advisable to evaluate such indicators over a longer period of time (Chapter 5, p. 30)

5.1.1 Advantage 1: Proof of a university’s capability to manage IP effectively (Chapter 5, p. 29)
Caution: The Guide notes that “one of the reasons some sponsors give for seeking to retain ownership of IP is that they lack confidence in the ability of universities to manage the IP” (Chapter 5, p. 29)

5.1.2 Advantage 2: Tools to assist in identifying “problems and opportunities relating to IP management and to modify budgets and strategies accordingly” (Chapter 5, p. 29)
Caution: When making resource/funding allocation decisions, ratios should be interpreted and used with caution (Chapter 5, p. 30)

Concluding remarks

As will be seen from the above outline, the wealth of information that is supplied in the Guide is such as to render the presentation of a more condensed summary almost impossible. This does not come as a surprise, since with the exception of a number of, deliberately repetitive reminders scattered throughout, there appears to be hardly any detail, which could be considered redundant in the text. The Guide should serve as a very useful reference source for university managers and administrators in the UK as well as in other countries, provided that differences which may exist in legal regimes for IP management in universities, such as ‘professor’s privilege’ are kept in mind.

The criminal act of enjoying music

People who should know better, including firms of lawyers using tabloid techniques (here, for example: it makes me almost as angry as the expression "copyright theft"), are hailing the fact that the government proposes to adopt the Hargreaves Review's recommendation to introduce an exception to copyright so as to permit format-shifting - which they say will mean that people who engage in this nefarious activity will no longer be criminals. What rubbish. They never were criminals if they did it for their own purposes - Hargreaves does not come close to suggesting that the law should be changed so much as to allow anything so egregious as to be criminal. Copyright offences entail making or dealing in copies in the course of a business.

The House of Commons Select Committee on Culture, Media and Sport heard from the BPI in evidence for its Fifth Report that the industry took a relaxed view about format shifting, back on 7 June 2006. Five years ago! You can read the minute of oral evidence here and a bit more digging will unearth written evidence too. Here is the key question and answer:

  Q134  Mr Hall: I have got the extensive Rolling Stones collection on vinyl. If I wanted to copy that onto a CD to listen to it in my car, it is my private collection, British copyright law does not give me an exemption to do that, but in your evidence to the Committee you said you did not think there would be a need to change the law. Can you explain why?
  Mr Jamieson: This is a very key point and I think we should clarify it slightly, because we have moved on in our thinking since the written evidence. Traditionally the industry has turned a blind eye to private copying and used the strength of the law to pursue commercial pirates, and it has worked very well for all. There are two changes really which have caused us problems. One is, the quality of copying via digital is now so much better than ever it has been; and, secondly, the ability to disseminate a copy that is made illegally via the internet or any number of ways is so easy, including on a global scale, it is very, very damaging to music. We are having to rethink the distinction that we used to employ between a commercial pirate and a private copier, and I think it is quite correct to say that we are unhappy at the moment, that we think there needs to be a new distinction drawn between those who copy purchased music for their own private use and those who pass music on. We believe the latter must remain an infringement and we believe that we have to authorise the former; in other words, to make the consumer unequivocally clear that he has the right to copy any music that he buys for his own use, multiple, from format to format, anything at all that he wishes to do for his own use he is able to do. We are in discussions with other sectors of our industry at the moment, and indeed our own members, to try to get a consensus position on how best this can be achieved, to leave the consumer sure that he is allowed to copy, that you can copy your Rolling Stones collection, that Nigel Evans, who has just bought an iPod is able to take his CDs and put them on the iPod. You are correct in saying it is all technically illegal currently, but that is not right, because we are happy with it, we think it should be allowed and we think it is possible to do it via authorisation from the copyright owners and rights holders, rather than by rewriting the law. That is our current position, but it is still very, very much a matter of discussion and obviously it is something we are going to be taking to Gowers.

So, why are we still even wondering about legislation to legalise something that not only isn't criminal, is actually authorised by the copyright owners? Because copyright is more about urban myth than about hard law? In preparing my most recent podcast (subscription information on the podcast page of this site!) I read this  on the Patent Office - whoops, Intellectual Property Office - website, and am very much taken by the concept of mottainai (もったいない). It seems to me that it applies to this whole sterile debate: what a waste. Which makes writing blog posts about it mendokusai (めんどくさい).

July podcast

The July edition of the IPso Jure podcast, sponsored by Fellows & Associates, is now available for subscribers to download. Contents include:

• Supreme Court gives judgment in its first intellectual property case, in the Star Wars case 
• The Court of Appeal upholds the Meltwater judgment on news aggregators 
• The Court of Justice holds that online marketplaces owe more of a duty to trade mark owners than they thought, in L’Oréal v eBay 
• The High Court orders ISPs to block websites, in Nezbin, and 
• We report the latest round in Schütz v RoW 

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Law Commission to consider "groundless threats" actions

The right to sue if you're damaged by unjustified threats of infringement proceedings is an important safeguard against abuse, when intellectual property rights are not always as solid as they might appear. Originally applicable to patents, similar provisions have been included in trade marks and designs laws too. And a good thing it is: if someone wants to assert their rights against another, they must expose themselves to the possibility of a counterclaim for invalidity. Many trade marks are invalidly registered (and this was the case especially immediately after the 1994 Act came into operation - remember the Treat case?) and probably even more registered designs, because it has always been impossible to gauge whether a design is novel.

When you get to unregistered design rights - whether the domestic or the Community variety - the need for protection becomes even greater, notwithstanding that the important area always seemed to be registered rights. I was incensed on behalf of a client a few years ago: he received a threat of proceedings for infringement of Community unregistered design right, which I am convinced is a form of intellectual property only of interest to those who have no other straws at which to grasp. My client told me the design was a "retro" one that dated back to the seventies - so any protection had long since expired. The lawyer on the other side cannot have offered the least little bit of counsel to their client. To my disappointment my client preferred not to sue for unjustified threats, especially as I thought the lawyers ought to be required to explain themselves - and to pay up.

The law, you see, makes the lawyers liable for groundless threats as well as their clients. It's potentially a powerful weapon. But although it doesn't stop you making threats, period, cautious lawyers tend to avoid making any threats for fear that they might turn out to be groundless.

The Law Commission has just announced its 11th programme, which will run until 2015, and unjustified threats actions in trade marks and designs cases are to be reviewed (starting in April next year). It won't look at the patents provisions, because they were reformed only in 2004 and therefore might provide an indication of the direction reform might take. The nub of the problem is that the possibility that you might become liable for making unjustified threats (or landing your client in court as a defendant when they thought they were going to be the claimant) might encourage you to sue - exactly the opposite of what the Civil Procedure Rules were designed to achieve. How to write a non-threatening protocol letter? This is indeed why there is no protocol for IP litigation.

It seems to me that the right thing to do is consider carefully, and set out in the legislation, when a threat is unjustified. That should give the lawyers enough comfort to be able to write letters before action as they would like to.

Australia considers a statutory right to privacy

Since we can't get away from the subject of privacy, which threatens to take over the law on breach of confidence (which perhaps will eventually be sub-divided into privacy and trade secrets law so we can focus on the interesting part and leave the spoilt "celebrities" to their own devices), I was interested to learn that a statutory right to privacy was under consideration in Australia. Thanks to Ashley Tsacalos of Norton Rose, which after its pioneering work creating a national law firm - I somehow thought that the M5 group wasn't such ancient history as it actually is - is now a global one.

Downloading in the news

Downloading has been one of the main themes of the past few days - first with the Newzbin judgment, now with the government making new announcements about how the Digital Economy Act will work.

Twentieth Century Fox Film Corp. and Others v British Telecommunications Plc [2011] EWHC 1981 does not, you will observe, actually involve Newzbin. That's because after an earlier case Newzbin, an internet search facility dedicated to movies, did a spot of restructuring and reappeared outside the jurisdiction. For the copyright owners, it became a matter of going after the ISPs, the only people in the equation who they could bring to court.

As my good friend Jane Lambert, who at one stage represented Newzbin, has written the case up in some detail, I won't say it all again: her blog is here. Does this judgment solve the problem? Hardly. It seems to require the use of technology that is not yet available, which as another friend, Simon Halberstam of Kingsley Napley, notes is like declaring open season for a few months - everyone who feels moved to do so will be downloading illegal copies while they can. Simon asks why the movie industry can't work out how to use the technology, in the way that the record industry (what seems to be generally called the music industry, though I can't conceive of music, as opposed to recordings of it, as being an industrial product) has, and a good question that is too. The Internet is designed to be resilient, and it can be expected to evolve and circumvent restrictions.

Undaunted, the government has now told us that recipients of notices under the Digital Economy Act 2010 will have to stump up £20 if they want to appeal. They'll get it back if they succeed. Wow. Given how mass enforcement exercises like the one that got two Davenport Lyons partners (one no longer with the firm) fined and suspended from practice, and led to the demise of the absurdly trendily named ACS:Law, have shown just how inaccurate information about who is downloading what from the Internet, this looks like an most unwelcome imposition.