A patent can only be obtained for an invention if it is novel and involves and inventive step, or (looked at another way) is not obvious. I have been mildly surprised that the way the courts approach this second, higher hurdle has been dictated by a thirty-year old Court of Appeal case, Windsurfing International v Tabur Marine, reference to which is obligatory in just about any judgment which turns on section 1(1)(b) of the Patents Act 1977 (or Article 56 of the European Patent Convention) - though it is not cited in the case .
From now on, the courts will be citing the House of Lords judgment in Conor Medsystems vAngiotech Pharmaceuticals Inc. [2008] UKHL 49. There, the respondents owned a European Patent which designated the UK and covered a stent used in coronary angioplasty. It can be inserted into a diseased artery and a balloon inflated to keep the artery open.
The patent claimed a stent coated with a polymer loaded a drug called paclitaxel, sold under the trade mark Taxol (by which name it is identified in the judgment, as it was in the claims of the patent), which would inhibit restenosis, the growth of tissue that would gradually close the artery up again. Conor argued that it was obvious against the prior art. They pursued a similar claim in the Dutch courts.
At first instance the late Pumphrey J agreed with Conor and revoked the patent. He thought that the mere fact that no-one had used such stents before might make them new but did not get over the inventive step. He thought that it would be obvious to anyone using a stent of this type that Taxol would have to be used to prevent restenosis. Angiotech appealed, but the Court of Appeal (the judgment being delivered by Jacob LJ) dismissed the appeal ([2007]EWCA Civ 5). On 9 July, notwithstanding that the parties had settled their dispute in favour of the validity of the patent, the House of Lords allowed the appeal, the only detailed opinion being that of Lord Hoffmann (of course, who else?).
His Lordship remarked that. as in the case of many product claims, there was nothing inventive in discovering how to make the product: the inventive step lay, if it lay anywhere, in the claim that the product would have a particular property. Was it obvious to use a Taxol-coated stent for the purpose of inhibiting restenosis? The invention was as set out in the relevant claim, and it was the non-obvious of that which had to be considered. Whether it was obvious that Taxol would have the desired effect was not the issue: no-one could have exclusive rights "in the notion that something is worth trying or might have some effect".
The judge had therefore, unsurprisingly according to Lord Hoffmann, asked whether it was obvious to try the prospective invention without any expectation of success. His Lordship referred to this as an oxymoronic concept for which he knew of no precedent in the law of patents. The Court of Appeal had upheld the judgment on the grounds that the patent contained no "disclosure", but Lord Hoffmann saw no reason why, "if a specification passes the threshold test of making the invention plausible, the question of obviousness should be subject to a different test according to the amount of evidence which the patentee presents to justify a conclusion that his patent will work ...". Neither the judge nor the appeal court considered what Lord Hoffmann considered the important question, whether it was obvious to use a Taxol-coated stent to prevent restenosis.
Jacob LJ had rejected this approach on the grounds that the patent did not demonstrate that Taxol actually worked to prevent restenosis. Lord Hoffmann preferred the approach of the Dutch court in the litigation in the Netherlands, considering that the law does not require a demonstration of the effectiveness of the claimed invention, and there was no reason not to apply the ordinary principles of obviousness to the claimed invention.
The IPKat suggests that Lord Hoffmann is trying to claw back the inventive step test "from the jaws of analytical oversophistication", and that the "obvious to try" test is a valuable tool to help gauge the degree of inventiveness involved in an invention, though not the only one.
His Lordship also referred to the products great commercial success. Historically, commercial success was a good indication of non-obviousness, but again it can be nothing more than an indication and the test needs to focus on the invention set out in the claims and as patented.
Tuesday, 15 July 2008
Saturday, 12 July 2008
Price-fixing penalties
I remember when the Competition Act 1998 was just about to come into force, attending a breakfast briefing with the then Director-General of Fair Trading, John Bridgman, at Le Manoir aux Quat'Saisons - a rare extravagance. He told us that the Act would carry penalties that would make transgressors' eyes water. Originally, the maximum penalty for a breach of one of the prohibitions was ten per cent of UK turnover, for up to three years (if the infringement had been going on so long), but in 2004 with the modernisation reforms of EC and domestic competition laws the measure became ten per cent of global turnover but only over a twelvemonth. (An excellent expression, that, which Alan Clark used extensively in his book, The Tories, which I am in the middle of reading: I first remember hearing it used back in 83 during the general election campaign, by the Readheads shiprepair guys - reminding me of perhaps my greatest, though largely unacknowledged, claim to fame: surely the only Conservative parliamentary candidate ever to hire a meeting room and invite an audience of unemployed shipyard workers along for a discussion.)
Anyway, I digress. Perhaps I should post some of that, and a further digression that has now occurred to me, on www.petergroves.co.uk. My point is that the Office of Fair Trading has settled a price fixing case against Gallaher and five retailers for a payment of £132 million. The papers today - well, the FT - call it a "fine", but in fact the OFT can only impose a civil penalty, not a fine in the strict sense of the word: but newspapers don't seem to worry about the nuances. There is still a case pending against another manufacturer, Imperial, and other retailers are also in the frame. Tesco maintain that they have done no wrong, and Sainsbury have done a deal under the leniency programme that encourages whistle-blowing. The companies that have settled have been given a "discount" of £40 million off the maximum penalty (surely not the whole ten per cent?) reported to be £173 million.
The law seeks to encourage whistle-blowing, without which it is hard to detect cartels - they are by their very nature secret organisations. So the OFT is pleased with the way this has turned out, with a major saving in the costs of carrying on investigating which they think justifies the discount given to the companies involved. The OFT is certainly getting more and more active, and teh FT reports today that: "Senior executives within the retail , construction and banking sectors have complained that John Fingleton, the OFT's chief executive, appears to be on a "personal crusade" to crack own on perceived wrongdoing, whether justified or not". That sounds to me like an extraordinary proposition, as the OFT has to justify its actions by reference to the Competition Act. Are the unnamed senior executives saying that the Competition Act itself is not something to which we should attach too much importance?
I don't think so. Rather, they are probably referring to something that I have noticed in acting for clients in competition matters, and which I advise delegates on my courses on the subject to bear very much in mind: the mere fact that an investigation is taking place is damaging in itself, perhaps not to the tune of £173 milllion but possibly to an extent representing a large part of that. Years ago, actually before the Competition Act came into force, I advised a group of clients who took a price-fixing complaint to the OFT. I imagine that the OFT's investigation of that matter caused consternation in the offices of the company about whose activities we had presented evidence, but I am sure that it paled into insignificance when the OFT published the result of their probe. The story made the front page of the FT and the BBC news to my certain knowledge, and I am sure other parts of the media also picked up on it. The damage to the reputation and the business of the company concerned must have been significant. It certainly gave my clients satisfaction. And the beauty of it was that, a few weeks later, the Competition Act came into force and the OFT publicised it by bringing up the same case again, saying something like "if this happened now, this is what we could do about it." In other words, with Competition Act matters, just being suspected of infringing so the OFT carries out an investigation is just as bad as having a penalty imposed on you in the first place.
The FT today also reports that the Serious Fraud Office is in trouble again, after a judge threw out charges it had brought against five pharmas over price-fixing. This case pre-dates the Enterprise Act 2002, which created criminal offences concerning being involved in a cartel. The SFO was therefore obliged to find another head under which to prosecute, and was running with conspiracy to defraud. The House of Lords held in Norris v Government of the United States [2008] UKHL 16 that mere price-fixing was not conspiracy to defraud - hard luck on the SFO that they were 8 years and £25 million into an investigation into the activities of the drug companies when their Lordships bowled that one at them, and commentators think it might be fatal to the future of the SFO as we know it.
Anyway, I digress. Perhaps I should post some of that, and a further digression that has now occurred to me, on www.petergroves.co.uk. My point is that the Office of Fair Trading has settled a price fixing case against Gallaher and five retailers for a payment of £132 million. The papers today - well, the FT - call it a "fine", but in fact the OFT can only impose a civil penalty, not a fine in the strict sense of the word: but newspapers don't seem to worry about the nuances. There is still a case pending against another manufacturer, Imperial, and other retailers are also in the frame. Tesco maintain that they have done no wrong, and Sainsbury have done a deal under the leniency programme that encourages whistle-blowing. The companies that have settled have been given a "discount" of £40 million off the maximum penalty (surely not the whole ten per cent?) reported to be £173 million.
The law seeks to encourage whistle-blowing, without which it is hard to detect cartels - they are by their very nature secret organisations. So the OFT is pleased with the way this has turned out, with a major saving in the costs of carrying on investigating which they think justifies the discount given to the companies involved. The OFT is certainly getting more and more active, and teh FT reports today that: "Senior executives within the retail , construction and banking sectors have complained that John Fingleton, the OFT's chief executive, appears to be on a "personal crusade" to crack own on perceived wrongdoing, whether justified or not". That sounds to me like an extraordinary proposition, as the OFT has to justify its actions by reference to the Competition Act. Are the unnamed senior executives saying that the Competition Act itself is not something to which we should attach too much importance?
I don't think so. Rather, they are probably referring to something that I have noticed in acting for clients in competition matters, and which I advise delegates on my courses on the subject to bear very much in mind: the mere fact that an investigation is taking place is damaging in itself, perhaps not to the tune of £173 milllion but possibly to an extent representing a large part of that. Years ago, actually before the Competition Act came into force, I advised a group of clients who took a price-fixing complaint to the OFT. I imagine that the OFT's investigation of that matter caused consternation in the offices of the company about whose activities we had presented evidence, but I am sure that it paled into insignificance when the OFT published the result of their probe. The story made the front page of the FT and the BBC news to my certain knowledge, and I am sure other parts of the media also picked up on it. The damage to the reputation and the business of the company concerned must have been significant. It certainly gave my clients satisfaction. And the beauty of it was that, a few weeks later, the Competition Act came into force and the OFT publicised it by bringing up the same case again, saying something like "if this happened now, this is what we could do about it." In other words, with Competition Act matters, just being suspected of infringing so the OFT carries out an investigation is just as bad as having a penalty imposed on you in the first place.
The FT today also reports that the Serious Fraud Office is in trouble again, after a judge threw out charges it had brought against five pharmas over price-fixing. This case pre-dates the Enterprise Act 2002, which created criminal offences concerning being involved in a cartel. The SFO was therefore obliged to find another head under which to prosecute, and was running with conspiracy to defraud. The House of Lords held in Norris v Government of the United States [2008] UKHL 16 that mere price-fixing was not conspiracy to defraud - hard luck on the SFO that they were 8 years and £25 million into an investigation into the activities of the drug companies when their Lordships bowled that one at them, and commentators think it might be fatal to the future of the SFO as we know it.
Friday, 25 April 2008
Cutting back copyright: format shifting
This is the other part of my note on the proposals to create new exceptions to copyright protection, posted here for completeness as it is now a little out of date in that the consultation has ended.
Most people probably ‘rip’ sound recordings from CDs they have bought onto their MP3 players. Some of us even make digital files from LPs or singles in their collections, which can then be transferred to MP3 players. It has been a joy rediscovering the music I enjoyed many years ago, and better still finding I could still sing along to the words. My memory’s better than I thought it was.
One of the great urban myths is that the law of copyright actually allows this. There’s nothing in the Copyright, Designs and Patents Act 1988 that says such activities are permissible, so where did the idea come from?
In part, it came from the States, where fair use of a copyright work is generally permitted (the sort of broad statement of principle that our law lacks), but even there vested interests have been arguing recently that the law does not permit this sort of activity. Bought the CD? Then pay for a download too!
The other thing that validates the myth is that the record industry hasn’t been anxious to condemn this behaviour. It’s hardly surprising that they are in no hurry to accuse their own customers of infringing their copyright - it’s no way to make friends and influence people. And the customers would be hard pressed to see where the damage lay, when they’d paid generously for the CD to start with. It’s not as if they would be listening to the copy at the same time as the CD.
The government proposes (following the Gowers recommendation) to create a new exception to legitimise this behaviour. In fact, the consultation document says that the exception ‘would allow consumers to make a copy of a work they legally own …’, which demonstrates that someone doesn’t fully understand what they are dealing with here. No-one owns the ‘work’, of course: the property rights at issue here are copyright and ownership of a physical carrier - a CD or a vinyl platter. When we are concerned with a downloaded file, surely there is nothing to own at all, just a licence to play the music in the file (though not, generally, in public).
But that’s just a quibble with the language used in the consultation document. The principle is clear enough: pay once, shift to other formats without restriction provided it’s for your own use. You can’t sell, loan out or give away the copy: that would have a impact on the copyright owner’s economic interest, because the copy is substituting for a sale. In theory, at least, because the sale might not be made: there will inevitably be much more demand for free copies than for original CDs. Years ago, I had a much more extensive collection of music on tape than on record, and the friends whose LPs I had taped had themselves copied from my record collection. The tape recordings were, in those pre-digital days, so grossly inferior that no-one was really losing anything, but for the sake of completeness I should mention that these flagrant infringements became statute-barred decades ago.
The privilege of shifting formats would not extend to file sharing systems or the Internet (which is nothing more than a giant file sharing system, when you think about it). Multiple copying, the government says, would not be allowed, though surely there will be circumstances in which it causes no harm - I have ripped CDs to my laptop as well as to my MP3 player, and would expect the law to condone this provided it is for my own use.
The consultation paper asks what classes of work this should extend to. Sound recordings of course, and films, but should it extend to all manner of works? The paper might have overlooked the fact that sound recordings need a musical, literary or dramatic work - usually musical, but of course the words of a song or the libretto of an opera are literary works - of which they are a recording, and likewise films need screenplays and other elements which may be copyright works, but those requirements can be readily brought within the scope of the proposed exception. But what about other literary works? What about electronic books? If you have a book on your computer suitable for reading in Microsoft Reader, for example, should you be able to transfer it freely to a portable device, something that we’ll probably be asking before very long? If you have a photograph in which the copyright belongs to someone else on you computer, should you be able to copy it to a portable device? Both propositions sound to me like a step too far - matters that should be dealt with in the licences under which the copies are used.
Would it suffice to say that the new exception applies only to works of any kind in digital form? No, because the analogue-to-digital transfer is something that definitely needs to be legitimised. My digital files made from my vinyl record collection are in copyright no-man’s land, in the sense that there’s an argument that they are not mere copies - but there is a whole other argument to be had one day about when a digital version of an old original recording is a new work and when it’s merely a copy. Does digital remastering create a new copyright? The record companies would like to think so.
Then the government asks what acts should be non-infringing, and in the same breath (though it’s a rather different question) what is meant by personal and private use. The first of these seems pretty clear, surely, and the consultation paper has already answered the point: the copies are not for sale, nor may they be lent (or, a fortiori, rented) out, or placed on a computer system - we are talking about the restricted act of reproducing the copyright work, not distribution or making available to the public, or performing or playing it in public. Given that the majority of the acts that need to be legitimised are to allow music to be listened to on a personal device, and leaving aside the point that these are often played so loud as to cease to be personal, this question almost answers itself.
How many format shifts would be allowed, the consultation paper then asks. I thought it had already dealt with this: format shift = copy, surely? No, clearly not quite. New formats will come along, old ones will fade away, and we have to decide whether consumers should be allowed to format shift again when technologies become obsolete. Again, I can’t see how this could threaten the interests of the copyright owner, so yes, we should be able to.
Should we be able to format-shift back catalogues? Oh, please, what on earth would be the point if we couldn’t? But frankly I think this is an academic question.
The record industry might or might not have acquiesced in what is going on already, but whether they say they have or not, I’d argue that they have been giving a licence, an implied one perhaps, to their customers to do this for years. Why not formalise the situation? The record industry should print the licence terms on their products, as they already do to the extent of prohibiting public performances, and let it be known that they will apply the same terms to their back catalogues. Only if they refuse to play ball should the government interfere in the exercise of private property rights and legislate for exceptions.
Saturday, 19 April 2008
For whose benefit?
JK Rowling is trying to stop publication of a guide (or "Lexicon") to accompany the Harry Potter books, in the US courts. The case started last week (story from the FT here) and is commented on, adversely, in today's FT here. It doesn't sound as if the author herself wants to do this: she is a party to the proceedings, but so is her publisher Waner Bros.
Christopher Caldwell's piece in today's FT takes the defendant's side, but legal analysis indicates that it's not as clear-cut as he seems to think: see eg Info/Law which questions the apparently general view that this is a species of fair dealing, and the Patry Copyright Blog which doesn't take sides but which regrets that this sort of suit should be brought at all. Prof Landes has, however, taken sides and provided the court with declarations in support of the plaintiffs.
I leave commentary on the fair use doctrine in US copyright law to the US lawyers, but I'm struck by this comment by the judge, who said "I’m concerned that this case is more lawyer-driven than it is client-driven..." That echoes another story in the papers recently, and on the IPKat, about how the recent RIM patent infringement case in the high court here involved costs of £5.2 million (on RIM's side - Visto, the defendant, spent about £1 million). For a five-day trial the claimant's lawyers had racked up 9 years of billable time, including two lawyers recording 2,250 hours each. (See the story in today's FT here and here.) Not a problem specifically for intellectual property lawyers, but certainly IP litigation is at the expensive end of the scale. But maybe I'm just wishing I had some cases like that ...
Christopher Caldwell's piece in today's FT takes the defendant's side, but legal analysis indicates that it's not as clear-cut as he seems to think: see eg Info/Law which questions the apparently general view that this is a species of fair dealing, and the Patry Copyright Blog which doesn't take sides but which regrets that this sort of suit should be brought at all. Prof Landes has, however, taken sides and provided the court with declarations in support of the plaintiffs.
I leave commentary on the fair use doctrine in US copyright law to the US lawyers, but I'm struck by this comment by the judge, who said "I’m concerned that this case is more lawyer-driven than it is client-driven..." That echoes another story in the papers recently, and on the IPKat, about how the recent RIM patent infringement case in the high court here involved costs of £5.2 million (on RIM's side - Visto, the defendant, spent about £1 million). For a five-day trial the claimant's lawyers had racked up 9 years of billable time, including two lawyers recording 2,250 hours each. (See the story in today's FT here and here.) Not a problem specifically for intellectual property lawyers, but certainly IP litigation is at the expensive end of the scale. But maybe I'm just wishing I had some cases like that ...
Cutting back copyright - education, research and private study, library privilege
This is a piece I put previously on the Consilio Editor blog, but there have been changes in the Consilio empire so I don't know whether it's still available - in any case, I might as well have it here too, even if it is a bit old hat by now. I'll try to find the other pieces and post them here too.
I have looked in previous articles at the government’s proposals (or perhaps more accurately the proposals in the UK Intellectual Property Office’s consultation paper on exceptions to copyright) concerning format-shifting and parody. The consultation also covers three other areas dealt with by the Gowers Review of Intellectual Property, and for the sake of completeness I’d better write about them now, as the consultation closes on 8 April.
Accordingly, this piece is concerned first with extending the educational exceptions under the Copyright, Designs and Patents Act 1988 (sections 35 and 36), then with extending the exception for coping for research and private study, and finally with amendment of the library privilege.
Education
The two sections of the 1988 Act that deal with educational exceptions cover recording of broadcasts (section 35) and reprographic copying of passages from published works. In each case, the activity is permitted only if it carried out by by educational establishments, and the exception only applies to the extent that no licensing scheme applies. The Educational Recording Association and the Open University operate licensing schemes permitting the recording of broadcasts, and the Copyright Licensing Agency operates one for reprographic copying - but that does not mean that the sections of the Act are redundant, because there is still work for them to do outside the extent of those licensing schemes.
The Act’s approach of permitting educational establishments to use copyright material without payment until the copyright owners create a mechanism for granting licences (and collecting royalties) is a powerful incentive to put together a licensing scheme. Take payment fr the use of your works, the law says, but until there’s a collective licensing scheme the people who would otherwise be paying can use your stuff without charge. We might reasonably expect that an extension of the exceptions under these two sections would lead pretty quickly to corresponding extensions of the licensing schemes.
Both sections are limited in their usefulness by technological considerations. They were written in a different age. Only people actually on the premises of the educational establishment could be shown or allowed to hear recordings made under section 35, which these days does not reflect the way in which instruction is given, while section 36 applies only to reprographic copying, which effectively limits its usefulness to the production of handouts for distribution to students.
Gowers was keen to have the exceptions defined by intent, category of use and activity rather than by media, as the law does at present. Section 35 does not apply to delivery by web-based means, as in most cases internet transmissions will not fall within the definition of “broadcast”. Webcasts and on-demand transmissions are increasingly used in this area, and indeed in other areas of broadcasting, and interactive elements are often included. As for section 36, this would also broaden out the exception for the digital age.
It might not be necessary to carve out an exception for internet transmissions and on-demand services, as these are not protected by copyright, but they usually contain stuff that copyright does protect. To make a wider section 35 work, it would have to apply to the works that are included in the broadcasts.
These new distribution methods are functionally equivalent to broadcasts, so there is a compelling reason for bringing within the scope of the exception – especially bearing in mind that the main effect of the exception is to provide a incentive to copyright owners to put in place appropriate licensing schemes. But the consultation paper acknowledges that rights owners will be anxious not to see their DVD sales undermined by on-line delivery of the same content under an exception, and that material distributed in this was will be vulnerable to illegal copying. There is, the paper notes, a distinction to be drawn between on-line delivery of material that has already bee broadcast by traditional means or that complements a traditional broadcast, and material that is distributed only in this way. Views are sought on this point. But if material is broadcast in a traditional way, is it not enough that the broadcast may be recorded? Anyone who needs to take advantage of section 35 is able to do so when the broadcast takes place, and allowing them to invoke the same rights when the same material is distributed on-line is an unnecessary complication which might jeopardise the copyright owner’s rights. Where the on-line material is intended to complement the broadcast, then it should be subject to the same exceptions as apply to the main broadcast, but if there is a problem with allowing copying of on-line material it seems harsh to deprive the copyright owner of protection in the way proposed.
Gowers also suggested expanding section 35 to allow the copy to be communicated to students not actually at the establishment - that is, distance learning students. The method of delivery would, however, have to be secure so that the material would not become available to the public at large. Section 35 addresses the question of who may view the recording only by insisting that they are on the premises, and the consultation paper proposes widening this to include all who are “directly connected with the activities of the establishment” - like section 34, which deals with performances.
To ensure that only targeted pupils or teachers are able to see or hear the recordings, Gowers said that the showing should be in a secure virtual learning environment or VLE. Password-protection would be used to ensure that no-one except those permitted to view it would be able to gain access. But passwords are not terribly secure: what steps would the establishment be required to take to ensure that they were not divulged to people who were not permitted to see the recordings? Would pupils have to sign undertakings to keep the passwords secret? That hardly sounds likely.
The section 36 exception does not permit establishments to send material to students by email or other electronic means such as interactive whiteboards or VLEs, only to hand out hard copies. The exception needs to cover other means of “communicating to the public” if it is to be up-to-date, but there would need to be safeguards to ensure that all possible methods of communicating would be subject to security as rigorous as that provided by a VLE.
Then there is the question of who may be permitted access to the material, and again the answer is (probably) those people mentioned in section 34 to whom a school play might be open – a definition carefully crafted in the 1988 Act to make clear that parents might be present as well as staff and students. Again, questions arise about keeping passwords secret, and the same solution as is proposed in section 35 is likely to be adopted.
As for the range of works that should be covered by section 36, the present limitation to literary, dramatic and musical works – the only sorts of works that can be run through a photocopier, apart from typographical arrangements – is out of step with the possibilities of modern teaching technology. But if sound recordings and films were included, they would be made more readily available and this might have an adverse effect on existing business models – as discussed above in connection with section 35.
One problem for the government when considering changes to copyright (and many other areas of law) is the impact of European Community law (or what the consultation paper sloppily terms “European law”). Happily for the government, the information society directive makes no stipulations about what can and cannot be done in the education field, as far as the reproduction right and the right of communication to the public are concerned: so the proposals should not fail on this score.
Accordingly, this piece is concerned first with extending the educational exceptions under the Copyright, Designs and Patents Act 1988 (sections 35 and 36), then with extending the exception for coping for research and private study, and finally with amendment of the library privilege.
Education
The two sections of the 1988 Act that deal with educational exceptions cover recording of broadcasts (section 35) and reprographic copying of passages from published works. In each case, the activity is permitted only if it carried out by by educational establishments, and the exception only applies to the extent that no licensing scheme applies. The Educational Recording Association and the Open University operate licensing schemes permitting the recording of broadcasts, and the Copyright Licensing Agency operates one for reprographic copying - but that does not mean that the sections of the Act are redundant, because there is still work for them to do outside the extent of those licensing schemes.
The Act’s approach of permitting educational establishments to use copyright material without payment until the copyright owners create a mechanism for granting licences (and collecting royalties) is a powerful incentive to put together a licensing scheme. Take payment fr the use of your works, the law says, but until there’s a collective licensing scheme the people who would otherwise be paying can use your stuff without charge. We might reasonably expect that an extension of the exceptions under these two sections would lead pretty quickly to corresponding extensions of the licensing schemes.
Both sections are limited in their usefulness by technological considerations. They were written in a different age. Only people actually on the premises of the educational establishment could be shown or allowed to hear recordings made under section 35, which these days does not reflect the way in which instruction is given, while section 36 applies only to reprographic copying, which effectively limits its usefulness to the production of handouts for distribution to students.
Gowers was keen to have the exceptions defined by intent, category of use and activity rather than by media, as the law does at present. Section 35 does not apply to delivery by web-based means, as in most cases internet transmissions will not fall within the definition of “broadcast”. Webcasts and on-demand transmissions are increasingly used in this area, and indeed in other areas of broadcasting, and interactive elements are often included. As for section 36, this would also broaden out the exception for the digital age.
It might not be necessary to carve out an exception for internet transmissions and on-demand services, as these are not protected by copyright, but they usually contain stuff that copyright does protect. To make a wider section 35 work, it would have to apply to the works that are included in the broadcasts.
These new distribution methods are functionally equivalent to broadcasts, so there is a compelling reason for bringing within the scope of the exception – especially bearing in mind that the main effect of the exception is to provide a incentive to copyright owners to put in place appropriate licensing schemes. But the consultation paper acknowledges that rights owners will be anxious not to see their DVD sales undermined by on-line delivery of the same content under an exception, and that material distributed in this was will be vulnerable to illegal copying. There is, the paper notes, a distinction to be drawn between on-line delivery of material that has already bee broadcast by traditional means or that complements a traditional broadcast, and material that is distributed only in this way. Views are sought on this point. But if material is broadcast in a traditional way, is it not enough that the broadcast may be recorded? Anyone who needs to take advantage of section 35 is able to do so when the broadcast takes place, and allowing them to invoke the same rights when the same material is distributed on-line is an unnecessary complication which might jeopardise the copyright owner’s rights. Where the on-line material is intended to complement the broadcast, then it should be subject to the same exceptions as apply to the main broadcast, but if there is a problem with allowing copying of on-line material it seems harsh to deprive the copyright owner of protection in the way proposed.
Gowers also suggested expanding section 35 to allow the copy to be communicated to students not actually at the establishment - that is, distance learning students. The method of delivery would, however, have to be secure so that the material would not become available to the public at large. Section 35 addresses the question of who may view the recording only by insisting that they are on the premises, and the consultation paper proposes widening this to include all who are “directly connected with the activities of the establishment” - like section 34, which deals with performances.
To ensure that only targeted pupils or teachers are able to see or hear the recordings, Gowers said that the showing should be in a secure virtual learning environment or VLE. Password-protection would be used to ensure that no-one except those permitted to view it would be able to gain access. But passwords are not terribly secure: what steps would the establishment be required to take to ensure that they were not divulged to people who were not permitted to see the recordings? Would pupils have to sign undertakings to keep the passwords secret? That hardly sounds likely.
The section 36 exception does not permit establishments to send material to students by email or other electronic means such as interactive whiteboards or VLEs, only to hand out hard copies. The exception needs to cover other means of “communicating to the public” if it is to be up-to-date, but there would need to be safeguards to ensure that all possible methods of communicating would be subject to security as rigorous as that provided by a VLE.
Then there is the question of who may be permitted access to the material, and again the answer is (probably) those people mentioned in section 34 to whom a school play might be open – a definition carefully crafted in the 1988 Act to make clear that parents might be present as well as staff and students. Again, questions arise about keeping passwords secret, and the same solution as is proposed in section 35 is likely to be adopted.
As for the range of works that should be covered by section 36, the present limitation to literary, dramatic and musical works – the only sorts of works that can be run through a photocopier, apart from typographical arrangements – is out of step with the possibilities of modern teaching technology. But if sound recordings and films were included, they would be made more readily available and this might have an adverse effect on existing business models – as discussed above in connection with section 35.
One problem for the government when considering changes to copyright (and many other areas of law) is the impact of European Community law (or what the consultation paper sloppily terms “European law”). Happily for the government, the information society directive makes no stipulations about what can and cannot be done in the education field, as far as the reproduction right and the right of communication to the public are concerned: so the proposals should not fail on this score.
Copying for research and private study
Section 29 of the 1988 Act, as amended, permits copying of literary, dramatic, musical and artistic works, and typographical arrangements, provided it amounts to fair dealing for the purposes of non-commercial research and private study. Gowers recommended that it be extended to cover all forms of content – in other words, to bring sound recordings, films and broadcasts within the scope of the exception. Students of music and film might find this particularly helpful. However, rights holders might well worry about this: the exception, limited only by the requirement that the use be “fair dealing”, whatever that is, has in the past justified all sorts of things that could never realistically be considered fair. The idea that this particular Pandora’s Box might be opened up again will cause understandable concern on the part of rights holders.
The consultation paper floats four ideas for dealing with abuse of the exception: guidelines (something that was tried before, years ago, by the British Copyright Council, and withdrawn, which does not bode well); requiring a formal link to a course of study or an educational establishment; limiting the amount of a work that can be copied; and limiting the exception to particular courses or educational establishments. All are fraught with difficulty, but clearly if the exception is to be expanded but still kept under control some sort of constraints outside the straightforward wording of the section will be needed. In the absence of clear guidance, the one thing that can be predicted with absolute certainty is that some people will take great liberties under the impression (genuine or just assumed for convenience) that they are allowed to do so.
Digital rights management is an important issue here. Section 297ZE of the obviously much-amended 1988 Act provides for complaints to be made to the Secretary of State where a person has been prevented from copying a work which they would otherwise be permitted to copy under section 29, because of digital rights management systems being applied. This mechanism is already in place for the existing section 29, and would automatically provide the remedy demanded by the information society directive for any extension to the permitted act. This is another matter that causes concern to rights holders, who fear that it might have an adverse impact on their business models. The exceptions themselves should be of limited effect, though – the use has to be fair dealing and for the limited specified purposes – so the “workaround” of the notice of complaint procedure will rarely be invoked – or at least properly invoked.
Library privilege
Finally, Gowers recommended that the existing library privilege in section 42 of the 1988 Act should be amended to allow libraries to copy the master copy of all classes of work in permanent collection for archival purposes and to allow further copies to be made from the archived copy to mitigate against subsequent wear and tear. He also recommended that libraries be allowed to format shift archival copies to ensure that records do not become obsolete.
These recommendations seem at first glance irrefragable. It must be a Good Thing to put libraries in a position to preserve items in their collections. Chances are that preservation activities will have no copyright implications at all: if something needs preserving, it is likely to be so old that copyright will have expired. That is not, however, necessarily the case with films (although the 70 years pma term only applies to post-1995 examples of that art form, older ones being protected for 50 years from making or first release – still long enough for celluloid to suffer damage, though) or sound recordings (tapes need careful storage if they are to survive more than a couple of decades), so there is likely to be good reason why a library or archive would wish to carry out such preservation work and need a copyright exception. Suitable safeguards would be needed, and only the right sort of organisations should be allowed to benefit from the exception (the consultation paper opens up the possibility of reviewing the range of organisations, about which Gowers had made no recommendations). But all in all the issues raised in connection with these permitted acts are of less importance than the others reviewed above.
Conclusion
The review closes shortly and proposals for legislation will follow. Whether the changes will follow the models described in the consultation paper or not remains to be seen – but this is clearly a document more in the nature of a white than a green paper.
Monday, 7 April 2008
An even whiter shade of pale
When Blackburne J not only held that Matthew Fisher was joint composer of A Whiter Shade of Pale, but that notwithstanding the organist's 38-year delay in bringing a claim he was entitled to 40 per cent of the royalties in the future, many people found it hard to understand. Was his claim not statute-barred? (No, it wasn't.) Was his contribution really something that copyright should protect? (Yes, it was, and can you imagine the song without the organ part?)
The Court of Appeal, which has taken several months to hand down its judgment, has now reversed the judgment of the lower court - though crucially it did not interfere with the key joint authorship point, which follows a long series of earlier cases. However, on the basis (inter alia) that the implied licence generally accepted to have been granted by Mr Fisher back in 1967 had become irrevocable, he would not be entitled to royalties.
That seems to me a satisfactory result. The law about authorship and ownership stands, as it should: musicians who make an important contribution to another's composition will receive recognition, but there is no reason to fear an opening of the floodgates - claims will be limited to contributions that really make a difference to the finished product. But they will have to be brought promptly, and other musicians involved will be saved the uncertainty inflicted on Gary Brooker and other interested parties by Mr Fisher's extraordinary action.
The Court of Appeal, which has taken several months to hand down its judgment, has now reversed the judgment of the lower court - though crucially it did not interfere with the key joint authorship point, which follows a long series of earlier cases. However, on the basis (inter alia) that the implied licence generally accepted to have been granted by Mr Fisher back in 1967 had become irrevocable, he would not be entitled to royalties.
That seems to me a satisfactory result. The law about authorship and ownership stands, as it should: musicians who make an important contribution to another's composition will receive recognition, but there is no reason to fear an opening of the floodgates - claims will be limited to contributions that really make a difference to the finished product. But they will have to be brought promptly, and other musicians involved will be saved the uncertainty inflicted on Gary Brooker and other interested parties by Mr Fisher's extraordinary action.
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