Showing posts from September, 2008

Patents: Worldmapper

In his acceptance speech, Francis Gurry, the new Director-General of the WIPO, addressed " the question of how intellectual property can contribute to the reduction of the knowledge gap and to greater participation on the part of the developing and least developed countries in the benefits of innovation and the knowledge economy."  A graphic illustration of just how far the World IP Organization and indeed the W O R L D have to go to achieve that end is provided by Worldmapper , a multidisciplinary team of mainly Sheffield academics  led by Professor Danny Dorling .  They have a whole load of interesting maps one of which on the relative economic decline of the British Isles has already been blogged by BBC correspondent Mark Easton. However the map that impressed me (and one which perhaps explains the reason for our relative decline) is the Map of Patents Granted.   North America is big as one would expect it to be but Japan appears on the map to be even bigger. Half way be

Licensing: The Dangers of Precedents - Oxonica Energy Ltd v Neuftec Ltd

I learned to draft as a pupil at 9 Old Square, the chambers of Robert Megarry , Lenny Hoffmann , Jeremiah Harman and Nick Patten. Unlike the common law chambers where I spent the first 6 months of my pupillage and indeed every set in which I was subsequently a tenant, there were no copies of Atlkin's Court Forms , the Encyclopaedia of Forms and Precedents or any other precedent book in chambers. When I asked why I was told that precedents were at best a distraction to clear thought and clear expression and at worst a potential danger to both the draftsman and his client. Though the ban on precedent books undoubtedly made my pupillage more difficult than it might otherwise have been, I understood the wisdom of it from the start. Indeed, I applied it to my practice and eventually imparted it to my own pupils. A case transcript that shows just how wise that policy was is the decision of Mr Peter Prescott QC in Oxonica Energy Ltd v Neuftec Ltd [2008] EWHC 2127. Early in his judgment

WIPO: Francis Gurry's Appointment as Director-General

I am no sycophant but I am genuinely delighted that Francis Gurry has got the top job at the WIPO .   I first heard of Gurry 20 years ago when I read his book on Breach of Confidence   which is to my mind one of the best books on the subject. It was published by Clarendon in 1984 but for some inexplicable reason it does not appear ever to have been reprinted.   I still refer to it from time to time.    In 1992  I actually met Gurry at a seminar on IP arbitration which was organized by the Chartered Institute of Arbitrators. Several things sprang from that seminar. Peter Ford set up an arbitration panel for the Patents County Court led by Professor Bryan Niblett which he asked me to join. Sadly, I never got any appointments but I don't think anybody else on the panel did either. Secondly, the WIPO set up the Arbitration and Mediation Centre.   The Centre was one of the first domain dispute resolution providers and having handled many thousands of domain name disputes it is arguably

Intellectual Property: Stephan Kinsella - an Interesting Critique

If you have 15 minutes to spare (which I don't really have but have just spent them anyway) you may like to listen to a podcast interview by US libertarian writer Lew Rockwell of a US libertarian IP lawyer called Stephan Kinsella . As you can see from his CV Mr Kinsella is a serious IP lawye r and a prolific writer . Interestingly, he has a higher degree from King's College London. Essentially his thesis is that IP is inherently obtrusive and requries the suppression of other legal rights. He seems to suggest that contract can provide effective proteciton and hence incentive for innovation and creativity.   I am sure that he will be rubbished by the great and the good but having seen the effectiveness of the US software and entertainment industries in the consultation on the implementation of the enforcement directive at the IP Office some time ago and having advised and represented a lot of pretty harmless small  British   businesses against some massive claims some US based

Patents: Conor Medsystems Inc v Angiotech Pharmaceuticals Inc and Others

In his speech in C onor Medsystems Inc v Angiotech Pharmaceuticals Inc and others [2008] UKHL 49 (9 July 2008) Lord Neuberger opined that the House of Lords decision represented " a significant development in United Kingdom patent law" but I am not sure that is true. Certainly he was right to say that the Lords differed from the views of highly experienced patent judges (Mr Justice Pumfrey at first instance and Lord Justice Jacob in the Court of Appeal) but my surprise having read Lord Hoffmann's speech is that anyone was surprised.  Of course, I say that with the benefit of hindsight but I think I would have reached the same conclusion had I seen the paragraph of counsel's skeleton argument that appears to have led the trial judge and appeal court into error. The paragraph submitted that the inventive concept was not what claim 1 of the patent claimed, namely: "A stent for expanding the lumen of a body passageway, comprising a generally tubular structure coate

Copyright: Creation Records Ltd. v News Group

It is trite law that if two photographers take identical pictures of the same scene at the same time from the same position each of their photographs is an original work and neither infringes the copyright in the other. However, much of the skill of a photographer lies in his choice of subject and the arrangement of the scene. The question whether copyright subsists independently in such an arrangement arose in Creation Records Ltd. v News Group Newspapers Ltd . (1997) The Times 27 April.   The Facts A swimming pool at a country club was drained and various props including a white Rolls Royce motor car assembled for a photograph of a well-known group of musicians for reproduction on their album cover. Although the public was not admitted to the session certain fans of the group who happened to be there were allowed to photograph the scene before official pictures were taken. A freelance photographer who was booked into the club photographed the scene during the session. One of his pict

Copyright: What is meant by "the Author"

Branwell Brontë's Self Portrait Source Wikipedia Jane Lambert 21 Sept 2008   Revised 29 July 2017 It is important to identify the author of a work for two reasons. The first of those reasons is that the nationality or residence of the author may determine whether copyright subsists in a work at all. S.1 (3) of the Copyright, Designs and Patents Act 1988 ( "the CDPA" )  provides: "Copyright does not subsist in a work unless the requirements of this Part with respect to qualification for copyright protection are met (see section 153 and the provisions referred to there)." If you scroll down to s.153 (1) you will find that copyright does not subsist in a work unless certain qualification requirements are satisfied as regards the author , the country in which the work was first published, or in the case of a broadcast, the country from which the broadcast was made. The second reason why it is important to know the identi

Copyright: Assignment

An assignment of copyright is an outright transfer of some or all of the rights of a copyright owner. S. 90 (2) of the  Copyright, Designs and Patents Act 1988  provides that an assignment may be limited to one or more, but not all, of the things the copyright owner has the exclusive right to do, or to part, but not the whole, of the period for which the copyright is to subsist. S. 91 (1) permits authors or others who would become first owners of copyrights ( "prospective owners" ) that will or may come into existence in respect of a future work or class of works or on the occurrence of a future event ( "future copyrights" ) to agree to assign such future copyright (wholly or partially) to another person. Formalities S. 90 (3) of the CDPA provides that an assignment of copyright is not effective unless it is in writing signed by or on behalf of the assignor. However, a copyright, like any other species of property, can be held on trust. A trust can come into being i

Copyright: Case Note - Christoffer v Poseidon Film Distributors Ltd.

This note that I first wrote in 1999 on the decision of Park J in  Christoffer v Poseidon Film Distributors Ltd   [1999] EWHC 262 (Ch), [2000] ECDR 487   discusses  another interesting old case that I have read again while updating the IP/IT Update website.   Three intellectual property issues arose in this case in which 5 separate actions came on for trial before Park J: whether copyright subsists in a film script which was based substantially on Book IX of Homer's Odyssey; if it did, whether it was infringed by making an animated film from the script; and whether the distribution of that film without attributing authorship to the scriptwriters infringed the writers' moral rights. There were many other issues but they were concerned with the fracts rather than the law. The Facts The case arose from a dispute between two Greek Cypriots,  Andrew Christoffer  ( "Mr Christoffer" ), a freelance scriptwriter, and  Frixos Constantine  ( "Mr Constantine" ), a direc

Copyright: What is meant by "Secondary Infringement"

The  Copyright, Designs and Patents Act 1988  ( "CDPA" ) proscribes 8 separate acts of secondary infringement: importing infringing copies possessing or dealing with such copies providing means for making such copies transmitting a copyright work over a telecommunications system permitting premises to be used for an infringing performance providing apparatus for such infringement permitting such apparatus to be brought onto premises, and supplying a sound recording or film for an infringing performance. An essential ingredient of all those acts is some actual or imputed knowledge primary infringement  of copyright. Importing Infringing Copies S.22 of the CDPA provides that copyright is infringed by importing into the United Kingdom otherwise than for private and domestic use an article in the knowledge or with reason to believe that it is an infringing copy of a copyright work. An "infringing copy" is defined by s.27 (2) as an article whose making constituted an inf

Copyright: What is meant by "a Substantial Part"

S. 16 (3) (a) of the  Copyright, Designs and Patents Act 1988  provides that references in Part I of the Act to the doing of an act restricted by the copyright in a work are to the doing of it in relation to the work as a whole or any  substantial par t of it. The question what is a "substantial part" for the purposes of this Act has been considered by the House of Lords on no less than three occasions. Qualitative Test In  Ladbroke (Football) Ltd. v. William Hill (Football) Ltd.  [1964] 1 W.L.R. 273 their lordships emphasized that the test of substantiality was qualitative rather than quantitative. A case that illustrates that point better than most is  Warwick Film Productions Ltd. v Eisinger  [1969] 1 Ch 508 where the volume of material that had been copied was considerable but such material did not constitute a substantial part of the claimant's work because it had itself been copied from an earlier work. The question then arises, as Lord Hoffmann observed at paragrap