Lecture notes, lectures 1-17 - Plus textbook notes from Bentley & Shearman and Aplin & Davis and essay plan PDF

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ntellectual Property: Syllabus Introduction to Intellectual Property COPYRIGHT  Introduction to Copyright  Subject-Matter  Authorship & Originality  Moral Rights  Ownership and Economic Rights  Infringement  Exceptions & Limitations TRADEMARKS  Introduction  Passing Off  Registration  Infringement PATENTS  Introduction  Validity 1: Novelty  Validity 2: Inventive Step  Infringement 1: Construction  Infringement 2: Infringing act, exceptions

Introduction to Intellectual Property GENERAL INTRO Intellectual property law creates exclusive rights in a wide range of things IP rights establish property protection over intangible things such as ideas, inventions, signs, and information. They are distinct and separate from property rights in tangible goods – and for many, this is counterintuitive. One of the consequences of this separation is that owners of personal property have restrictions on what they can do with the things that they own. Each area of IP law has found ways to define the parameters of intangible property – schemes of deposit and registration, techniques of representation (patent specification and claims), statutory rules, legal concepts such as sufficiency of disclosure (patent law), originality requirement (copyright law) IP law is a highly politicized area of law (page 4)

JUSTIFICATIONS FOR INTELLECTUAL PROPERTY Q: Why are justifications for IP rights important?  The decision to grant IP rights impinges on traders, the press and media, and the public + arguments for private property rights in land and tangible resources often premised on the scarcity or limited availability of such resources, while ideas and information are not scarce and can be replicated without detriment to original possessor of the intangible JUSTIFICATIONS: Ethical and moral arguments to justify IP rights: Copyright is justified because the law recognizes the authors’ natural or human rights over the products of their labour: (2) Everyone has the right to the protection of the moral and material interests resulting from any scientific, literary or artistic production of which he is the author. Universal Declaration of Human Rights, Article 27(2) Trademark protection is justified insofar as it prevents third parties from becoming unjustly enriched by ‘reaping where they have not sown’.

Instrumental Justifications: typically premised on the position that, without IP protection, there would be under production of intellectual products as they can be readily copied and thus in the absence of rights giving exclusivity, a creator is likely to be undercut by competitors who have not incurred the same costs of creation  inability of a market to guarantee that an investor in research could recoup its investment (market failure) IP induces or encourages desirable activities: The patent system can be justified on the basis that it provides inventors with an incentive to invest in research and development of new products, or an incentive to disclose valuable technical information to the public, which would otherwise remain a secret Trademark system is justified because it encourages traders to manufacture and sell high-quality products. Encourages them to provide information to the public about attributes of those products. ‘Neoliberal’ economic theory: transforming potentially valuable intangible artefacts into property rights enables individuals to exploit them to their optimal extent. These theories tends towards protection of a broader range of subject matter… (page 6) International Influences IP rights normally

INTRODUCTION TO COPYRIGHT

DEFINITION: ‘Copyright’ law is an area of intellectual property law that regulates the creation and use of a range of cultural goods, such as books, songs, films and computer programs. A property right that subsists in certain specified types of cultural works.

FEATURES OF COPYRIGHT LAW: - Fundamentally, should not create monopolies and thus a person can produce a work which is similar to a pre-existing work as long as the later work is not taken from the first - Copyright law does not protect IDEAS, merely protects EXPRESSION OF AN IDEA ∆ However: boundary between idea and expression = difficult to draw -

Limited lifespan: Copyright in a literary work endures until the end of the period of 70 years from the end of the calendar year in which the author dies ∆ Relatively generous, justified on the grounds that copyright law does not lock away the ideas underlying a work

BRITISH COMMON LAW COPYRIGHT MODEL VS CIVIL LAW DRIOT D’AUTEUR SYSTEM (FRANCE) Common Law Model:  Primarily concerned with providing incentive for the production of new works, indicated by copyright law’s emphasis on economic rights (such as the right to produce copies)  Relatively indifferent to author – British law presumes that an employer is the first owner of works made by an employee Civil law driot d’auteur model:  More concerned with the natural rights of authors in their creations  Aims to protect author’s economic interests + protect works against uses that are prejudicial to an author’s spiritual interests HISTORY AND DEVELOPMENT OF COPYRIGHT 1710 Statute of Anne: Prohibited the printing, reprinting or importing of any book which "any author shall hereafter compose or write" (or which any bookseller or printer purchased or acquired from the same) subject to financial penalties

Analysis/Interpretation of the Act:

Patterson: "a trade-regulation statute directed to the problem of monopoly in various forms"  Deazley argues that Patterson’s analysis is too reductionist Deazley: This Act was not primarily concerned with securing the position of the booksellers, nor with guarding against their monopolistic control of the press, although it provided an opportunity for addressing both of these issues. Instead, this Act was primarily concerned with the continued production of books / emphasis on the social contribution the author could make in the encouragement and advancement of learning Birrell: the Statute of Anne was both ill-conceived and badly executed.

Copyright, Designs and Patents Act 1988:  Expanded rights given to copyright owners – notably introducing a right to distribute/rent  Copyright Tribunal established to ensure that copyright owners did not act in an anti-competitive manner  Introduced new category of non-assignable ‘moral rights’ for authors While the Copyright, Designs and Patents Act 1988 provides the basic framework of contemporary copyright law, the Act has been amended to give effect to obligations imposed by EU directives ∆ A recodification of national law would be desirable because of the extent of the EU intervention – Bently and Sherman + Court has ruled on important concepts such as originality and authorship to fill gaps Key Developments: - Gradual expansion of subject matter and rights granted to owner - The role copyright law plays in developing the concept of authorship - Impact copyright has on cultural practices JUSTIFICATIONS FOR COPYRIGHT Page 35-58 Textbook

COPYRIGHT: SUBJECT MATTER

Copyright, Designs, and Patents Act 1988 identifies a list of the types of creation protected by copyright law: i. ii. iii. iv. v. vi. vii. viii.

Literary works (Section 1 (1)(a)) Dramatic works (Section 1 (1)(a)) Musical works (Section 1 (1)(a)) Artistic works (Section 1 (1)(a)) Films (Section 1 (1)(b)) Sound recordings (Section 1 (1)(b)) Broadcasts (Section 1 (1)(b)) Published editions (typographical arrangement) (Section 1 (1)(c))

Distinction between authorial (LDMA) and entrepreneurial work (films, sounds, broadcasts): informal, no longer a clear division in CDPA (was previously adopted from European copyright directives in Copyright Act 1956)

(I) LITERARY WORKS DEFINITION: Section 3(1) CDPA 1988 + category of authorial works referred to expressly in the Software Directive Article 1 (1) S.179: ‘Writing’ is defined to mean, ‘any form of notation or code, whether by hand or otherwise, and regardless of the method by which, or the medium in or on which, it is recorded’ and ‘written shall be construed accordingly’.

University of London Press v University Tutorial Press [1916] 2 Ch 601 Facts: Were mathematics examination papers were ‘original literary works’ for copyright? Decision: Peterson J: Yes - ‘The words ‘literary work’ cover work which is expressed in print or writing, irrespective of the question whether the quality or style is high’. Principles: 1) Literary works are not limited to works of literature, but include all works expressed in print or writing (other than dramatic or musical works). 2) The definition of ‘written’ highlights that aesthetic or qualitative criteria are irrelevant when it comes to identifying a literary ‘work’.

Exxon v Exxon Insurance [1982] Ch 119 Held: the word ‘Exxon’, created to act as a company name, conveyed NO ‘information, instruction or pleasure of a literary kind’ = NOT protected as a literary work A literary work affords information, instruction, or pleasure in the form of literary enjoyment Names and invented words excluded from protection as literary works by copyright law for policy reasons – general inconvenience + literary work copyright is unnecessary given the availability of adequate protection from passing off, trade mark law, artistic copyright

∆ criticised by Dworkin and Taylor. Titles: Francis Day & Hunter v Twentieth Century Fox [1940] AC 112 Held (Privy Council): No copyright protection for song title ‘The Man Who Broke the Bank at Monte Carlo – title was not ‘substantial enough’ to warrant protection in its own right. PC indicated that if title were extensive and important enough, protection MAY be possible Headlines: **Newspaper Licensing Agency Ltd v Meltwater Holding BG [2010] EWHC 3099 (Ch), [56]-[72]; [2011] EWCA Civ 890, [16]-[22] Held: a headline could in principle satisfy the requirements of section 1(1)(a) CDPA 1988 (i.e be considered a work that was both original and literary); and thus a headline was capable of enjoying copyright protection independently of the article to which it related Proudman J accepted that some headlines were protected as original literary works, and accepts evidence of the skill in devising enticing and entertaining headlines. CoA held decision to be ‘unassailable’

COMPARED TO: Fairfax Media Publications Pty Ltd v Reed International Books Australia Pty Ltd [2010] FCA 984, [28]-[52] Held: no copyright in headlines from Australian Financial Review Examples: “Investors warned on super changes” and “Blackout probe sheds little light”. No copyright in the headlines sued over by Fairfax. Held that it would be rare that a headline or title is an original literary work. Bennett J: Headlines = too insubstantial and too short to qualify for copyright protection as literary works. The function of the headline is as a title to the article as well as a brief statement of its subject, in a compressed form comparable in length to a book title or the like.  too trivial to be a literary work The addition of a pun does not, of itself, in the absence of evidence, convert such statements into literary works.

DRAMATIC WORKS AND FILMS: There are two ways in which films might be protected:

 

As a cinematographic work, i.e., a subject of author’s rights; and As a recording, i.e., a “surface” work that is the subject of related rights.

Green v Broadcasting Corporation of New Zealand [1989] RPC 469; [1989] RPC 900 Facts: Green was the originator and producer of a talent show called Opportunity Knocks. Show followed a particular format: certain catchphrases, ‘clapometer’ to show audience reaction, sponsors introduced contestants. Broadcasting Corporation of New Zealand broadcast a similar television talent show (clapometer, sponsor introducing contestants) Held (Privy Council): Green’s action for copyright FAILED – he was unable to show that the programme was a dramatic work as:  

The show as a whole lacked specificity or detail to be performed – scripts were only a general idea or concept of a talent quest, which was not capable of being protected The particular features of the show format (clapometer etc) were not dramatic works as the features repeated from show to show were unrelated – sufficient ‘unity’ requirement

Case prompted debate on whether formats should be protected as dramatic works in UK copyright law: Yes:  

Formats require creative input similar to those involved in existing copyright work (moral argument) Failure to protect formats is not only just unjust, but also a failure to provide sufficient incentive to TV producers (economic argument)

No:     

Difficult to define what a format is Anti-competitive impact Costs of rights Potential for nuisance litigation Passing off and breach of confidence are better remedies

**Norowzian v Arks Ltd (No 2) [2000] FSR 363 Facts: Guinness advertisement (featuring an actor dancing while a pint of Guiness is poured) accused of infringing copyright in earlier film Joy.

Was Joy a dramatic work? Joy recorded on film, and utilized ‘jump-cutting’ video editing technique = unprotected because film had been drastically edited and was no longer a recording of the dance that can be performed by an actor Held: FIRST INSTANCE: held that artificial dance on edited film could not be perfomed and thus film was not a dramatic work ON APPEAL: Edited film itself was a dramatic work because it was possible for the film to be played and thus the film was capable of being performed Case defines what a dramatic work should be For a creation to qualify as a ‘dramatic work’, it must be a ‘work of action’ – ‘capable of being performed’ The Court liberally interpreted the requirement that a dramatic work must be ‘capable of being performed’ to include performances by artificial means, such as playing of a film Nourse LJ defined a ‘dramatic work’ as ‘a work of action’, with or without words or music which is capable of being performed before an audience’. Buxton LJ: Film will usually be a dramatic work where there is ‘cinematographic work’ on the film, which ensures compliance with Berne Convention Article 14 which specifies that a cinematographic work must be protected ‘as an original work’ Kamina: argues that in order to be a dramatic work, an audio-visual work must convey a story – thus documentaries can be protected but newsreels or television productions of sports matches may not be MUSICAL WORKS: Musical work defined in CPDA 1988 Section 3 (1) Hyperion Records Ltd v Sawkins [2005] EWCA Civ 565, [53]-[56] Case discusses and expands the meaning of ‘music’ Facts: Sawkins produced ‘performing editions’ of 17th century composer, made some bass and direction alterations – Hyperion made recordings of performance using Sawkins scores Hyperion denied infringement of copyright as Sawkins’ score not original musical work Held (CoA):

Broadened the scope of music to include more than just the actual notes – tempo, performance practice indicators were equally music Explicitly excluded ‘noise’ from the scope of ‘music’

ARTISTIC WORKS Detailed definition in CDPA S 4 (1) and (2) 3 main categories: a) graphic work (paintings, drawings, maps, enravings) b) a work of architecture c) work of artistic craftsmanship

PAINTING: Merchandising Corporation of America v Harpbond [1983] FSR 32 Facts: Concerned the facial make-up of performer Adam Ant. He adopted his new style (the Prince Charming look) in the early 1980s. C made photos and sketches of him in his Prince Charming look. Ds reproduced these images by reproducing one of the photos, altering existing photos to erase old make-up and superimpose the new, and painting a portrait of Adam Ant in his new style based on one of the claimant’s photos. Claimants sought relief for copyright infringement. Issue: Was this a painting? Held: CoA (Lawton LJ) conservatively held that: ‘it was a fantastic suggestion to suggest that make-up on anyone’s face could possibly be a painting.’ “A painting is not an idea; it is an object; and paint without a surface is not a painting. Make-up, as such, however idiosyncratic it may be as an idea, cannot possibly be a painting for the purposes of the Copyright Act 1956.” There was no copyright. Analysis: Copinger criticizes - Difficult to see why Ant’s face is less of a surface than a piece of canvass. + Bently: Decision justified on basis that a painting is intended to be permanent. So a tattoo would be protected but make-up would not. Also make-up here maybe not original. Could also be seen as a merger of idea and expression which is not protected.

SCULPTURE: Definition: a cast or model made for purposes of sculpture”: CDPA s. 4(2). *Creation Records v News Group Newspapers [1997] EMLR 444 Facts: Artist set up objects around a pool Held: The scene was not an artistic work because there was no craftsmanship involved in setting it up, unlike on a film set. Lloyd J held: the collection of a series of objects around a pool was not itself a sculpture. Explained that it had nothing in common with sculpture – ‘no element in the composition has been carved, modelled’.

No permanent existence as an object of art, unlike famous people’s works, such as Carl Andre’s bricks.

**Lucas Film Ltd v Ainsworth [2008] EWHC 1878 (Ch), [92]-[93], [94]-[123] (sculpture), [124]-[135] (works of artistic craftsmanship); [2011] UKSC 39, [28]-[48] Issue: Whether the helmet and armour worn by the storm trooper characters in the first Star Wars film were copyright sculptures. Held: Held NOT protected by copyright, because they lacked artistic purpose. Rather their primary function was utilitarian, i.e. to be worn as items of costume and identify and portray characters in the film. Justice Mann created guidelines to assist identification of works of ‘sculpture’.

Take account of the normal use of the word “sculpture”, bearing in mind it refers not just to things you see in art galleries.  Do not judge artistic worth.  It is essential that the sculpture was intended to have “visual appeal” (ie, was of an artist’s hand), although it is not fatal that the object has other purposes too. Obiter comment: Wham-O and Breville wrongly decided - given that there was ‘no intention that the object itself should have visual appeal for its own sake, and every intention that it be purely functional’.  Explains why a pile of bricks can be a “sculpture” when displayed at the Tate Modern, but not when dumped in my driveway by a builder. 

Jacob LJ: ‘is not possible or wise to attempt to devise a comprehensive or exclusive definition of “sculpture”’.The process of fabrication is not determinative – just because something is creating by carving does not mean it is a sculpture.

WORKS OF ARTISTIC CRAFTSMANSHIP: ‘Artistic’ *Hensher v Restawhile [1976] AC 64 : deals with what satisfies the qualitative threshold of being ‘artistic’ Held:

LORD REID: object is artistic if a person gets ‘pleasure or satisfaction… from contemplating it’, and thus the test should be whether ‘any substantial section of the public genuinely admires and values a thing for its appearance and values a thing for its appearance and gets emotional/intellectual pleasure or satisfaction from looking at it LORD MORRIS: As this is a matter of personal judgment, there may be differing opinions within the courts. In these circumstances, courts should be guided by the consensus of experts (‘those whose views command respect’). The court would take the specialists’ views into account when coming to the conclusion. VISCOUNT DILHORNE: Expert evidence and public opinion would be relevant, but he preferred to act on his own intuition as to what was a work of art LORD KILBRANDON: Emphasized conscious intention of author to produce a work of art – cricumstances of the creation of work must be taken into account. Author must have had to have a ‘desire to produce a thing of beauty which would have an artistic justification for its own existence’ LORD SIMON: Emphasis ...