Home‎ > ‎

Introduction

First things first

Before we go any further, be aware that as a legal subject what we call ‘intellectual property’ is an artificial construct. In fact it does not really exist, not as a single, unitary area of law: rather, it comprises several distinct areas of law which do have features in common but which have more features not in common. Grouping them together, which suits publishers, course designers and the marketing departments of large law firms, gives a false sense of unity.

These rights are designed to do different jobs and there is very little co-ordination between them. When a patent on a drug expires the manufacturer will hope that doctors will continue to prescribe by reference to the trade mark rather than the generic name: this process, known as ‘evergreening’, takes advantage of the different rules for different rights.

This means that the law is also diverse. Unlike many countries, we have no intellectual property code: and some intellectual property rights are statutory, while other areas covered in intellectual property books (including this one) and courses are products of the common law, based entirely on caselaw.

Some intellectual property rights require registration, others are automatic, so there are major differences between the statutes. Each has its own set of rules about what is protected, for how long, who owns the right, what it controls, and what is outside its control. This diversity, and the interplay between the different rights, make this a fascinating area of law.

The Mystique Of Intellectual Property

Other lawyers often regard the world of the intellectual property lawyer with awe. It is esoteric, abstruse, exotic and technical. In a comment on the Kirin Amgen1 and SABAF2 cases The Lawyer said: ‘You may not believe this, but patent law just got sexy.’ You may not believe it, but it had been since the middle ages.

The mystique was perpetuated because, until fairly recently (within my memory, anyway), intellectual property did not feature in undergraduate courses. The first student textbook on the subject, Professor Cornish’s, was only published in 1981 (just in time for me to read it before sitting the exam for my MA). There are still relatively few journals devoted to the subject, though Oxford University Press’s Journal of Intellectual Property Law and Practice, launched in 2005, Edward Elgar Publishing’s Queen Mary Journal of Intellectual Property (2010), and the Intellectual Property Quarterly make the list much more extensive than it was twenty or so years ago. Intellectual property is still sometimes seen as an area of the law where practitioners have the greater influence: but an alternative view might be that practice and academia converge in the intellectual property field, and there is certainly a great deal of cross-fertilisation, with practitioners (and even retired judges) teaching, and academics working in practice as consultants or practising at the Bar.

Perhaps this view of intellectual property should be encouraged: those who think like that can stick to conveyancing, writing wills and dealing with tedious corporate transactions. Perhaps they misunderstand the import of the word intellectual, and react against it. This area of law need not be the preserve of exceptionally clever people, though there are certainly some exceptionally clever people working in it.

Because of all this, misunderstandings about intellectual property law abound, among lawyers and non-lawyers alike. The greatest misunderstanding, and the most fundamental, is the one I mentioned at the outset: that this is a single, unitary area of law.

From this extravagant view of the subject flows, inevitably, the assumption that whatever one thinks up is one’s intellectual property and therefore protected by the law. The first part of that proposition is not unreasonable, but the second is quite wrong.

The scope of intellectual property

Intellectual property law embraces the entire world of human achievement, creative and innovative, science and the arts. It extends to the activities of the marketing expert and the product designer. No area of modern life, in this country at least, is untouched by intellectual property law (though it can often be overlooked). All life is here. Intellectual property law is nothing if not far-ranging, and it affects us every day.

‘Intellectual property’ is nothing more than a convenient umbrella term for several different legal rights. Most of them are statutory, but by no means all. Some of them do not even have the usual characteristics of property. It is not the case that anything that looks like intellectual property – something created by the exercise of the intellect – will necessarily receive the protection of the law.

As well as trying to deal with a subject which is in fact five or six subjects lumped together, the student of intellectual property faces a particular set of intellectual challenges. The rules are not simple, nor are they always logical.

Intellectual challenges

Intellectual property poses intellectual challenges, perhaps more so than other areas of law. I have a note I made back in 2004, from a talk given by Jacob LJ, who remarked that there is no branch of the law as difficult as intellectual property. But the difficulty, I think, is not inherent in the subject-matter: indeed the fact that we are familiar in our daily lives with the things that intellectual property law covers makes it in many ways easier than other other areas of law. The difficulty lies more in the sheer scale, the levels of detail, and the variety of constituent subjects, of intellectual property law.

Size

Textbooks on intellectual property give an indication of the scale of the subject. Bently and Sherman’s 4th edition runs to 1296 pages, with tables and other preliminary matters adding another 143 to that. Practitioners’ texts are, not surprisingly, even longer: Wadlow’s Law of Passing-Off (4th edition) runs to 951 pages covering a subject that Bently and Sherman deal with in 86 pages. Our copyright law is voluminous: for example, it deals at length with over 50 permitted acts which US copyright law despatches quickly under the rubric ‘fair use’. Even when the statutes might appear mercifully short, the cases on their interpretation are myriad, and often very long and detailed (and in recent years judgments have tended to grow: the adjective ‘Arnoldian’ has been coined in recognition of the contribution made by Mr Justice Arnold to this process, although he is not alone in writing lengthy judgments).

International dimension

The sources of our intellectual property law create further intellectual challenges. Much of the law is home-grown, but an ever-increasing proportion is influenced by international factors. There have been treaties and agreements between countries on intellectual property matters for over 130 years, but since 1973 the European Communities (then the European Community, and latterly the European Union) have dictated much of the intellectual property laws of the Member States. This is hardly surprising: powerful national rights can create formidable barriers to market integration, especially where those rights differ from one country to another. For example, if a sound recording is protected by copyright in one country, where the term of protection is 50 years, but not in its neighbour (25 years), can discs lawfully made in the second country be exported to the first? (You will find the answer to this question in the section on how long copyright lasts, Error: Reference source not found.) This international dimension means that one might encounter a variety of legislative styles and judicial approaches to interpretation, which add to the intellectual challenge. Judgments of courts from other EU Member States are relevant to an understanding of some parts of the law, and even judgments from jurisdictions completely unrelated to the EU can be important. Intellectual property problems often arise in the United States long before they afflict us in the United Kingdom.

The importance of EU law and international conventions which underpin our intellectual property law cannot be underestimated, and European integration and globalisation raise their significance all the time. Much of our copyright, designs and trade marks law is now governed by EU directives, whose influence will only become greater: judgments of the EU courts, and even domestic courts of other Member States, play a major role in the interpretation of the law in those areas. Sometimes those directives might be imperfectly implemented in our domestic law. EU regulations – in particular, those establishing the Community trade mark and Community design systems – are an important element of our intellectual property law. And though international conventions are not directly effective, our intellectual property laws reflect the requirements of instruments which the UK often actively promoted.

(Perceived) complexity

Partly because intellectual property is not the subject of a single, integrated, consistent statute, it looks dauntingly complicated to the newcomer (and often to the old hand too). There are valid historical reasons for there being five different methods of protecting designs in UK law, but that does not make it any easier to understand the subject. Trade mark law is the legal branch of semiotics, the science of signs, and the legal rules reflect the way certain signs work on the minds of consumers. Patent law is closely related to science and technology: the fact that barristers in the field (and the judges, who started off in practice at the Bar) are by academic background scientists or engineers first and lawyers later, and that patent attorneys are required to have a technical background, reflects this, although students will find that patent law is not inherently difficult – it is only the subject-matter that makes it seem so.

The large volumes of caselaw on breach of confidence and passing off, and indeed on the statute-based areas of intellectual property law, also contribute to the impression that it is a huge intellectual challenge. But many of the cases are at first instance, and the student can focus on a relatively small number of appellate judgments.

English judges, and it seems those dealing with intellectual property cases in particular, take great pains to demonstrate that they are comfortable with the increasingly complicated subject matter of the cases before them: they need to proof their judgments against appeals3, and the result is usually a detailed, frequently a lengthy, exposition of the science, taken to the extreme by the late Pumphrey J in Cantor Fitzgerald v Tradition6, where a judgment of some 50 pages was supplemented by no fewer than nine appendices, one of which was a short introduction to computers and programming languages. Because the judgments of the English courts are carefully reasoned, an assiduous student could gain a good theoretical knowledge of biotechnology by reading the right patent cases, or learn a great deal about computer programming from a study of some of the copyright cases. In Generics (UK) Limited v Daiichi Pharmaceutical Co Ltd and another4 Jacob LJ said:

For anyone coming for the first time to the basic science and terminology of stereochemistry, a good explanation is to be found in [12-15] of Kitchin J's judgment in Generics v Lundbeck.5

In Arnold J’s judgment in FNM Corporation Ltd v Drammock International Ltd and another6 there is a section entitled ‘A Short History of Aerosols’, which I have never found the time, or indeed the need, to read: and I remain largely, and fairly blissfully, ignorant of stereochemistry.7

The pace of change

No other area of law can be as closely related to extraneous developments as intellectual property law is. It is subject to a constant process of adaptation to developments in technology, culture, and marketing techniques. Moreover, all of us engage with intellectual property now to an extent inconceivable 10 or 20 years ago: using the Internet, computer programs, and mobile phones, listening to music and watching films in digital form, buying branded goods (including goods that carry some sort of celebrity endorsement), and a host of other quotidian activities. There is a lot of intellectual property about.

Intellectual property is also in the news every day. Journalists might have difficulty distinguishing between copyright, designs, patents and trade marks, but that does not stop them writing about intellectual property: indeed, the uncritical use of the expression ‘intellectual property’ in the media has contributed in no small measure to the confusion that surrounds the concept. There is a lot of comment on intellectual property about – not all of it very accurate.

Finally, at a time when the courts have been markedly less busy than they were before the Woolf reforms, intellectual property is a boom area for litigation. Important new cases come along frequently, and less important ones almost every day. We used to wait years for a House of Lords case on intellectual property: the Supreme Court has them every few months now. There are a lot of intellectual property cases about.

The courts and the judges

Anyone coming to intellectual property law for the first time must become familiar with some terms of art and other frequently-encountered features of the IP landscape: there are the judges, for example, and the series of law reports in which (before the Internet made it all so easy) IP cases could, often exclusively, be found. There are the journals and textbooks, referred to by those of us who have worked in the field for a long time with such familiarity that the neophyte might feel a little lost.

The judges, and the courts in which they sit, are a good starting point. Patent cases and other IP causes in the High Court are invariably assigned to the Patents Court, part of the Chancery Division of the High Court: there is also an Intellectual Property Enterprise Court, formerly the Patents County Court8, which was established as a quick, cheap forum by the Copyright, Designs and Patents Act 1988 and which, following reforms in 2010, has become really effective as an alternative to the High Court (although a substantial rise in fees in March 2015 is widely expected to be very damaging). Its jurisdiction was never limited to patents alone, but now it hears all manner of intellectual property cases. Awards of damages in the PCC (or IPEC) are capped at £500,000 (there is a ‘small claims track’ for cases worth less than £10,000, too) and awards of costs are limited to £50,000 (though that is not the same as saying that parties may not spend more than that, only that they will not get it all back if they win).

The Patents Court, which for years had a single judge assigned to it (Whitford, Aldous, Jacob, Laddie and Pumphrey JJ will become familiar names to the student of this area of law), now boasts seven (Mann, Warren, Roth, Vos, Floyd, Arnold, Morgan and Norris JJ) who may hear patents cases. Trade mark, copyright and designs cases are assigned to the Chancery Division, where they may be heard by the specialist judges, all of whom were leading practitioners before their elevation (the late Sir Hugh Laddie’s name still graces The Modern Law of Copyright, along with those of Peter Prescott QC and Mary Vitoria QC, and Professor Sir Robin (formerly Mr Justice, then Lord Justice) Jacob’s name features on Kerly’s Law of Trade Marks and Trade Names, both those books being practitioners’ oracles) or by non-specialists. A number of practising barristers also sit as deputy judges, and there is also a need for practitioners to exercise their judicial talents as appointed persons to hear appeals from decisions of the UK Intellectual Property Office (as the Patent Office now calls itself9). The Intellectual Property Enterprise Court, which (when it was the PCC) was the domain of His Honour Judge Birss QC (promoted in April 2013 to the High Court) makes use of several district judges, who are solicitors or barristers with extensive experience of intellectual property. The judge in the IPEC is His Honour Judge Hacon.

There is a view in intellectual property circles that the judges are too clever. It is perhaps better for them to be just a little in awe of counsel than to know that they could do better than the best QC likely to appear before them. Laddie J (who later made the unprecedented step of retiring from the bench and returning, though in a different guise, to practice and become professor of IP law at University College London) and his predecessor in the Patents Court, Sir Robin Jacob, were certainly at the top of their profession before becoming judges. It has made for some interesting judgments. The appointment of first Aldous LJ, then Jacob LJ, and more recently Lewison and Kitchin LJJ from the Patents Court has, and will, ensure that the judgments of the Court of Appeal are similarly interesting.10 In addition, Lord Neuberger, the President of the Supreme Court and former Master of the Rolls, is no stranger to intellectual property matters and, despite being Master of the Rolls at the time, he sat on the Supreme Court appeal in Human Genome Sciences Inc v Eli Lilly and Co11 where the fact that he is an Oxford chemistry graduate was useful.

Nowadays, much of the case-law on trade marks and copyright, and increasingly on designs, comes from the Court of Justice of the European Union. Here we encounter difficulties about what names to use. The judicial institution of the European Union is officially called the Court of Justice of the European Union. Until the late 1980s, the institution comprised only one court, so referring to the Court of Justice was unambiguous, but now it comprises two instances, the General Court (originally, and far more clearly, called the Court of First Instance) and the Court of Justice, which is the highest appellate court in the Union (and there is also the Civil Service Tribunal). Having a Court of Justice within an institution called the Court of Justice of the European Union seems to be an unnecessarily confused arrangement. Worse still, the original Court of Justice was often referred to as the European Court of Justice, even when its jurisdiction extended to only six countries in Europe, which might be seen as presumptuous, to say the least. That name is still in common use, and is more accurate only in that the court’s writ now runs in 28 countries. Professor Valentine Korah used to refer to the Court of Justice as ‘the Community Court’, but ‘the Union Court’ somehow sounds wrong. The only correct approach is to call it the Court of Justice, which avoids any implication that its jurisdiction extends to the Urals, and never to resort to abbreviations. Unless, that is, we adopt the approach of Jacob LJ, who has used the expression ‘an expedition to Luxembourg’12, which I rather like for stylistic reasons.

Whatever we call it, the Court of Justice is not a specialist intellectual property court. That means that the judges are not chosen for their knowledge of intellectual property law, either. The court gives its judgments collectively – no dissent in Luxembourg, as is common in the civil law world – but it has been observed that the same names often crop up in trade mark cases (and it is in the trade marks field that the court has been particularly active). I refer you to this posting on Austrotrabant’s Blog.

The importance of interlocutory proceedings

In the days when an IP case would have to wait until one particular judge had time to hear it, there could be a significant delay between the issue of proceedings and trial. As a result, many (perhaps most) IP cases were dealt with conclusively at an interlocutory hearing, maybe even ex parte. A plaintiff would be unhappy at the prospect of waiting months for the trial to start and would often want to seek an interlocutory injunction right at the outset to stop the defendant doing whatever wrong he was accused of. An injunction would be granted if the plaintiff had a strong arguable case, if the balance of convenience favoured it (the plaintiff would suffer irreparable harm if the defendant were allowed to continue: the defendant could be compensated if the injunction were wrongly granted) and if the plaintiff gave a cross-undertaking in damages to guard against that eventuality.13

At that early stage in the proceedings, the defendant might be restrained from carrying on the business from which he earned his living, obliging him to find an alternative, clearly non-infringing, source of income. The injunction would remain in place for months, until trial, and the fact that it had been granted indicated that the judge liked the plaintiff’s case. That added up to a strong indication that a settlement would be a good idea.

Likewise, a plaintiff denied an interlocutory injunction would receive a loud message discouraging him from further litigation. IP cases have always been notoriously expensive, and going full steam ahead after an indication had been given that the judge was not convinced about the strength of the case would give the plaintiff pause for thought. On the other hand, the value of intellectual property claims is often enormous. In Les Laboratoires Servier & Anor v Apotex Inc & Ors14 the value of the patents (£70 million a year) was enough to encourage the loser at first instance to spend more money on an appeal which was dismissed without the court even troubling the respondent to present its case.

Nowadays, with more judges to hear IP cases, despite there being more and more IP cases to hear (in contrast with other divisions of the High Court since Lord Woolf’s civil justice reforms), cases come to trial much more speedily. An application for interim, or urgent, relief may be met by the judge (charged by the same civil justice reforms with being more proactive in the management of his cases) setting the case down for a speedy trial. And in the post-Woolf environment, if the parties get to trial they might find their counsel being summoned to the judge’s chambers before the trial gets under way to hear how the judge expects the case to go and to receive a clear, if not explicit, exhortation to settle.

THE TERMINOLOGY OF INTELLECTUAL PROPERTY

Intellectual Property’

The use of the expression ‘intellectual property’ is misleading, and in recent history has probably created the impression that the law will protect more than it actually does. Intellectual property is not a unitary area of legal study. It is a combination of several areas of law that had existed for years, and had often been practised by the same people, but which did not form a single body of law.

It has, however, been in use since at least 1769, when it appeared in The Monthly Review (volume 41, page 290). In the early nineteenth century the French liberal thinker and politician, Benjamin Constant, argued against the recently-introduced idea of “property which has been called intellectual”15 and 27 years later Circuit Justice Woodbury, in the Massachusetts Circuit Court, in Davoll v Brown16 said:

Only thus can ingenuity and perseverance be encouraged to exert themselves in this way usefully to the community; and only in this way can we protect intellectual property, the labors of the mind, productions and interests as much a man’s own, and as much the fruit of his honest industry, as the wheat he cultivates, or the flocks he rears.

Because it is not really a legal subject, there is no single intellectual property code to which to refer in this country (as there is, for example, in France, or Russia, or many other places). The statute book does however contain a number of definitions of intellectual property, though in unexpected places, including:

intellectual property’ means any patent, trade mark, copyright, design right, registered design, technical or commercial information or other intellectual property...17

... and:

  • any patent, trade mark, service mark, registered design, copyright or design right, or

  • any licence under or in respect of any such right.18

These definitions omit express reference to rights in performances and plant varieties protection as well as more recent innovations such as database right and publication right. There are more definitions too: 20 (including the two set out above) were listed in Gray v News Group Newspapers Ltd & Anor.19 None of them, strangely, appears in a piece of legislation dealing with intellectual property.20

The treatment of a right to use intellectual property – the benefit of a licence – as itself a property right is not to be taken too seriously. For the purpose of registering company charges (which is why the second definition is on the statute book) it is perhaps an appropriate analysis, but it is plain from the caselaw that a licence will not be considered property.21 This is true of the right to use a patent, per Lord Diplock in Allen & Hanburys Ltd v Generics22: ‘A licence passes no proprietary interest in anything, it only makes an action lawful that would otherwise have been unlawful.’ It is true of copyright, per Browne-Wilkinson J in CBS Records v Charmdale:23 ‘I would not expect a licensee to be treated as having a property interest in the copyright. Under the general law a licensee is a person who enjoys contractual rights as against the property owner. I can find nothing in the [1956 Copyright] Act which conflicts with the principle that the licensee’s rights rest in contract and are not proprietary.’ And it is true of trade marks, per Jacob J (as he then was) in Northern & Shell Plc v Condé Nast:24 ‘s.30(3) [of the Trade Marks Act 1994] is the provision enabling a licensee to sue. Just as before, no proprietary right is conferred.’

Industrial property

The expression ‘industrial property’ - which was the expression used in the title of the Paris Convention as far back as 1883 – covers patents, trade marks, designs and unfair competition (at least, that is the scope of the Paris Convention). You will notice that copyright is missing. ‘Industrial property’ is often used interchangeably with the expression ‘intellectual property’, and Article 36 of the Treaty on the Functioning of the European Union (TFEU), formerly Article 30 of the EC Treaty and before that Article 36 of the Treaty of Rome (which permits derogations from the basic prohibition of quantitative restrictions on imports) uses it too: it is now accepted that copyright is included in the concept, given the increased industrial importance of copyright resulting from the extensive industrial exploitation of copyright works and the fact that copyright applies to computer software. In Joined Cases 55 and 57/80, Musik-Vertrieb Membran v GEMA18 the Court of Justice of the European Communities (Court of Justice) decided that copyright could fairly be described as commercial and was therefore industrial or commercial property within the meaning of Article 36 of the Treaty of Rome (as it then was).

Hard and soft

Patents and designs are also sometimes called ‘hard IP’ to distinguished them from copyright and trade marks (‘soft IP’). The usage is colloquial, and the border indistinct. Better to stop talking about intellectual property, with or without the adjectives, and be specific about the specific right.

Confidential information

Although it is not strictly speaking intellectual property the law of breach of confidence has an important role in the IP system. It can give protection for technical or business information (what are often called ‘trade secrets’, especially in the USA), provided that information is not publicly-available. Private information may also be protected, but a breach of confidence without a business dimension is unlikely to lead to litigation – unless it concerns a celebrity keen to protect their privacy: in recent years a large body of law has grown up as a result of privacy claims of this nature.

The law in this area is found in the cases, though it also includes, at least in part, Official Secrets legislation, the Data Protection Act 1998 and the Human Rights Act 1998.

Patents

The patent system, which is concerned (in broad terms) with applied technology, gives perhaps the most potent form of intellectual property protection. It grants exclusive rights over inventions (which do not include certain things like mere discoveries) for up to 20 years. The term of protection varies slightly between different countries: in the US, for example, the term is 17 years.

To be protected, an invention must be novel and involve an inventive step. These criteria are judged against the ‘state of the art’, or the ‘prior art’, the word ‘art’ being used in a rather archaic sense which carries no implication about aesthetics. The invention must also be capable of industrial application, this requirement being designed to exclude mere ideas.

The holder of a patent has exclusive rights to do certain acts in relation to the invention, principally to work it. UK patents are granted by the Patent Office, a statutory body which now goes under the name of the Intellectual Property Office. Patents valid in the UK are also granted by the European Patent Office, under the European Patent Convention, and such a patent is known as a “European Patent (GB)”. Although patent applications are carefully examined before grant (and in the European patent system may be subject to opposition proceedings too) they are never guaranteed, and in many infringement cases patents are found to be invalid. Indeed, defendants will almost invariably challenge the validity of the patent in a counterclaim at the same time as they file their defence. (In the UK, infringement and validity are dealt with in the same court: in Germany, by contrast, different courts consider the questions, so it is possible to win an infringement claim one day and have the patent declared invalid the next.)

Some countries have another form of protection for inventions, known by various names including petty patents and utility models (or, in Germany, where they are particularly important, Gebrauchsmuster). Generally, the advantage of such a right over a patent is that it is cheaper, but cheapness is bought at the price of reliability. Costs are saved by not examining the application, so when the right is enforced it might be found to be invalid. The UK has always resisted

Designs

While the patent system concerns innovation in functional matters, innovation in the appearance of articles may be protected separately. Design law is concerned with the way things look, not how they work. It protects, not the article or product, but the underlying design, and (depending on which regime applies) might cover similar-looking designs for very different objects.

  • Registered designs, available at national and European Community level (where they are called Registered Community Designs), protect the novel appearance of articles for up to 25 years. No particular eye-appeal is needed, but the design must have individual character (in much the same way as an invention must be not only novel, but also inventive).

  • UK unregistered design right protects original (as opposed to novel - novelty being an objective test, originality being subjective in that it only considers what the designer knows) designs with or without eye-appeal, though for a much shorter time (basically, 10 years from first marketing, though it is not quite as simple as that as we shall see).

  • Community unregistered design right automatically protects designs that qualify for registration, but only for three years, which is often enough for fashion items.

  • Copyright still has a limited role to play in the designs field, where before the Copyright, Designs and Patents Act 1988 it was extremely important. The 1988 Act launched what is sometimes referred to as a 'New Deal' for design protection, one aspect of which was that copyright was largely excluded from the field of designs. Where the article depicted in a design is itself an artistic work, copyright may still be engaged, and some examiners clearly find the frontier between the two areas of intellectual property law fascinating, and frequently set questions about it.

Copyright

The law of copyright protects the work of creative individuals – books, plays, music, works of art. In the UK, and the rest of the EU, it lasts for 70 years from the end of the year in which the creator dies. Computer programs are often protected by copyright, and so (less often) are databases, because as we have seen copyright does not only protect great works. To be protected, a work must be original, must exist in some permanent form, and must qualify for protection (usually by reference to the creator’s nationality).

Copyright law also protects neighbouring rights – the rights of businesses which exploit the creative works of others, including publishers, record companies, and broadcasters, though for a shorter period (50 years). Importantly, the scope of copyright includes computer programs.

The ownership of copyright gives the exclusive right to do certain things to the copyright material, enabling the owner to exploit the material by copying it, issuing copies to the public, performing it in public, and other acts, or permitting others to do so. These rights are sometimes called economic rights, to distinguish them from moral rights, which are notionally inalienable rights given to creators of copyright works to protect their reputation.

Unlike most other intellectual property rights, copyright is automatic: there are no formalities leading to a grant of protection. This means that there is no public register to consult to find out what has already been created: so the protection given to a copyright work is against copying only. Independent creation is always a complete defence to an allegation of infringement, which is very different from the monopoly protection given to a patent or registered design.

Crown copyright subsists in works made by Her Majesty or an officer or servant of the Crown in the course of their duties. Crown copyright belongs to Her Majesty. Crown copyright lasts for 125 years from when the work is made, or for 50 years after publication if this expires earlier. The copyright legislation also creates Parliamentary copyright. In the United States, by contrast, works of the government are not entitled to copyright protection at all. The difference between the UK and US approaches is less dramatic than it looks, though, because Crown copyright works can generally be used without formality or payment.

Trade marks

It is not as easy to think of trade marks as creations of the human intellect as it is with copyright, patents and designs. If a trade mark is creative, it is likely that the creative part of it will be a copyright work or perhaps a design – there is an overlap between these areas of intellectual property which is very important in practice.

The trade marks system is concerned primarily with business goodwill, and incidentally with consumer protection. A trade mark is the visible part of the goodwill, which customers associate with goods or services they want to buy. Fair competition requires that this valuable goodwill be protected, so others cannot appropriate it.

To be registered, a trade mark must be capable of graphical representation (you have to be able to put it on a form, whether a paper one or on-line, making smell trade marks difficult to register). Certain inherent defects in the sign which the applicant hopes will be accepted as a trade mark may prevent it being registered: these are mostly connected with its ability to distinguish the applicant’s goods or services from those of other businesses. Also, it must not conflict with earlier rights. Registration confers the exclusive right to use the trade mark for the goods or on the services specified by the applicant, which should be those in which the applicant trades – but often the registration spills over into other areas. Registration is without limit of time, though if a trade mark is not used on the goods or for the services for which it is registered for five years or more, it becomes liable to revocation.

Trade marks may also be protected by the common law action for passing off which gives protection to business goodwill and therefore to unregistered trade marks, sometimes called ‘common law trade marks’. The law is judge-made, and highly dependent on facts and evidence. The claimant must show that it has goodwill, that the defendant has made some sort of misrepresentation to the claimant’s customers about that goodwill, and the claimant has suffered damage.

Database right

Database right is a creation of European Union law. Directive 96/9 addressed the differences in copyright protection within the single market (which arose in particular from different originality tests) and introduced a new, unfair-competition type, right for database operators known in the Directive as ‘sui generis right’ but in the UK, where Latin is spoken so much less than in mainland Europe, as ‘database right’.

Rights in performances

Performers – most importantly musicians, but also actors and dancers, but not sportsmen and sportswomen – do not have copyright in what they do, but they do have similar related rights, which are dealt with by Part II of the Copyright, Designs and Patents Act 1988.

Plant varieties and plant breeders’ rights

New varieties of plants are not protected by patents, but by a parallel system operated by different authorities but giving analogous protection. This is a very rarefied area of intellectual property law about which I propose to write no more in this book.

Publication right

A right enjoyed by the first publisher of a previously-unpublished work in which copyright has expired: intended to protect the publisher’s investment in printing copies of a long-lost play by William Shakespeare, or something similar.

Supplementary protection certificates

Not really intellectual property at all: SPCs are designed to compensate certain patentees (especially in pharmaceuticals) for the time it takes to obtain marketing authorisation for new products. Often a large part of the period of patent protection will have expired before the product can be sold. SPCs do not formally extend the patent term, but their effect is much the same.

Indications of origin

Geographical indications can perform a function very like a trade mark, but private ownership of such indications is normally not desirable. Within the European Community, there is a protected designation of origin system under Council Regulation (EC) No 510/2006 of 20 March 2006 on the protection of geographical indications and designations of origin for agricultural products and foodstuffs. Similar arrangements exist in other parts of the world, and are an increasingly topical subject for IP lawyers.

THE PURPOSE OF INTELLECTUAL PROPERTY

The utility of intellectual property

At the root of the intellectual property system lies a bargain between the creator of the intellectual property and the State (or perhaps ‘society’ would be a better expression). By his or her efforts the individual has created something which society would be better off if it could use: the intellectual property system provides a mechanism for the creator to gain a pecuniary advantage from letting society have the use of their creation.

In the USA, this is expressly recognised in the Constitution, which permits Congress to legislate ‘to promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries’ (Art I, §8, par. 8). The US Congress’s first effort to legislate to protect trade marks was ruled unconstitutional by the Supreme Court. They were not ‘writings and discoveries.’ Trade marks legislation had to be based on the so-called ‘commerce clause’ in the Constitution, designed to encourage and protect interstate commerce. This Article of the Constitution has more recently been invoked to enable protection for databases to be enacted.

Different philosophies have at different times applied these basic, universal principles in different ways. In civil law systems, where the law of copyright is modelled on the French system, copyright is regarded as an especially sacrosanct form of property, an author’s work amounting to an extension of his or her personality. This led to an emphasis on what have become known as moral rights. Copyright harmonisation in the EC has eroded many of the differences between the civil law and the common law approaches, and the international conventions have resulted in extensive cross-fertilisation, so that UK copyright law has protected moral rights since 1989.

Theoretical justifications25

You could say that in the final analysis intellectual property rights protect knowledge, or information. Not, clearly, any old information, but definitely special types of information: information expressed in an original way (copyright), information about the appearance of articles or products (designs), information about how to make things or how things work (patents), and information connecting goods or services to their providers (trade marks). And, of course, information of any kind that is confidential.

But is it right that information should be protected by law? Turning it into a form of property, as intellectual property law does, assimilates it to other forms of property which have the uniting feature that they are scarce resources: land, for example. Granting proprietary rights in land is intended to ensure that it is used optimally – the market will ensure that owners put it to the best use they can. However, intellectual property is not a scarce resource: apart from the fact that more is being created all the time, a single ‘piece’ of intellectual property (a patent, for example) is not lost when an infringement takes place. The activities of an infringer might diminish the value of the patent, and the appropriation without payment of the right to work the patent enriches the defendant at the cost of the patent owner, making the activity economically analogous to theft, but the owner does still have the property. It is said that it is not ‘rivalrous’, as are other forms of property. If it is not a scarce resource, should not information be available to all and form part of the commons?26

The WIPO Intellectual Property Handbook gives two reasons for intellectual property laws:

One is to give statutory expression to the moral and economic rights of creators in their creations and the rights of the public in access to those creations. The second is to promote, as a deliberate act of Government policy, creativity and the dissemination and application of its results and to encourage fair trading which would contribute to economic and social development.

Intellectual property rights subsist in products of the intellect. It goes almost without saying. Products of the intellect could be described as knowledge or information, so the intellectual property system makes property out of information. Should information ever be subject to private rights, or should it rather be available for all – forming part of what the philosopher John Locke called ‘the Commons’?

The answer, at least most people’s answer, is likely to be a compromise between the two. Unless you have a philosophical objection to property in general, or to treating creations of the intellect as property (rather than relying on a sweeping law against unfair competition) certain types of information should be protected. The discussion then centres on the safeguards that are needed to protect the interest of the rest of society – those who would use the commons.

There is an abundance of academic literature on whether it is right to treat these creations of the intellect as a form of property. Here academia and practice diverge: there is little discussion of these matters in the cases, which – naturally – concern the law as it is, not as it might be. Dranez Anstalt v Hayek27 is cited as an exception to this general rule, although it is rather peripheral to the main issue in the case, which was the restrictions placed on Dr Hayek,28 who had invented a new type of ventilator but was prevented by a no-competition obligation from working freely in the field:

The grant or registration of a patent confers a monopoly. The statutory monopoly can be justified on the grounds that it is necessary (for a limited time) in order to encourage inventors, and those who fund them, to apply their skills and resources in developing products and processes from which the public will benefit. But the balance between the benefits which will accrue to the public from permitting monopolies in order to encourage invention and the detriment which may be suffered by the public from monopolistic practices is struck by the patent legislation. A case in which it could be justified as reasonable in the interest of the public to superimpose further contractual restraints on invention, going beyond what Parliament has thought necessary, must be regarded as exceptional. In particular, it must be a wholly exceptional case in which the imposition of such restraints on a pioneer in a field of medical science – in the development of which there is, at least prima facie, such an obvious public benefit – can be justified. There is nothing in his judgment to indicate whether, and if so why, the judge thought that this was such a case. In my view he ought to have concluded that it was not.

Why should these matters be treated as property? Several theories are advanced:

  • It is wrong to take something that belongs to another (which is rather circular, because the expression ‘belongs to’ presupposes that there are property rights in it);

  • people should be entitled to the fruits of their own intellectual efforts just as they are entitled to the products of their hands, like a piece of furniture they have carved from a piece of wood (the Lockean position);

  • that it is in society’s interests to reward those who create things from which others will benefit, to reward creative people and to provide incentives to them (the Utilitarian approach).

There is however no scientific proof that protecting intellectual property makes for a better society. In Bali, for example, even in modern times, there was no concept of copyright: an individual’s creations were free to be used by everyone. Before the patent system in the UK took on its present form – during the industrial revolution, broadly between 1750 and 1850 – innovation was encouraged by the award of prizes (called ‘premiums’) by bodies such as the Royal Society for the encouragement of Arts, Manufactures and Commerce (known as the Royal Society of Arts, or RSA – another example of that archaic use of the word ‘art’). The Society would publish a wide variety of challenges which people would try to solve: this is what Captain Bligh was trying to do, taking breadfruit to the West Indies, when the crew of the Bounty mutinied. He won his premium on a subsequent attempt. This problem-solving approach is reflected in modern patent law, which can be analysed as protecting technical solutions to technical problems. (Establishing breadfruit in the West Indies, as such, lacks a technical dimension.)

This analysis of the benefits of intellectual property falls down when one considers the broad scope of what is protected. Not every creation of the intellect is equally valuable. Beethoven’s Ninth symphony is superior, by almost every conceivable measure, to Direct Line’s advertising jingle, but copyright law does not distinguish between them. (One way in which the jingle is superior to the symphony is, however, its suitability for use as a trade mark, and trade mark law accordingly gives it protection.) Nor does patent law distinguish between a blockbuster drug that will save many lives and – well, how about US 2009/188617 for a method of making works of art using the nose of a dog?

Those comparisons, telling as they may be, overlook one important limitation of the intellectual property system. It does not exist to remunerate creative people: it merely provides legal support to their efforts to earn remuneration. It is not for the law to say that Beethoven’s work is better than the advertising jingle, or that the new drug is of greater value to humanity than dog-nose-art. The market will determine those questions.

SOLID AIR29: HOW INTELLECTUAL PROPERTY WORKS

Protection in the abstract

One fundamentally important point about how intellectual property works must be grasped at the outset. Intellectual property rights do not protect concrete things – the book in which a literary work is published, or the disk on which a computer program is distributed, or the packaging on which a trade mark is printed, or the tablet computer built to Apple’s ‘cool’ design30. Intellectual property exists in the abstract: these concrete items embody the intellectual property, but what the law protects is something different. Although Marshall McLuhan’s dictum that ‘the medium is the message’ dates from 196431, it is still the case that ownership of the medium and the intellectual property will frequently differ, as in The Creative Foundation v Dreamland Leisure Ltd and others32 in which Arnold J was asked to deal with rights and obligations relating to a wall on which Banksy had painted a mural: the tenants argued that they had been obliged to remove it under the terms of their lease, though putting it up for sale (as they had done) was not something the lease covered.

It is not the intellectual property that the consumer enjoys or benefits from – the musical work, the invention, the car design, or even the wall: to the consumer, what is important is some sort of embodiment of the intellectual property, something made using the intellectual property.

Selling solid air33

In the modern world, the distinction between the abstract intellectual property work and the concrete item which it protects assumes even more importance. Until only a decade or two ago, to enjoy recorded music it was necessary to buy a physical carrier with the recording embedded in it, and to read a book or a magazine, to buy a physical copy. Increasingly these are now distributed in non-tangible forms, streamed or downloaded by consumers. This is convenient: you can carry a library of books with you, and a huge collection of music, and as houses and flats become smaller and smaller the reduced need for storage space is convenient. My record collection would fill most of a modern flat, and my books another.

The effect on the distribution of intellectual property goods is huge. Many consumer products which previously had to be bought in physical form are now merely licensed to the consumer. This gives the rights owner the opportunity to impose restrictions on what the consumer may do with their purchase – to how many devices a sound recording may be copied, for example. It also enables the supplier to prevent the purchaser leaving their digital goods to another person under their will34, or transferring them during their lifetime. Where previously goods were manufactured and sold, and those copies left the control of the supplier, now no physical property passes in many transactions, and the licensor retains a great deal of control (creating conflicts with principles of competition law and consumer protection law, which go beyond the scope of this work).

Grant of limited monopoly

Intellectual property rights are property, though there is nothing inevitable or natural about this. Similar results could be achieved simply by prohibiting unfair competition, and under communist régimes a non-proprietary alternative was adopted.

Intellectual Property rights are negative rights, enabling the owner to exclude others from using them, and, like other property rights, they take the form of a monopoly limited in several ways:

  • Temporal. The monopoly generally lasts for a limited period. Trade marks are the exception: they can be kept alive for ever. The justification for trade mark protection is different from that for other intellectual property rights, and indefinite protection is appropriate.

  • Geographically. Intellectual property rights are restricted to the territory of the country which grants them. International conventions ensure protection for foreign rights owners under national laws. Some intellectual property rights (e.g. Benelux registered designs and trade marks, European Community trade marks, Registered Community Designs) are regional. The European Patent Convention (and its twin, the Eurasian Patent Convention) does not create regional rights, but rather provides a unitary process leading to the grant of a bundle of national patents.

  • By subject matter. The legislation lays down strict criteria for protection: if the property falls outside the definition, it will not be protected. For example, patent law excludes subject matter that would otherwise be considered a patentable invention.

  • Exclusive rights. The rights protected by IP legislation are closely defined, and if an alleged infringing act does not fall within one of the categories it will not be actionable.

  • Rules on competition and free movement. EU rules on competition and free movement of goods and the freedom to provide services restrict the ability of rights owners to do what they like with their property. The territorial nature of national intellectual property rights conflicts with the principles of free movement and the competition rules. The Court of Justice has devised elaborate rules about the exhaustion of national rights when goods are placed on the market within the European Economic Area.

If intellectual property rights constitute, or give rise to, legal monopolies, is that a good or bad thing? Economists do not agree, but as someone35 once remarked, if all the economists in the world were laid end to end, they would not reach a conclusion. At common law monopolies are considered to be contrary to public policy, and that has been the case ever since Darcy v Allin (Case of Monopolies)36 Parliament confirmed this view in the Statute of Monopolies 1623, but that is not conclusive as far as intellectual property rights are concerned. Section 6 of the Statute contains a saving for patents.

Nevertheless, the courts have always been disinclined to support a rights-holder if to do so would create an unfair monopoly (as in the House of Lords decision in Re Coca Cola’s Trade Mark37) and favoured free competition (see Crofter Handwoven Harris Tweed v Veitch38).

But we are not concerned with unfair monopolies, we are concerned with fair ones, monopolies which are justified because they give rise to a benefit which, without the monopoly, would not be available to the public. Competition law prohibits abuses of dominant positions, and intellectual property owners often occupy dominant positions in their markets, but not everything they do with their intellectual property is regarded as an abuse. Competition law also recognises that certain types of agreement will deliver benefits – exclusive patent licences, for example, might be an essential means for penetrating a new market, and if an exclusive licensee could not be appointed consumers in the territory which that company serves would be deprived of the patented product.

Competition laws stand in the background, ready to intervene to prevent an intellectual property right being used anti-competitively (though those laws are slow to react and therefore not the perfect solution to over-enthusiastic enforcement of intellectual property rights). Intellectual property laws themselves contain safeguards designed to strike a balance between the interests of the intellectual property owner and free competition. To begin with, intellectual property rights are not absolute monopolies granted for all time. Renewal fees have to be paid for patents, registered designs and trade marks. The owner is often required to make use of the right that has been granted: the privilege carries with it a responsibility. In the case of a trade mark, if it is not used for an arbitrary period of five years it may be revoked, the law assuming (though this is not stated in so many words) that the connection in consumers’ minds between the sign identifying the source of the goods or services and the owner of the trade mark will have become lost in that time. In the case of a patent, failure to work the invention can lead to compulsory licensing, so consumers may be able to enjoy the product or process over which exclusive rights have been granted.

As well as being granted for limited periods (and even trade marks can be so characterised, by reference to the requirement to use the mark), registered intellectual property rights can be declared invalid or revoked on grounds set out in the statutes that govern them. As monopolies go, they are not very secure ones.

So, intellectual property is inherently anti-competitive, but that is something we can live with because it encourages people to write music, paint pictures and devise new drugs. We must however take care to keep it in its box – to ensure that intellectual property does not grow into a monopoly too strong to justify. Unfortunately, in the modern world, rights-holders, probably seeking to please their shareholders, too often strive to make their position as strong as possible. The ‘absolutists’ register tiny elements of their corporate identity as trade marks, for a much wider range of goods or services than they actually offer, so competitors are excluded; they object to any use of their copyright, even though the use is likely to be permitted by statute; and they enforce their patents, to such an extent that it sometimes seems that the mobile phone industry regards litigation as its main object, the production of goods a distant second. Intellectual property, intended to be a means of improving the lot of humankind, is becoming an end in itself.

Characteristics of property

The statutes tell us that intellectual property rights are personal property. Excepting patents39, they are choses in action – personal rights that can be enforced only by action: patents can be assigned and dealt with in all ways as if they were choses in action too, so why the law says they are not choses in action is academic.

Intellectual property can therefore be mortgaged or assigned, and licences may be granted to use it. The whole body of the law of property (as it applies to personal property) is therefore involved in intellectual property law (and in Oxford’s Bodleian Law Library, if nowhere else, intellectual property books are shelved among the rest of the property law collection – or at least they were last time I looked).

Even common law rights, such as the ability to sue for the tort of passing off40, may be personal property. Modern cases on breach of confidence may also be based on an analysis by the courts that seems to assume the existence of some proprietary rights in confidential information.

It seems that this stems from the propensity of English law readily to consider rights as property. In his Stewart Memorial Lecture in 200741 (and elsewhere), William Patry, Google’s copyright counsel and a distinguished scholar in the field, described the treatment of copyright as property as a metaphor. Although this goes quite against the wording of the UK legislation it is at least arguably a better way to look at the matter. Cory Doctorow has gone further, and called intellectual property a ‘silly euphemism’.42

Intellectual property rights (the registered ones at least) are different from other property rights in that they may be cancelled if they are found to be invalid – that is, defective in some way so they should never have been granted. Why, you may ask, should this be possible? Are not steps taken before allowing a right to be registered to ensure it qualifies for protection? Indeed, a patent application is examined carefully to make sure what it claims is novel and inventive, but the examiner has limited resources and anyway it is sometimes difficult to recognise what is novel or inventive over the prior art: patents will inevitably sometimes be granted when they should not. In an infringement action, the defendant, faced with legal fees running into hundreds of thousands of pounds, will not hesitate to devote far greater resources than the examiner could to finding that obscure piece of prior art that would make the patent invalid. In the case of registered designs, the validity problem is even greater because the office does not conduct a substantive examination at all: as for trade marks, while an official search is performed, it is up to owners of prior rights to take action to oppose an application which conflicts with their rights.

Overlap of protection

Several different rights – patents, registered designs, unregistered design right, copyright and trade marks – may subsist simultaneously in the same article: consider for example a compact disc. The technology may be protected by one or more patents (and additional technical information may simply be kept secret by the inventor, thus monopolising its use): it might carry a recording of a piece of music, which will be protected by copyright if it meets the requirements of the legislation, as will be the words that accompany that music: the performance of the music will also be protected (though not by copyright, but by a distinct right given to performers): and it will bear the trade mark of the record company that has released it. The name of the artist might also be a registered trade mark, and could in any event be protected by a passing off action. See, for instance, the Wet Wet Wet case, Bravado Merchandising Services Ltd. Mainstream Publishing (Edinburgh) Ltd.43

This overlap of protection has implications for successful management of an intellectual property portfolio. As one right expires, the owner may contrive to have another, longer-lived right, step in. A patent for an invention expires after 20 years: a registered design may be used to achieve a further five years’ protection for the appearance of articles incorporating the invention: copyright in associated material will last for seventy years after the death of the author: and if consumers can be convinced that the branded product is superior to others’ competing products, protection can be secured indefinitely courtesy of registered trade mark law.

What happened to unfair competition?

If the whole of intellectual property law could be reduced to a simple prohibition of unfair competition (as I suggested earlier), is unfair competition in itself against the law? Although there is a large – and growing – body of law concerned with protecting competition, the answer to that general question is ‘no’. But the UK’s law is often said to be deficient in this respect.

Article 10bis of the Paris Convention requires contracting states to provide an effective remedy against unfair competition, which it defines as:

any act of competition contrary to honest practices in industrial or commercial matters.

It is not an intellectual property issue, but as it occupies the same territory (and, as I observed above, if one did not accept that intellectual creations should be a form of property, a law against unfair competition could do most of the job instead) and therefore fits fairly well within the Convention. Many countries have taken the Paris Convention at face value and introduced unfair competition laws: in Case C-100/02, Gerolsteiner Brunnen v Putsch44 the Court of Justice, considering language in the trade marks directive lifted straight from Article 10bis, reformulated the obligation:

The condition of honest practice constitutes in substance the expression of a duty to act fairly in relation to the legitimate interests of the trade mark owner

Judges in the UK have always taken a robust view of competition. Business conduct is generally regarded as fair if it is not criminal, which is a very low standard of fairness. Consistent with this approach, English law lacks any general concept of unfair competition, and the same is true of many other common-law jurisdictions, although in the United States the Supreme Court (by a majority, with two very powerful dissenting judgments) upheld a claim to unfair competition (sending the plaintiff’s stories by telegraph from the east coast to the west coast so as to publish the news there before the plaintiffs) in International News Service v Associated Press45.

A claimant who wants protection for something must therefore try to find an intellectual property right that will do the job, and if (as in Green v Broadcasting Corporation of New Zealand46, known as the Opportunity Knocks case after the television show involved) no intellectual property right does the job there will be no protection. An appeal to general principles of unfair competition will cut no ice with the court. Green is one of a series of cases in which the House of Lords and the Privy Council (some of the same judges in more than one of the cases) dug in their heels and refused to countenance what they considered an unjustified extension of intellectual property protection: other such cases are the Coca Cola Trade Mark case mentioned above, British Leyland Motor Corp & Ors v Armstrong Patents Company Ltd & Ors47, and CBS Songs Ltd v Amstrad Consumer Electronics Plc48.

That is not to say that there is no law in the UK to protect competition. Ever since accession to the European Communities in 1973 (and for British business operating in the common market, since long before that date) the competition rules now found in Articles 81 and 82 of the Treaty on the Functioning of the European Union have been part of the legal landscape. Since 1998, domestic competition law (in the form of the Competition Act) has consciously emulated those rules.

Nor is it to say that the judicial conservatism of the 1980s still pertains. The key modern passing-off case, Erven Warnink B.V. v. J. Townend & Sons (Hull) Ltd.49 (the Advocaat case), shows the House of Lords prepared to push the boundaries of the action, and later cases such as Irvine v Talksport50 follow that trend (though in Irvine the claimant had to go to appeal to obtain sufficient damages to make it, as he put it, worth getting out of bed).

Cadbury-Schweppes v Pub Squash Co51 shows a different approach to passing-off, in which the Privy Council recoiled from creating a monopoly by protecting the way in which the appellants’ product was advertised. To market a soft drink product to habitual beer-drinkers, emphasising its masculine characteristics, required a particular approach, and if the appellants were to succeed in their claim that the respondent’s advertising amounted to passing off, small new entrants would find it impossible to enter the market already occupied by large companies with well-known products – the perpetual problem.

Despite all this (or perhaps as a consequence of some of it), it has been said that we have a law of unfair competition in the UK: and said by no less an authority than Aldous LJ, who was the Patents Court judge for several years before his promotion to the Court of Appeal, and before that a leading member of the intellectual property Bar. He first expressed this heresy in British Telecommunications Plc & Ors v One In A Million Ltd & Ors52, and repeated it in Arsenal FC v Reed53. However, his successor in the Patents Court, Jacob J (as he then was) took a different view in Hodgkinson & Corby v Ward’s Mobility Services54, saying that there was no tort of taking another trader’s customers (the robust view of what amounts to fair competition).

If the English courts have some differences of opinion, how much worse it is when you add the European Union the the equation. In L’Oréal v Bellure55 Jacob LJ asserted (at para 141) that ‘the basic economic rule is that competition is not only lawful but a mainspring of the economy.’ The Court of Justice (Case C-487/07) said that, on the contrary, taking unfair advantage of another’s trade mark could be an infringement. When the case came back to the Court of Appeal, Jacob J noted (at para 2):

Not for the first time in intellectual property cases (e.g. British Horseracing Board v William Hill56, Arsenal v Reed57 and Boehringer Ingelheim v Swingward58 the Court’s judgment has left enough room for the parties to disagree about what it means.

He then went on to say (at paras 6 and 7):

The problem, stated at its most general, is simple. Does trade mark law prevent the defendants from telling the truth? Even though their perfumes are lawful and do smell like the corresponding famous brands, does trade mark law nonetheless muzzle the defendants so that they cannot say so?

I have come to the conclusion that the ECJ’s ruling is that the defendants are indeed muzzled. My duty as a national judge is to follow EU law as interpreted by the ECJ. I think, with regret, that the answers we have received from the ECJ require us so to hold.

Infringement And Litigation

Enforcing rights

If someone parked a caravan or pitched a tent on your front garden, you would be able to take action for trespass. You would ask the court to grant an injunction requiring them to move. You might claim damages if they had broken down a fence or ruined the lawn. If someone takes your car, you could sue them for its return, though the criminal law might offer more effective redress in such a situation.

Similarly, if someone trespasses on your intellectual property you could take legal action against them. A trespass on intellectual property is called an infringement (the actions for breach of confidence and passing-off, though closely related to intellectual property and giving the same remedies, are different). If your intellectual property rights are infringed, the courts will grant injunctions, award damages (or order an account of profits, which is another way to look at the same thing), make declarations, make other orders (for example, for seizure or destruction) and take other steps to put the parties in the position they would have been in had the infringement (or passing-off or breach of confidence) not occurred.

Intellectual property being intangible, legal action is the only way to enforce the rights of ownership. Unlike a motor car, you cannot simply take it back. Possession is not a concept that assists. The action for infringement is central to the intellectual property system, which is why intellectual property rights form part of that class of property rights called choses in action. But there are also other matters that can come to court: claims of invalidity, claims for revocation, disputes about ownership. There is also a growing edifice of criminal sanctions bolted on to the intellectual property system.

Criminal offences

The criminal law tends to intervene when there is a wider public problem than the mere infringement of a private property right. It concerns itself with piracy and counterfeiting, neither of which are precise concepts: indeed, car manufacturers (or at least one car manufacture) used to refer to anyone making spare parts for their vehicles as a ‘counterfeiter’, making almost useless through hyperbole a word that has a useful role to play when referring to the mass production of shoddy goods bearing deliberately misleading trade marks. Piracy tends to indicate the unauthorised manufacture and distribution (through car boot sales and latterly on-line auctions) of CDs, DVDs and computer programs which are protected by copyright, though it will frequently also involve the reproduction of trade marks to complete the deception. (Whether anyone is actually deceived is a moot point, given that research shows that an alarmingly high proportion of the British public is indifferent to the problem, preferring to be able to buy what appear to be Louis Vuitton handbags and Burberry apparel at knock-down prices from market stalls.)

The cost of litigation

Litigation is a rich person’s pastime. Intellectual property litigation is for the extremely rich. It has always been cripplingly expensive, and the cost of enforcing one’s rights (on top of the costs involved in securing some of them, especially patents, to start with) is a major limitation on their usefulness. Nearly 125 years ago, in Ungar v Sugg59 Lord Esher MR famously said:

Well, then, the moment there is a patent case one can see it before the case is opened, or called in the list. How can we see it? We can see it by a pile of books as high as this [holding up the papers] invariably, one set for each Counsel, one set for each Judge, of course, and by the voluminous shorthand notes: we know ‘Here is a patent case.’

Now, what is the result of all this? Why, that a man had better have his patent infringed, or have anything happen to him in this world, short of losing all his family by influenza, than have a dispute about a patent. His patent is swallowed up, and he is ruined. Whose fault is it? It is really not the fault of the law; it is the fault of the mode of conducting the law in a patent case. That is what causes all this mischief.

In the High Court an action will typically cost between £500,000 and £1 million, and in the notorious case of Research In Motion UK Ltd v Visto Corporation60, RIM’s legal costs came to around £6m, and Visto’s about £1m. As noted above, the Intellectual Property Enterprise Court operates strict costs limits (in the sense of the costs that the losing party might be ordered to pay), but even they can seem daunting to small litigants. In practice, the cost of litigation (including awards of costs against the losing party) usually have a much greater bearing on the outcome than the substantive law.61

1Kirin Amgen v Hoechst Marion Roussel [2004] UKHL 46.

2[2004] UKHL 45.

3In English v Emery Reimbold & Strick Ltd (and two other appeals heard with it) [2002] EWCA Civ 605, 30 April 2002, para 19 the Court of Appeal said:

... the judgment must enable the appellate court to understand why the Judge reached his decision. This does not mean that every factor which weighed with the Judge in his appraisal of the evidence has to be identified and explained. But the issues the resolution of which were vital to the Judge’s conclusion should be identified and the manner in which he resolved them explained. It is not possible to provide a template for this process. It need not involve a lengthy judgment. It does require the Judge to identify and record those matters which were critical to his decision.

4[2009] EWCA Civ 646.

5[2007] EWHC 1040 (Pat), [2007] RPC 729.

6[2009] EWHC 1294.

7Wikipedia, which on this subject is quite informative enough for my needs, tells me it is ‘the study of the relative spatial arrangement of atoms that form the structure of molecules and their manipulation’.

8 The change in name took place on 1 October 2013, under The Civil Procedure (Amendment No.7) Rules 2013, SI 2013/1974.

9The change of name was recommended in December 2006 by the Gowers Review of intellectual property. However, to accomplish it would have required over 180 amendments to a wide range of statutes. The Patent Office has adopted the new title as anoperating name’ and in doing so has given up a great deal of the protection of section 112 of the Patents Act 1977, which protects the name ‘patent office’ with criminal sanctions. In EI Du Pont Du Nemours & Co v United Kingdom Intellectual Property Office [2009] EWCA Civ 966 Jacob LJ referred to ‘the trendy but pointless “operating name” of “UK Intellectual Property Office”’. It has since re-rebranded,, dropping the ‘UK’ part. This is all reminiscent of when the Patent Office was relocated to its present home in south Wales, naming its new building ‘Concept House’ notwithstanding the fact that the patent system (and still less any other area of intellectual property law) gives no protection to mere concepts.

10Sadly, Sir Nicholas Pumphrey passed away on Christmas Eve 2007, before hearing any cases as a judge in the Court of Appeal to which he had recently been promoted.

11[2011] UKSC 51.

13 The principles governing the grant of an injunction are found in American Cyanamid v Ethicon [1975] AC 396.

14[2008] EWCA Civ 445 (09 May 2008).

15Esquisse de Constitution, in Collection complète des ouvrages publiés sur le Gouvernement representatif et la Constitution actuelle de la France, page 296.

16C.C.Mass. 1845.Case No. 3,662, 1 Woodb. & M. 53; 2 Robb, Pat. Cas. 303; 3 West. Law J. 151; Merw. Pat. Inv. 414.

17Senior Courts Act 1981 (originally the Supreme Court Act), section 72(5), as amended. Beware of any definition which itself includes the defined term.

18Companies Act 1985, section 396(3A), now re-enacted in section 861 of the Companies Act 2006.

19[2011] EWHC 349 (Ch).

20The other 18 are Section 8(2) of the Atomic Energy Authority Act 1986, Section 92A(9) of the Building Societies Act 1986, Section 88(10) of the Clean Neighbourhoods and Environment Act 2005, Section 712(3) of the Corporation Tax Act 2009, Sections 129(2) and 29(6) of the Finance Act 2000, Section 8(3) of the Forestry Act 1967, Section 9(1A) of the Income and Corporation Taxes Act 1988, Sections 195(6) and 306(6) and 536(4) of the Income Tax Act 2007, Sections 456(1) and 19(6) of the Income Tax (Earnings and Pensions) Act 2003, Section 579(2) of the Income Tax (Trading and Other Income) Act 2005, Section 15 of the Law Reform (Miscellaneous Provisions) (Scotland) Act 1985, Sections 33B and 35(3C) of the National Heritage Act 1983, Paragraph 2 of the Personal Accounts Delivery Authority Winding Up Order 2010/911, Paragraph 9(6) of the Overseas Companies (Execution of Documents and Registration of Charges) Regulations 2009/1917, Paragraph 2 of the Scientific Research Organisation Regulations 2007/3426, Paragraph 1(2) of the Education (Qualifications and Curriculum Authority and Qualifications, Curriculum and Assessment Authority for Wales) (Transfer of Property and Designation of Staff) Order 1997/2172, Paragraph 5 of the Employment Tribunals Extension of Jurisdiction (England and Wales) Order 1994/1623, and Paragraph 5 of the Employment Tribunals Extension of Jurisdiction (Scotland) Order 1994/1624. But you don’t need to know that.

21Trustees in the CB Simkin Trust v Inland Revenue Commissioner of New Zealand [2004] UKPC 55 might be thought to indicate otherwise, but the Privy Council had little alternative given that the statute, the Income Tax Act 1994, like those quoted above, made it a foregone conclusion. In that Act, ‘intangible property’ is defined to include ‘the right to use a trade mark’, so the Privy Council was quite right in its decision (which disallowed the trustees’ application for depreciation allowance because the exclusive licensee, not the trustees, owned the right to use the trade mark in question).

22 [1986] RPC 203 at 246.

23 [1980] FSR 289 at 295.

24 [1995] RPC 117 at 127.

25Jacob, The Stephen Stewart Memorial Lecture: Industrial Property – Industry’s Enemy? [1997] IPQ 3; Libling, The Concept of Property: Property in Intangibles, (1978) 94 LQR 103; Spence, Passing Off and the Misappropriation of Valuable Intangibles, (1996) 112 LQR 472. For general reviews of theoretical justifications for protecting intellectual property (which tend to blur the distinctions between patents and copyright, say little about designs, and prove hard to apply to trade marks), see J Hughes The Philosophy of Intellectual Property 77 Geo. L.J. 287 (‎1988) and Fisher, Theories of Intellectual Property in New Essays in the Legal and Political Theory of Property (Cambridge University Press, 2001), and (much shorter) Neil Wilkof’s critique of Fisher’s piece from the Journal of Intellectual Property Law and Practice (March 2014). For a different perspective, see Brooks, Intellectual property rights – the modern day enclosure of the commons.

26The word ‘commons’ is increasingly used in discussions about intellectual property law, especially copyright. It alludes to old systems of land ownership in which common land was available for the use of all. The concept corresponds closely to that of ‘public domain’, although in intellectual property law that expression should be used with care as it means different things in different contexts: material which is in the public domain for confidentiality purposes might still be protected by copyright. ‘Creative Commons’ is the name given to a movement to liberalise the terms under which copyright works and more recently patented inventions are made available to users.

27[2003] FSR 561, [2002] EWCA Civ 1729 (26 November 2002) at para 25.

28For the views of Dr Hayek’s philosopher namesake, Friedrich, on intellectual property see this online article by Stephen Kinsella.

29The title of, and one song from, an album, his most celebrated, by singer-songwriter John Martyn (1948-2009) (Island Records, 1973).

30Samsung Electronics (UK) Ltd v Apple Inc [2012] EWHC 1882 (Pat) (09 July 2012), para 182.

31Understanding Media (McGraw Hill).

32[2015] EWHC 2556 (Ch); [2015] WLR (D) 383.

33I am obliged to my old mate John Kenny, solicitor, of Brisbane, who used this as the title of a paper he presented many years ago: and I suspect that he is in turn obliged to John Martyn (note 29, above).

34For a learned discussion of the problems encountered by one digital music collector, see Claudine Wong, Can Bruce Willis Leave His iTunes Collection to His Children?: Inheritability of Digital Media in the Face of EULAs, 29 Santa Clara High Tech. L.J. 703 (2012).

35The quote is usually attributed to George Bernard Shaw, although I have not been able to identify the source.

36(1602) 11 Co Rep 84b.

37[1986] RPC 421.

38[1942] AC 435.

39Patents Act 1977, section 30.

40Leather Cloth Co Ltd v American Leather Cloth Co Ltd (1863) De GJ&S 137.

41(2008) IPQ 1.

42The Guardian, 21 February 2008. It may be that it was a sub-editor on the Guardian who employed the word ‘silly’: in the article itself, intellectual property is referred to rather less sensationally as a ‘dangerous euphemism’, which is more consistent with the usual tone of Cory Doctorow’s contributions to the debate.

43The Times, 20 November 1995.

44[2004] ECR I-691 (7 January 2004).

45(1918) 248 US 215.

46[1989] UKPC 26 (18 July 1989).

47[1986] UKHL 7 (27 February 1986).

48[1988] UKHL 15 (12 May 1988)

49[1979] AC 731, [1980] R.P.C. 31.

50[2002] EWHC 367 (Ch) [2002] 2 All ER 414 (13th March, 2002).

51[1980] UKPC 30 (13 October 1980).

52[1998] EWCA Civ 1272 (23 July 1998)

53[2003] EWCA Civ 696 (21 May 2003).

54[1995] FSR 169.

55[2007] EWCA Civ 968 (10 October 2007).

56[2005] EWCA (Civ) 863, [2005] RPC 883.

57[2003] RPC 696, [2003] EWCA Civ 696.

58[2004] EWCA Civ 129, [2004] ETMR 90).

59(1892) 9 RPC 113 at 116-117.

60[2008] EWCA Civ 153 (6 March 2008).

61The high cost of litigation is partly offset by the availability of actions for damage suffered as a result of groundless threats of proceedings, available in patent, designs and trade mark cases. Following a Law Commission report, a bill was introduced into Parliament in early 2016 to extend the remedies available.

Comments