24 November 2014

Eli Lilly and Co. v Government of Canada: Latest Developments

I mentioned Eli Lilly's claim against Canada for compensation under art 1110 of the North American Free Trade Agreement ("NAFTA") in Bilateral Investment Treaties: Claiming Compensation from Foreign Governments under Bilateral Investment Treaties for failing to provide adequate IP Protection 27 July 2013 and Bilateral Investment Treaties: Eli Lilly and Co. v Government of Canada 2 Jan 2014 as well as my article "Bilateral Investment Treaties: A Remedy for SME?" which was published in Issue 12 of Volume 35 of the European Intellectual Property Review on page 759.

Following Eli Lilly's Notice of Arbitration which I mentioned in January the parties appointed Professor Albert Jan van den Berg, Mr Gary Born and Sir Daniel Bethlehem KCMG, QC as arbitrators. Eli Lilly designated its Notice of Arbitration as its statement of claim by a letter from its lawyers dated 14 May 2014. The arbitrators have made a procedural order dated 26 May 2014

  • designating the International Centre for the Settlement of Investment Disputes as the administering authority;
  • Washington DC as the seat of the arbitration;
  • applying the UNCITRAL Arbitration Rules except as modified by NAFTA;
  • proceeding in English;
  • providing for liability and damages to be determined separately; and
  • setting out a timetable for disclosure, exchange of evidence and final hearing which should take place 2016.
The Canadian government filed a defence on 30 July 2016 denying breach of any international obligation under NAFTA or otherwise. Eli Lilly served its memorial (lengthy written submissions) on 29 July 2014.
I will advise you what happens.

17 November 2014

Software Patents - Lantana v The Comptroller

Lantana Ltd. ("Lantana") is a California company that offers communication cable services, telephone systems and services and computer and data network services mainly to customers in Southern California. One of the company's employees invented a "method, systems, and computer program products for retrieving a file of machine readable data" for which Lantana applied for patents in the USA and around the world under the Patent Co-operation Treaty.

The Invention 
The invention is described in the abstract of the application as follows:

"A user, wishing to retrieve a file of machine-readable data from a remote machine-readable data storage device, transmits a first e-mail message from a local station to a remote station via a packet switched network. The first e-mail message includes a first machine-readable instruction and a first machine-readable retrieval criterion. The remote station receives the first e-mail message from the packet switched network. The remote station parses the first e-mail message to determine if it includes the first machine-readable instruction and the first machine-readable retrieval criterion. The remote station executes the first machine-readable instruction to transmit a second e-mail message from the remote station to the local station. The second e-mail message includes the file as an attachment. The local station receives the second e-mail message from the packet switched network."
One of the countries for which patent protection was sought was the United Kingdom. When the application was examined by the Intellectual Property Office the examiner found that the invention was excluded from patentability as a program for a computer as such.

The Law
It will be recalled that s.1 (2) of the Patents Act 1977 declares that:
"the following (among other things) are not inventions for the purposes of this Act, that is to say, anything which consists of -
(c) a scheme, rule or method for performing a mental act, playing a game or doing business, or a program for a computer."
However, that exclusion is subject to the following exception:
"the foregoing provision shall prevent anything from being treated as an invention for the purposes of this Act only to the extent that a patent or application for a patent relates to that thing as such."
The effect of these provisions was summarized neatly by Lady Justice Arden at paragraph [7] of her judgment when Lantana's appeal against the refusal of Mr Justice Birss (Lantana Ltd v The Comptroller-General of Patents, Designs and Trade Marks [2013] EWHC 2673 (Pat) (4 Sept 2013) to disturb the Comptroller's decision to uphold the examiner's objection (Re Lantana Ltd.'s application BL O/056/13 4 Feb 2013) came before the Court of Appeal (Lantana Ltd v The Comptroller General of Patents, Design And Trade Marks [2014] EWCA Civ 1463 (13 Nov 2014):
"Computer programs are not therefore wholly excluded. They are excluded unless the applicant shows that his application goes beyond an application for a computer program "as such".
Her Ladyship referred to computer programs which are within the exclusion and not patentable, as 'excluded matter'".

Lantana appealed to the Comptroller who upheld the examiner on the grounds that the contribution made by the invention fell solely within excluded matter and that the contribution did not have a relevant technical effect.  The company appealed to Mr Justice Birss contending that the contribution made by the invention was technical in nature and not within the exclusions on patentability because:
"(i)  telecommunications messages are generated by computers forming part of a telecommunications network, and transmitted from one computer to another over the network;
(ii)  one computer remotely controls the processing performed by another via a telecommunications network;
(iii) the result of this remote control is the transmission of files and information from the remote computer over a telecommunications network to the local computer;
(iv) this remote control and transmission is achieved in a manner which does not require a continuous connection between the two computers."
Between paragraphs [32] and [34] of his judgement the judge considered the 4 effects relied upon:
" [32]  ......... The first one is no more than the fact that the invention involves communication between two computers over the internet. This cannot help. At the priority date in 2008 (as today) this was entirely conventional and cannot form part of anything contributed by the invention. The same goes for the third effect, that files or information are transferred from one computer to another over a telecommunications network.
[33] The second effect is that one computer remotely controls another. I do not accept this as a fair characterisation of what is going on. If one computer really was exercising control over another in some way that might be a genuine technical contribution but all that is happening here is one computer is sending an email message to another. That is not control at all. The first email message includes machine readable instructions directed to the remote computer. But this is not something these inventors have contributed to the art at all. Conventional examples of emails which include code which can be executed by the computer receiving the message were mentioned at the hearing. An example can be found in figure 5 of one of the cited prior art documents (US Application 2006/0059129 A1). Mr Beresford submitted that this conflicted with the acceptance by the examiner that the claim was novel and non-obvious. I do not agree. Those matters apply to the claim as a whole, that is to say the entire combination of features. The point here is a different one, i.e. that the idea of an email message containing machine readable instructions as a contribution to the art in this case is wrong. The computers in the claim are not operating in a new way and the third signpost does not assist the applicant.
[34] The fourth effect relied on is said to be that the remote control and transmission is achieved in a manner which does not require a continuous connection between the two computers. This is said to be a solution to the problem of the need for continuous connections described in the patent. The Hearing Officer dealt with this point in paragraph 28 of the Decision (quoted above). He characterised the use of email not as solving the problem but as circumventing it."
Looking at the invention overall, His Lordship concluded at paragraph [41]:
"In substance the claim relates to computer software running on conventional computers connected by a conventional network. The task the software performs moves data from one computer to another using a conventional technique for carrying out that task, i.e. email. The context in which this arises is that accessing remote computers via continuous connections can be problematic but this is not a technical solution to those problems, it avoids them, but does so using a conventional technique. The claim has been found to be novel and inventive by the examiner and in that sense it makes a contribution of some kind to the art, but the applicant has been unable to identify anything which this claim can fairly be said to contribute which has a technical character. In my judgment this claim is to unpatentable subject matter and is contrary to s1(2) of the Act / Art 52 EPC."
The Appeal
Lantana appealed to the Court of Appeal on grounds that Lord Justice Kitchin summarized in paragraphs [61] to [63] of his judgment:
"[61] ............ Birss J fell into error in the following fundamental respects. First, in considering the computer program exclusion from patentability, he failed to consider the claimed invention as a whole and instead dissected it into various components and then dismissed them one by one as irrelevant to the issue of technical contribution on the ground that each was known at the priority date. This, Mr Beresford continued, was wrong in law and that, in assessing the technical contribution, the judge ought rather to have taken into account the whole combination of features specified in the claim, and all of the technical effects that combination provides, regardless of whether those features and effects were new or old.
[62] Second, and in consequence, Birss J wrongly disregarded features of the claim because he considered they were not novel and so did not form part of the contribution.
[63] Third, when eventually Birss J did consider the claim as a whole, he wrongly reasoned that the invention uses the conventional technique of email for moving data from one computer to another. This was inconsistent with the position taken by the Comptroller in not raising a novelty or inventive step objection. The judge ought to have found that the invention does provide a technical contribution because, using novel and inventive processing, it generates emails, transfers files from one computer to another across a telecommunications network, and does so by causing the local computer to control the remote computer, all with the advantageous consequence that a user may work at a local computer on a document stored at a remote computer without the need for a continuous internet connection."
The First Ground
Lady Justice Arden dealt with Lantana's first submission shortly at  paragraphs [31] and [32]:
["31] ...... In my judgment, the judge could not determine whether there was a relevant technical step outside the computer program without breaking the invention down into its constituent parts. In fact he also looked separately at the whole of the invention as well, but his assessment overall does not assist Lantana. He summarised his views on the invention overall as follows:
'In substance the claim relates to computer software running on conventional computers connected by a conventional network' (judgment, paragraph 48).
[32] This was the correct approach in law: see HTC v Apple at paragraphs [46] and [48] ......"
Although Lord Justice Kitchin accepted Lantana's submission that
"it is the claim as a whole which must be considered when assessing the contribution which the invention has made, and that it is not permissible simply to cut the claim into pieces and then consider those pieces separately and without regard to the way they interact with each other" 
he could not accept that Mr Justice Birss had wrongly dissected the claim into various components as Lantana had suggested. It was true that he did consider the invention by reference to various signposts and that he also addressed each of the alleged technical effects relied upon by Lantana but he could not be criticized for taking that course for that is what he had been asked to do. Further, he then stood back and considered the claim as a whole. His analysis led him to conclude that the presence of machine readable instructions in an email directed to a remote computer was not new at the priority date. Further, the invention consisted entirely of software running on a conventional computer arrangement, and the computers themselves were not operating in a new way. The increase in reliability resulted from the use of email rather than a new method or system of communication. Overall, the invention avoided the problem of accessing a remote computer by a continuous connection, but it did so by using a conventional technique. The judge was right to conclude that the overall contribution which the invention had made was therefore wholly within excluded subject matter and was not technical in nature.

The Second Ground
Lord Justice Kitchin said at paragraph [69] that Mr Justice Birss was required to identify the actual contribution made by the invention, and that is precisely what he and the hearing officer sought to do. The judge did not fall into error. At paragraph [38] Lady Justice Arden said:
"In the second step, the relevant technical step was the fact that the computers communicated with each other, but they did so in a way which was unquestionably conventional, namely via the internet, so the judge was right to hold that this was not a relevant technical contribution. He had to look to see if the remaining steps made a relevant technical contribution."
The Third Ground
Both Lady Justice Arden and Lord Justice Kitchin rejected rejected Lantana's submission that the judgfe;s reasoning conflicted with the hearing officer's. Lady Justice Arden observed that there was no technical contribution outside the computer program. The transfer of data and recovery of the file by an automatic email were not inventive steps in themselves.

Lady Justice Gloster agreed with both Lady Justice Arden and Lord Justice Kitchin. Thus, the Court of Appeal upheld Mr Justice Birss's decision.

Lady Justice Arden reminds us at paragraph [53] that it is not the fact that an invention relates to a computer program that renders it un-patentable. The exclusion is not so worded. It is worded as a partial exclusion. The invention must make some technical contribution over and above that provided by the program itself, such as an improvement in the working of the computer. Her judgment reviews many of the decisions of the English courts (and in passing the Boards of Appeal of the European Patent Office) many of which I have written about in this blog and sets out the methodology for identifying a technical contribution. It was not the first decision to do that but it is one of the clearest. I have often thought when writing case notes on those decisions that this must be the case that settles the issue for good but then a case like this one comes on and goes all the way to the Court of Appeal.

If anyone wants to discuss this case, software patents or excluded matter in general he or she should give me a ring during office hours on 020 7404 5252 or message me through my contact form.

Further Reading
13 May 2013 Jane Lambert Software Patents: HTC Europe Co Ltd v Apple Inc
2 Jan 2012  Jane Lambert  Patentability of Computer Programs: Halliburton Energy and Protecting Kids
17 Jan 2010 Jane Lambert Patents: Fisher Rosemount Systems Inc.'s Application
16 Jan 2009  Jane Lambert  Software Patents: January Patents Limited's Application
29 Dec 2008 Software Patents: New Guidance from the IPO
11 Nov 2008 Jane Lambert Patents: Software Protection after Symbian and Bilski
9 Oct 2008 Jane Lambert  Software Patents: Here we go again
23 Feb 2007 Jane Lambert  Patents: More Macrossan Fallout
19 Feb 2007 Jane Lambert Patents: The Macrossan Aftermath
13 Feb 2007 Jane Lambert  Patents: Macrossan v Controller-General of Patents, Designs and Trade Marks
5 Apr 2006 Simon Hart  Patents: Re Macrossan's Application - Guest Contribution by Simon Hart
14 Sep 2005 Jane Lambert  Software Patents Revisited
30 Aug 2005  Jane Lambert  Software Patents: Call for EP Resolution

08 November 2014

Inquiries as to Damages in the Intellectual Property Enterprise Court: The National Guild of Removers and Storers Ltd v Statham and Others

The National Guild of Removers and Storers is a trade association for the removal industry. According to its website
"The Guild's priority has always been, and remains, consumer protection in an industry where there are no specific laws to protect the moving public"
and its efforts in  respect of consumer protection have been recognized by Which.  As a result the Guild has a good reputation among the public making it advantageous to become a member.  The Guild has a number of trade marks which it allows its members to reproduce on their stationery, marketing literature and websites for so long as they remain members of the Guild.

When a remover ceases to be a member of the Guild it is required to remove the trade mark and references to the Guild immediately. If it fails to do so the Guild sues it for trade mark infringement or passing off. The Guild has brought a number of infringement proceedings over the years against its former members and the damages that have been awarded to it have been quite heavy.   I have blogged about two of those cases in Assessment of Damages: National Guild of Removers & Storers Ltd v Silveria 13 Nov 2010 and Why we needed to reform the Patents County Court: Deakin and National Guild 8 March 2011.

In The National Guild of Removers and Storers Ltd v Statham and Others [2014] EWHC 3572 (IPEC) (5 Nov 2014) the Guild claimed damages of £26,866.77 from a husband and wife removal firm in Wrexham which had omitted to remove a reference to the Guild in their listing on a third party website.  That entry had remained unnoticed between 2010 and 2013. The partners of that firm, Mr and Mrs Statham, said that
"the relevant pages of the website were only ever viewed by four unique users, all on the same day (25 March 2013), and these users and thus the only people who ever saw the pages were NGRS's employees and its lawyers and .... the Stathams arranged for the removal of the representations on the same day they received the letter before action, 15 April 2013."
The Guild did not accept that that was the case and argued that it would have made no difference even if it were and that the defendants had to pay the going rate.  Mr and Mrs Statham did not resist an application for summary judgment under CPR Part 24. Mr Justice Birss ordered an inquiry as to damages which came on before His Honour Judge Hacon.

Judge Hacon reviewed his predecessor's judgments in Silveria and Jones but declined to follow them. He reminded himself of the principles for determining the royalty that would have been agreed between a wiling licensor and willing licensee negotiating at arms' length which I listed in Inquiries as to Damages in the Intellectual Property Enterprise Court: Henderson v All Around the World Recordings Ltd. 5 Nov 2014. Applying those principles he directed himself as follows:
"The hypothesis with which I must begin is that immediately before the termination of the Stathams' membership on 13 October 2010 they entered into negotiations with NGRS for a licence to cover the use which the Stathams made of the NGRS name over the next two and a half years. Since both sides are to be taken to be willing to enter into a licence, I must assume that both would have been conciliatory to that extent."
He reasoned that the claimants would not be less than the annual membership fee and that the defendants would have accepted a licence on those terms.  As the defendants had been charged no more than  £1,800 per year for membership of the Guild the judge awarded damages at £5,200.

Judge Hacon's methodology is simple, systematic, fair and grounded in authority. It will not be easy to challenge on appeal.  Should anyone wish to discuss this judgment or the assessment of damages in general  he or she should call me on 020 7404 5252 during normal office hours or message me through my contact form.

05 November 2014

Inquiries as to Damages in the Intellectual Property Enterprise Court: Henderson v All Around the World Recordings Ltd.

Photo Wikipedia

I last discussed this litigation in Success Fees and ATE Premiums in the Patents County Court: Henderson v All Around the World Recordings Ltd 4 May 2013. I set out the basic facts in my case note:
"This was an action for infringement of a performer's rights which Judge Birss QC (as he then was) decided in Henderson v All Around the World Recordings Ltd and Another [2013] EWPCC 7 (13 Feb 2013).......  She had not been entirely successful and the costs of an unsuccessful copyright claim and half the costs of an application were awarded against her but she had succeeded overall."
The claimant had entered a conditional fee agreement with specialist solicitors and counsel because it was the only way she could bring this litigation. Her total costs and disbursements including success fees and after-the-event premiums would have been £232,676.20 had they been allowed but Judge Birss QC (as he then was) awarded her only £52,484.25.It followed that the balance would have to come from whatever moneys she might receive on an inquiry as to damages or an account of profits.

It is worth explaining at this stage to readers who are not lawyers and indeed lawyers who do not practise in England or Wales or specialize in intellectual property law non-specialist lawyers that intellectual property cases usually proceed in two stages in this country.  The first stage is the determination of liability which may require a hearing with oral evidence from witnesses known as a "trial". The second stage, which typically takes place a year after trial, is the assessment of the money that is due to the claimant which may be damages (compensation for his loss) which are determined at a hearing called an "inquiry" or an account of profits (surrender of the wrongdoer's ill gotten gains).  It is a fundamental principle of English law that a successful claimant can have damages or an account of profits or not both. The claimant will, of course, opt for the remedy that brings him more money but in most cases he will not know or even care what that is until after trial,   In this case, the claimant opted for damages.  Judge Birss QC ordered an inquiry which came on before His Honour Judge Hacon in Henderson v All Around the World Recordings Ltd [2014] EWHC 3087 (IPEC) (3 Oct 2014).

When a judge orders an inquiry he usually directs the claimant to serve points of claim on the defendant pursuant to paragraph 5 of PD40A - Accounts, Inquiries etc.  These are a type of pleading or statement of case where the claimant sets out his claim for money.   They are ordered because pleas for damages tend to be very short in the claimant's particulars of claim. The formula that I tend to use goes something like this:
"The claimant has suffered loss and/or damage as a result of the defendant's wrongdoing the precise nature and full extent of which can only be determined upon an inquiry."
It is usually necessary to prove that the defendant has suffered some kind of loss or damage at trial especially in causes of action like passing off where damages is one of the elements of the cause of action but there is no need to go into any detail.  The only exception is where the claimant seeks additional damages in a copyright, rights in performances or design right claim because paragraph 22.1 of the Part 63 Practice Direction - Intellectual Property Claims ("PD63") requires these to be pleased in the particulars of claim.

In this case the claimant claimed damages under the following heads:

(1)  Loss of royalties from a record deal other than one with the defendant record company;
(2)  Further damages under reg. 3 of The Intellectual Property (Enforcement, etc.) Regulations 2006 SI 2006 No 1028 ("the enforcement regulations"); and
(3) additional damages pursuant to s.191J (2) of the Copyright, Designs and Patents Act 1988 ("CDPA").

In his skeleton argument and oral submissions the claimant modified the first head into a claim for
"royalties that would have been paid had there been a licence which would have made the infringing acts lawful, negotiated between willing licensor and willing licensee, sometimes called the 'user principle')."
Before the inquiry the judge struck out allegations in the points of claim seeking damages for "unfair profits" under the enforcement regulations since that was tantamount to a claim for profits as well as damages which (as I have observed above) is not allowed in English law and additional damages since she had not pleaded those in her particulars of claim as required by para. 22 .1 of PD63.  The claimant applied for the allegations to be restored and as the defendant had addressed both points in its skeleton argument the judge allowed argument on both points which is perhaps just as well for we now have a definitive statement of the law on those points from Judge Hacon.

As to the general law relating to inquiries as to damages the judge referred to his previous decision in SDL Limited v Next Row Limited [2014] EWHC 2084 (IPEC) at paragraph [31]:
I derive the following principles from authorities in relation to an inquiry as to damages:
(1) A successful claimant is entitled, by way of compensation, to that sum of money which will put him in the same position he would have been in if he had not sustained the wrong, see Livingstone v Rawyards Coal Co. (1880) 5 App.Cas., 25 per Lord Blackburn at 39.
(2) The claimant has the burden of proving the loss, see General Tire and Rubber Company v Firestone Tyre and Rubber Company Limited [1976] RPC 197, at 212.
(3) The defendant being a wrongdoer, damages should be liberally assessed but the object is to compensate the claimant, not punish the defendant, see General Tire at p.212.
(4) The claimant is entitled to recover loss that was (i) foreseeable, (ii) caused by the wrong and (iii) not excluded from recovery by public or social policy, see Gerber Garment Technology Inc v Lectra Systems Ltd [1997] RPC 443, at 452.
(5) In relation to causation, it is not enough for the claimant to show that the loss would not have occurred but for the tort. The tort must be, as a matter of common sense, a cause of the loss. It is not necessary for the tort to be the sole or dominant cause of the loss, see Gerber at p.452.
(6) An inquiry will generally require the court to make an assessment of what would have happened had the tort not been committed and to compare that with what actually happened. It may also require the court to make a comparison between, on the one hand, future events that would have been expected to occur had the tort not been committed and, on the other hand, events that are expected to occur, the tort having been committed. Not much in the way of accuracy is to be expected bearing in mind all the uncertainties of quantification. See Gerber at first instance [1995] RPC 383, per Jacob J, at 395-396.
(7) Where the claimant has to prove a causal link between an act done by the defendant and the loss sustained by the claimant, the court must determine such causation on the balance of probabilities. If on balance the act caused the loss, the claimant is entitled to be compensated in full for the loss. It is irrelevant whether the court thinks that the balance only just tips in favour of the claimant or that the causation claimed is overwhelmingly likely, see Allied Maples Group v Simmons & Simmons [1995] WLR 1602, at 1609-1610.
(8) Where quantification of the claimant's loss depends on future uncertain events, such questions are decided not on the balance of probability but on the court's assessment, often expressed in percentage terms, of the loss eventuating. This may depend in part on the hypothetical acts of a third party, see Allied Maples at 1610.
(9) Where the claim for past loss depends on the hypothetical act of a third party, i.e. the claimant's case is that if the tort had not been committed the third party would have acted to the benefit of the claimant (or would have prevented a loss) in some way, the claimant need only show that he had a substantial chance, rather than a speculative one, of enjoying the benefit conferred by the third party. Once past this hurdle, the likelihood that the benefit or opportunity would have occurred is relevant only to the quantification of damages. See Allied Maples at 1611-1614."
In addressing the claimant's first head of damage as actually argued. the royalties that would have been negotiated between a willing licensor and willing licensee negotiating at arms' length, the judge reminded himself of the principles which Mr Justice Arnold had listed in  Force India Formula One Team Limited v 1 Malaysia Racing Team Sdn Bhd  [2012] RPC 29, [2012] EWHC 616 (Ch):
"(i) The overriding principle is that the damages are compensatory: see Attorney-General v Blake at 298 (Lord Hobhouse of Woodborough, dissenting but not on this point), Hendrix v PPX at [26] (Mance L.J., as he then was) and WWF v World Wrestling at [56] (Chadwick L.J.).
(ii) The primary basis for the assessment is to consider what sum would have [been] arrived at in negotiations between the parties, had each been making reasonable use of their respective bargaining positions, bearing in mind the information available to the parties and the commercial context at the time that notional negotiation should have taken place: see PPX v Hendrix at [45], WWF v World Wrestling at [55], Lunn v Liverpool at [25] and Pell v Bow at [48]–[49], [51] (Lord Walker of Gestingthorpe).
(iii) The fact that one or both parties would not in practice have agreed to make a deal is irrelevant: see Pell v Bow at [49].
(iv) As a general rule, the assessment is to be made as at the date of the breach: see Lunn Poly at [29] and Pell v Bow at [50].
(v) Where there has been nothing like an actual negotiation between the parties, it is reasonable for the court to look at the eventual outcome and to consider whether or not that is a useful guide to what the parties would have thought at the time of their hypothetical bargain: see Pell v Bow at [51].
(vi) The court can take into account other relevant factors, and in particular delay on the part of the claimant in asserting its rights: see Pell v Bow at [54]".
To these he added the following additional principles listed by Mr Justice Newey in 32Red Plc v WHG (International) Ltd and Others [2013] EWHC 815 (Ch) (12 April 2013):
"(vii) There are limits to the extent to which the court will have regard to the parties' actual attributes when assessing user principle damages. In particular
(a) the parties' financial circumstances are not material;
(b) character traits, such as whether one or other party is easygoing or aggressive, are to be disregarded [29]-[31].
(viii) In contrast, the court must have regard to the circumstances in which the parties were placed at the time of the hypothetical negotiation. The task of the court is to establish the value of the wrongful use to the defendant, not a hypothetical person. The hypothetical negotiation is between the actual parties, assumed to bargain with their respective strengths and weaknesses [32]-[33].
(ix) If the defendant, at the time of the hypothetical negotiation, would have had available a non-infringing course of action, this is a matter which the parties can be expected to have taken into account [34]-42].
(x) Such an alternative need not have had all the advantages or other attributes of the infringing course of action for it to be relevant to the hypothetical negotiation [42].
(xi) The hypothetical licence relates solely to the right infringed [47]-[50].
(xii) The hypothetical licence is for the period of the defendant's infringement [51]-[52].
(xiii) Matters such as whether the hypothetical licence is exclusive or whether it would contain quality control provisions will depend on the facts and must accord with the realities of the circumstances under which the parties were hypothetically negotiating [56]-[58]."
Applying these principles the judge considered the negotiation that might have been conducted between the parties immediately before the recording of the claimant's performance was released. He reminded himself that the claim was merely for infringement of the claimant's performance right and not her copyrights in the words or music.  Both sides would have wanted an agreement but the defendant was in the stronger bargaining position.  The judge considered comparable negotiations that the claimant had entered and concluded that the claimant would have received a 6% royalty on sales of her recording less costs.  He assessed her damages under the user principle at £30.000.

As I said earlier, it is a fundamental principle of English law that a successful claimant can claim damages or an account of profits but not both. The claimant argued that reg 3 (1) (a) of the enforcement regulations which requires the court to take account of "any unfair profits made by the defendant" had changed that rule. His Honour rejected that contention for the following reasons. First, the enforcement regulations are intended to implement Directive 2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the enforcement of intellectual property rights OJ L 196/16 2.6.2004. Art 13 (2) of that directive makes clear that states can provide provide for the recovery of profits as an alternative to an inquiry as to damages. Secondly. courts have continued to apply the rule that damages are alternatives since the directive came into effect.

In the judge's view reg 3 (1) (a) was intended to allow a court to award an additional sum related to the profit the defendant has made from knowing infringement. Such a case might arise
"if the defendant made no direct financial profit from the infringement – so an account of profits would be of little use – but his business expanded in volume and/or in reputation on the back of loss-leader infringements. For the claimant, aside from losing sales there would be a likelihood of further loss because of the expansion of a competing business. The expansion would not constitute a profit by the defendant in the usual direct sense, but it would be a contingent profit nonetheless and an unfair one."
His Honour considered that the present case provided an example of unfair profits as contemplated by the regulation in that she was not given proper recognition for her performance the credit having gone to another artiste. For that loss the judge awarded her another £5,000.

The judge declined to reverse his order striking out the additional damages claim. However, he observed that this was a case where justice required an additional award of £5,000 and that had already been made under reg 3 (1) (a). The claimant's total damages were therefore £35,000.

This is a very useful case that will no doubt be relied on frequently. It analyses reg 3 of the enforcement regulations and the directive that it implements and should prevent fresh attempts to inflate damages claims by reliance on the reference to "unfair profits". Secondly, it formulates all the principles that the court should take account when calculating a notional royalty between willing licensor and licensee bargaining at arms' length. Thirdly, it is a salutary reminder of the need to plead additional damages whenever they are required.   Should amplification or clarification of any point be requited readers should call me on 020 7404 5252 during office hours or fill in my contact form at any time.

03 November 2014

Orphan Works Licensing

British Library
Photo Wikipedia

One of the consequences of extending the term of copyright in many types of copyright has been a massive increase in the number of works in which copyright subsists whose owners cannot be identified or found. Such works are known as "orphan works" and HM government claims that there are some 91 million of them in the UK alone.  Because their owners cannot be traced orphan works cannot lawfully be reproduced even for preservation. Consequently, works recorded on such media as celluloid film and magnetic tape may be lost for ever.  Much of that work is culturally important and some of it is of considerable scientific interest such as patient records in studies of malaria.  In Digital Opportunity: A Review of Intellectual Property and Growth Professor Hargreaves described the problem of orphan works as "the starkest failure of the copyright framework to adapt."

The Orphan Works Directive
This is not of course a specifically British problem and on the 25 Oct 2012 the European Parliament and Council adopted Directive 2012/28/EU on certain permitted uses of orphan works.  Art 6 (1) of that Directive requires EU member states to provide for an exception or limitation to the right of reproduction and the right of making available to the public in their copyright laws to enable "publicly accessible libraries, educational establishments and museums, as well as by archives, film or audio heritage institutions and public-service broadcasting organisations" to make orphan works on print, film or audio or audio-visual media to available to the public and reproduce them for "the purposes of digitization, making available, indexing, cataloguing, preservation or restoration."  Art 9 (1) required member states to implement the Directive by 29 Oct 2014.

Enterprise and Regulatory Reform Act 2013
The legislation that implemented that Directive was the Enterprise and Regulatory Reform Act 2013. S.77 (3) of that statute inserted the following new provisions into the Copyright, Designs and Patents Act 1988:
Orphan works licensing and extended collective licensing
116A Power to provide for licensing of orphan works
(1) The Secretary of State may by regulations provide for the grant of licences in respect of works that qualify as orphan works under the regulations.
(2) The regulations may—
(a) specify a person or a description of persons authorised to grant licences, or
(b) provide for a person designated in the regulations to specify a person or a description of persons authorised to grant licences
(3) The regulations must provide that, for a work to qualify as an orphan work, it is a requirement that the owner of copyright in it has not been found after a diligent search made in accordance with the regulations.
(4) The regulations may provide for the granting of licences to do, or authorise the doing of, any act restricted by copyright that would otherwise require the consent of the missing owner.
(5)  The regulations must provide for any licence—
(a) to have effect as if granted by the missing owner;
(b) not to give exclusive rights;
(c) not to be granted to a person authorised to grant licences.
(6) The regulations may apply to a work although it is not known whether copyright subsists in it, and references to a missing owner and a right or interest of a missing owner are to be read as including references to a supposed owner and a supposed right or interest.
116B Extended collective licensing
(1) The Secretary of State may by regulations provide for a licensing body that applies to the Secretary of State under the regulations to be authorised to grant copyright licences in respect of works in which copyright is not owned by the body or a person on whose behalf the body acts.
(2) An authorisation must specify—
(a) the types of work to which it applies, and
(b) the acts restricted by copyright that the licensing body is authorised to license.
(3) The regulations must provide for the copyright owner to have a right to limit or exclude the grant of licences by virtue of the regulations.
(4) The regulations must provide for any licence not to give exclusive rights.
(5) In this section “copyright licences” has the same meaning as in section 116.
(6) Nothing in this section applies in relation to Crown copyright or Parliamentary copyright.
116C General provision about licensing under sections 116A and 116B
(1) This section and section 116D apply to regulations under sections 116A and 116B.
(2) The regulations may provide for a body to be or remain authorised to grant licences only if specified requirements are met, and for a question whether they are met to be determined by a person, and in a manner, specified in the regulations.
(3) The regulations may specify other matters to be taken into account in any decision to be made under the regulations as to whether to authorise a person to grant licences.
(4) The regulations must provide for the treatment of any royalties or other sums paid in respect of a licence, including—
(a) the deduction of administrative costs;
(b) the period for which sums must be held;
(c) the treatment of sums after that period (as bona vacantia or otherwise).
(5) The regulations must provide for circumstances in which an authorisation to grant licences may be withdrawn, and for determining the rights and obligations of any person if an authorisation is withdrawn.
(6) The regulations may include other provision for the purposes of authorisation and licensing, including in particular provision—
(a) for determining the rights and obligations of any person if a work ceases to qualify as an orphan work (or ceases to qualify by reference to any copyright owner), or if a rights owner exercises the right referred to in section 116B (3), while a licence is in force;
(b) about maintenance of registers and access to them;
(c) permitting the use of a work for incidental purposes including an application or search;
(d) for a right conferred by section 77 to be treated as having been asserted in accordance with section 78;
(e) for the payment of fees to cover administrative expenses.
116D Regulations under sections 116A and 116B
(1) The power to make regulations includes power—
(a) to make incidental, supplementary or consequential provision, including provision extending or restricting the jurisdiction of the Copyright Tribunal or conferring powers on it;
(b) to make transitional, transitory or saving provision;
(c) to make different provision for different purposes.
(2) Regulations under any provision may amend this Part, or any other enactment or subordinate legislation passed or made before that provision comes into force, for the purpose of making consequential provision or extending or restricting the jurisdiction of the Copyright Tribunal or conferring powers on it.
(3) Regulations may make provision by reference to guidance issued from time to time by any person.
(4) The power to make regulations is exercisable by statutory instrument.
(5) A statutory instrument containing regulations may not be made unless a draft of the instrument has been laid before and approved by a resolution of each House of Parliament.”
The Consultation
After this Act was passed the Intellectual Property Office published a consultation document entitled  Copyright works: seeking the lost which canvassed views on the implementation of the primary legislation.  The IPO received a large number of responses from such institutions as the BBC, the British Library, collecting societies and other copyright owners' organizations and publishers as well as concerned individuals which can be viewed at Consultation outcome: Copyright: UK orphan works licensing scheme. The government responded to those submissions in Government response to the technical consultation on orphan works.

The Regulations
On 27 Oct 2014, shortly before the deadline imposed by art 9 (1) of the Directive was due to come into effect, Baroness Neville Rolfe, signed The Copyright and Rights in Performances (Licensing of Orphan Works) Regulations 2014 SI 2014 No 2863. Those regulations came into force on 29 Oct 2014. They implement the Directive and provide a licensing scheme that enables anybody to apply to the Intellectual Property Office to obtain a licence to use an orphan work (see the IPO's press release UK opens access to 91 million orphan works 29 Oct 2014).

The Scheme
The operation of the scheme is set out in a document entitled Orphan Works Licensing Scheme  Overview for applicants which was published on the day that the Regulations came into force.  Essentially, the Comptroller (the CEO of the IPO) will grant a licence to use an orphan work on behalf of the untraced copyright owner if he is satisfied that the applicant has made a "diligent search" to find that missing owner in return for an "application fee" and, if the licence is granted, a "licence fee". Details of the application and its outcome are entered on to a register that is kept by the IPO. If the copyright owner identifies himself to the IPO, he may stop the application if a licence has not yet been granted or claim the licence fee if it has. Guidance on the rights of rights holders is set out in Orphan Works Licensing Scheme Guidance for right holders.

A Closer Look at the Regulations
The statutory instrument consists of 14 regulations including provisions on citation. commencement and interpretation in regs 1 and 2 respectively.

An orphan work is defined by reg. 3 (4) as a "relevant work" (that is to say, "a work which is protected by copyright or a performance in respect of which certain acts constitute restricted acts" within the meaning of reg 3 (1)) "where, after a diligent search ....................., one or more of the right holders in the relevant work have either not been identified or, if identified, have not been located."

Reg 4 (2) provides that
"A diligent search must comprise a reasonable search of the relevant sources to identify and locate the right holders of the relevant work."
At the very least this must include the register and any database that is to be maintained by the Office for Harmonization in the Internal Market for the purposes of the Directive pursuant to art 3 (6) of that instrument. Where there is no record that a work is an orphan work in the register or databases reg 4 (3) (b) provides that it may include any relevant sources listed for that category of work in Part 2 of Schedule ZA1 to the Act which is inserted by The Copyright and Rights in Performances (Certain Permitted Uses of Orphan Works) Regulations 2014. Further guidance on sources may be provided by the Comptroller pursuant to reg 4 (4).

Once the Comptroller has received an application showing that a diligent search has been carried out he may grant an "orphan licence" pursuant to reg 6 (1). Such a licence must
(a) permit non-exclusive use of an orphan work in the United Kingdom;
(b) permit acts restricted by the copyright or sections 182, 182A, 182B, 182C, 182CA, 183 or 184 of the Copyright Designs and Patents Act 1988 in an orphan work for a term not exceeding 7 years;
(c) prohibit the grant of sub-licences;
(d) have effect as if granted by the right holder of the relevant work; and
(e) provide that the use of an orphan work does not affect the moral rights of an author under Chapter IV of Part 1 of the Act or the moral rights of a performer under Chapter 3 of Part 2 of the Act and treats those moral rights as having been asserted (see reg 6 (2)).
Reg 6 (5) permits the Comptroller to refuse a licence—
(a)  on the ground that, in his reasonable opinion, a proposed use or adaptation is not appropriate having regard to the circumstances of the case, including whether the proposed adaptation constitutes derogatory treatment of the work; or
(b) on any other reasonable ground.

The fee for such a licence must be 
"a reasonable licence fee for the period of the licence calculated with regard to relevant factors which shall include the level of licence fees which are achieved under licences for a similar use of similar relevant works which are not orphan works" (see reg 10 (1) (a))
This fee must be paid into a designated, ring fenced account for not less than 8 years from the grant of the licence pursuant to reg 10 (2). If the rights holder presents himself during that time he may claim that fee under reg 12 (4). The surplus of any unclaimed fees may be applied to fund social, cultural and educational activities under reg 13 (2).

Both rights holders and orphan licensees (or applicants for orphan licences) may appeal against the Comptroller's decisions. The former to the First Tier Tribunal "on the grounds that the authorising body has either acted improperly or failed to comply with its obligations under these Regulations" under reg 14 (1). The latter to the Copyright Tribunal under reg 14 (2).

It is fair to say that the British orphan works licensing scheme has not been welcomed universally. For particularly scathing criticism see Andrew Orlowski's UK.gov rushes out broken 'Orphan Works' system as EU Directive comes in 29 Oct 2014 The Register. As a licence under this scheme applies only to the UK its utility in relation to the internet is limited since a work licensed here may not lawfully be reproduced anywhere else. On the other hand, similar schemes already exist in a number of other countries and it is likely that more will follow.

Further Information
Should amplification or clarification of any point of this article be required please call me on 020 7404 5252 during normal office hours or message me through my contact form.