 |
LICENSING EXECUTIVES SOCIETYBritain and IrelandNEWS EXCHANGE
|
Irvine v Talksport Roadvert Ltd and others v John Dunlop Pitt Passing Off in the Fast LaneIn giving judgment for the claimant in the case of Irvine v. Talksport (unreported March 13, 2002), Laddie J confirmed that the tort of passing off continues to move with the times. A false indication that a celebrity is endorsing a product is actionable in passing off at the suit of the celebrity. "Manufacturers and retailers recognise the realities of the market place when they pay for well known personalities to endorse their goods. The law of passing off should do likewise. There appears to be no good reason why the law of passing off in its modern form and in modern trade circumstances should not apply to cases of false endorsement." The dispute was between Eddie Irvine, the well known Formula One racing driver, and Talksport (formerly Talk Radio), the radio station. In promoting its broadcasting services in 1999, the radio station issued a series of promotional packs to a select group of people. One of those packs, advertising its coverage of motor racing, contained a brochure featuring prominently on the front page a photograph of Eddie Irvine holding to his ear a portable radio with the words Talk Radio on it. The claimant objected to the use of his photograph on the ground that it falsely indicated that he was endorsing the radio station and/or its coverage of motor racing. It was a special photograph in that it had been 'doctored'. The original had featured the driver using a mobile telephone. The defendant's marketing consultants had had the mobile telephone replaced by the image of a portable radio. The vice at the heart of the tort of passing off is a misrepresentation leading to damage to goodwill. The evidence supported the existence of a misrepresentation. The judge found that the brochure in question was likely to lead to a not insignificant section of the market believing that the claimant was endorsing the defendant's services. Moreover, the judge had no difficulty in finding that celebrities can have (and that Eddie Irvine has) a relevant goodwill in this area. "It is common knowledge that for many sportsmen, for example, income received from endorsing a variety of products and services represent a very substantial part of their total income. The reason large sums are paid for endorsement is because, no matter how irrational it may seem to a lawyer, those in business have reason to believe that the lustre of a famous personality, if attached to their goods or services, will enhance the attractiveness of those goods or services to their target market. In this respect, the endorsee is taking the benefit of the attractive force which is the reputation or goodwill of the famous person." On the question of damage the judge reviewed the authorities and had this to say: "If someone acquires a valuable reputation or goodwill, the law of passing off will protect it from unlicensed use by other parties. Such use will frequently be damaging in the direct sense that it will involve selling inferior goods or services under the guise that they are from the claimant. But the action is not restricted to protecting against that sort of damage. The law will vindicate the claimant's exclusive right to the reputation or goodwill. It will not allow others to so use goodwill as to reduce, blur or diminish its exclusivity." In adopting this approach, the judge came to the conclusion that although the damage to the claimant in the short term might be small, the potential for damage in the long term could be considerable. In the course of his judgment, the judge was at pains to distinguish between 'endorsement' and 'merchandising'. The former involves a person putting his name to a product or service by way of approval of the product or service and in order to encourage the public to purchase it or use it. The latter "involves exploiting images themes or articles which have become famous". The judge expressly disclaimed any intention of covering in his judgment the considerations which apply to merchandising. Comment This is a helpful addition to the case law in passing off, but celebrities should be slow to throw their money at litigating against all and sundry who make unauthorised use of their photographs or names. Currently, the use in question in this type of case MUST be such as to lead to a false indication of endorsement. For the moment, therefore, anything less may well not be enough. However, the judge's views in relation to damage are of particular interest. This is yet another case (following on from the Champagne and other 'extended form' passing off cases and the Harrodian case) which gets close to saying that 'dilution' (per se) is actionable in passing off in much the same way as it appears to be in trademark infringement under Section 10(3). In this case there was a misrepresentation, but it is not difficult to see the direction in which this 'living tort' may ultimately be heading. Tony Willoughby
Top President's Diary
In February I attended the Annual Lunch at the Savoy, which was preceded by the morning seminar, "An Intellectual Property Legal Update". As usual the morning seminar attracted a large audience. I would like to thank our three speakers: Jeremy Philpott, of The Patent Office, Patrick Ravillard, of the European Commission and Richard Hacon for making the event such a success and helping to keep us up to date with the frequent changes in legislation. The Annual Lunch is always a popular event and this year we were struggling to find places for all those who wished to attend. We were particularly pleased to see LES members from all around Britain and Ireland as well as those from the London region. I have had many appreciative comments about the lunch and the morning meeting and I would like to extend my thanks to all those who helped with the organisation. We were pleased to welcome both the Hon. Mr Justice Jacob and the Hon. Michael Fishe as lunch guests of the Society. Our guest speaker, Don Christopher, of Celador International gave a fascinating insight into the organisation and control over program content, which is maintained by the license terms given to broadcasters by Celador, in programmes such as "Who Wants to Be a Millionaire". On a sadder and more reflective note we have learnt, with sorrow, of the deaths of Basil Bard and Herchel Smith, two of the guiding lights of the LES GB & Ireland who contributed greatly to the formation of this Society in its infancy. Without these and others who give freely of their time and expertise, the Society would not be as successful as it is today. An obituary of Basil Bard appears on page 7 of this edition of News Exchange. An obituary of Herchel Smith will appear in the June edition of News Exchange. Sybil and I were very pleased to attend the Irish Section Annual Dinner on 8 March at the Chapter One Restaurant situated below the Irish Writers Museum. It was a wonderful opportunity to meet so many LES Irish region members. The dinner was preceded by a visit to the museum, where the breadth of Irish writing genius is portrayed with manuscripts and letters from many writers including Shaw and Behan. Both museum and restaurant are well worth a visit and we extend our thanks to Mary Swords and the Irish section for the invitation. We are now looking forward to the Annual Conference and AGM on 28/29 June at Wolfson College in Cambridge. We have planned a very full programme. I am particularly grateful to Christi Mitchell and all others who have contributed to the organisation of this event. We hope to see you there. In April I will be going to the LESI and international delegates meetings in Osaka and will report on this event in my last President's Diary in June. Chris Goodman
Licensing Update
Changes in UK Registered Design Law (9 December 2001) remove compulsory licensing provisions. New Community Unregistered Design Right (6 March 2002), unlike UK Design Right, contains no specific compulsory licensing provisions. Copyright Tribunal (December 2001) increases university photocopying fee to Copyright Licensing Agency from £3.35 to £4.00 per student. 1994 Global Trademark Agreement between WWF (nature) and WWF (wrestling) held to be still enforceable and not in restraint of trade. (Court of Appeal 27.02.02). 25% share in royalties awarded as damages for infringement of copyright in song lyrics, not the 50% share offered prior to infringement. (Ludlow Music v. Williams Chancery Division 14.02.02). Licensor trapped by exclusive trademark licence with inactive Licensee failed to find exit by cancellation of trademarks on non-use. Test marketing and specialist sales by licensee held in this case to be sufficient use. (Gerber Products v. Gerber Foods Chancery Division 18.03.02). Barry Quest
|
Top
A Mans Word is Not Enough in IPR TransactionsRoadvert Ltd and others v John Dunlop Pitt This recent decision of the Scottish Court of Session is a warning to both investors and to lawyers against investing time and money in Intellectual Property Rights before establishing who exactly has the legal right to exploit the IP. Without a binding agreement, investors are exposed to the risk that the owner of the IP may change his mind and refuse to co-operate. The Facts of the Case Here, the parties had a business proposal involving the development and exploitation of an idea belonging to the Defender, Mr Pitt, regarding a method of attaching temporary advertising on panels onto vehicles. Mr Pitt arranged for the incorporation of a company, with both he and the Pursuers as shareholders, through which the parties would invest and exploit his invention. The dispute centred on the ownership of the invention and the application for a patent for it. The Pursuers alleged that it was agreed between the parties that Mr Pitt would apply for patent protection and any other intellectual property protection in the name of the Pursuer company. However, the Pursuers admitted that nothing had been set down in writing, apart from a Shareholders' Agreement, which made no reference to ownership of any intellectual property rights. Mr Pitt then made an application to the Patent Office for the patenting of the invention but in his own name. What the Court was Asked to Decide In order to succeed in an application for an interim interdict (injunction), the Pursuer must first show that there is a prima facie or stateable case. Then the court must decide on the balance of convenience whether in granting the interdict it would do more harm to the Defender than it would cause to the Pursuer if it was not granted. The Pursuers asked the court, in this case, to grant an interim interdict against Mr Pitt using and exploiting the invention. Therefore the court had to decide whether there was an enforceable agreement to the effect that Mr Pitt would assign the IP rights in the invention to the company and, if so, whether he had breached that agreement. The Pursuers argued that Mr Pitt had agreed orally to assign the rights in the intellectual property at several meetings between the parties and in discussions with patent agents. While that agreement had never been reduced to writing, it was said that the Pursuers had expended time, effort and money in reliance on "these assurances" by Mr Pitt. Mr Pitt accepted that there had been some discussion of the possibility of him assigning his rights in the invention at some time in the future to the company, but that that had never been translated into a matter of contractual obligation. He also pointed out that if the order were granted, it would stop anyone from exploiting the invention until after a full trial, which could be a year away or more. Moreover, he had offered undertakings pending trial to the Pursuer that he would not transfer, assign or sell the patent and that he would keep an account of all profits generated by any use of it. Therefore, if in due course a court declared that he had in fact bound himself to transfer such rights to the company, he would be in a position to do so with any loss to the Pursuer being quantifiable. The Judgement Although the judge decided that a personal obligation to grant an assignation sometime in the future does not have to be constituted in writing in order to be enforceable, he refused to grant the Pursuers' interim interdict. He held that the Pursuers' statements of how, when and in what circumstances an oral agreement to assign the intellectual property rights was entered into, were insufficient. They were also undermined by the Pursuers' use of the word "assurances" to describe Mr Pitt's agreement. He held that none of the documents the pursuers referred him to seemed to go beyond expressions of intent, hopes and expectations. Moreover, the agreement that did expressly govern the parties' relationship, the Shareholders' Agreement, was silent on the matter and yet purported to be the entire and full agreement between the parties: Comments This decision emphasises the necessity for investors and lawyers to enter into written contractual agreements with companies regarding the ownership of intellectual property rights before they expend any time and money in developing or exploiting an invention. Mere assurances are not enough. It also highlights the care required in drafting Shareholders' Agreement clauses, even in a document, which does not relate in any way to the exploitation of IP. It also demonstrates a sensible approach by the Scottish Courts in recognising the adverse practical effect of an interim interdict, which would result in no one being able to exploit the invention at all, pending the resolution of a dispute. Gill Grassie
Top
New Commission Proposal on European Software PatentsOn 20 February, without much advance fanfare, the European Commission published a proposal for a Directive setting out rules on the patentability of software inventions (COM (2002) 92 final). The Commission's proposal was for a Directive to be adopted using the co-decision procedure, which gives a role to both the European Council and the European Parliament. The same procedure was used in relation to the Biotech Directive. The proposal is not a final draft, but is being put forward for discussion. If approved, the Directive may be adopted as is, or in amended form. Neither event is likely to occur before 2003. The proposal comes at a time of uncertainty as to where the laws on European software patents are heading. A proposal, in the summer of 2000, to reform the European Patent Convention (EPC) removing the express prohibition on inventions for computer programs, was rejected in a diplomatic conference in November 2000. Although debate on that issue has continued, the Boards of Appeal of the European Patent Office (EPO) have, in the meantime, further developed their own thinking on the patentability of software and business method inventions. It is unclear to what extent the European Commission and the EPO are co-ordinating their efforts to clarify the law in this area. Tensions have clearly arisen between the two bodies in other areas (such as moves to create a single community patent). If tensions exist on this issue too, the chances of quick and clear results appear to be low. The proposed substantive law The Commission's proposal defines a new class of inventions entitled "computer-implemented inventions" and goes on to define the conditions under which such inventions are patentable. In broad terms, not only must the invention be for a system or method using a computer, but it must also be new and involve a technical and inventive step. The main focus is on whether an invention involves a technical inventive step or, in other words, makes a technical contribution to the art. The contribution is assessed by comparing the invention as a whole against the state of the art. Therefore, if the contribution has a purely economic character - as in some business method inventions - the invention is not patentable. This aspect of the proposal accords with the case law of the Boards of Appeal of the EPO. Conflict with current EPO case law However, certain other aspects of the proposal appear not to follow the approach adopted recently by the EPO. In particular, the EPO maintains a clear distinction between the inventions that are potentially patentable (patentable subject matter) and the tests for novelty and inventive step. See, for example, Pension Benefit Systems Partnership (T931/95, OJ EPO 10/2001, p413). In contrast, and perhaps preferring the approach taken in earlier EPO case law, the definition of computer-implemented invention in the proposal appears to combine the concepts of patentable subject-matter and novelty. Furthermore, the proposal disapproves of the notion of "potential technical character" as developed in the EPO decisions in IBM/Computer Program Product I and II (T935/97, [1999] E.P.O.R. 301 and T1173/97, [2000] E.P.O.R. 219). According to the Commission, and again in contrast to recent EPO decisions, programs in isolation of the computer on which they are to be run or even programs recorded on a carrier should not be patentable. This conflict is significant as courts in EU member states must pay heed both to the interpretation of the EPC by the Boards of Appeal of the EPO, and also to national law enacting EU directives. Unless measures are taken to avoid this conflict, it is possible to envisage the EPO (which is not bound by the Directive) granting a European patent under the EPC which might later be held to be invalid in national courts, under the Directive. One way around this would be to amend the EPC to conform with the Directive; although as there are EPC contracting states, which are not EU member states (and therefore not bound by Directives), such as Turkey, further political steps are needed to achieve convergence if that is the approach that is ultimately adopted. New defences The proposal provides for some new defences, but only in relation to computer-implemented inventions: all those acts permitted under the Software Directive (91/250/EEC) are proposed to be permitted in relation to computer-implemented inventions. They include decompilation and taking back-ups in certain circumstances. The acts exempted under the Software Directive also include the right for a licensee to observe, study or test the functioning of the software to determine the ideals and principles, which underlie any element of the software. This right is similar - but not identical - to the existing defence of "experimental use" to patent infringement. WTO Panel and member state case law has addressed the question of whether clinical trials of pharmaceutical inventions qualify as experimental use. It was recently proposed that the experimental use defence in the proposed, but as-yet unagreed, Community Patent Regulation specifically cover such clinical trials. The solution proposed by the Commission now as regards software has the benefit of harmonising the rules on what unlicensed experimental acts are authorised in relation to software, but does not add to the debate in relation to pharmaceuticals. Ari Laakkonen, Linklaters, London EC2Y 8HQ
Top EU-wide Design Rights to be IntroducedThe recent adoption and publication of the Council of the European Union's Regulation on Community designs will result in the introduction of two further Community-wide (or in other words EU-wide) intellectual property rights. First to become available is a right which, like the existing copyright-inspired UK unregistered design right, will arise without going through any official registration procedure, but will always be very short term and will, of course, cover all Community (i.e. EU) states instead of the UK alone. This Unregistered Community Design Right first became available on 6 March 2002. It will arise when a design (that is to say the appearance of the whole or a part of a product), which is new and has individual character, and also does not fall within any of several prescribed exclusions, is first made available to the public within the Community or indeed outside (provided, it would seem, that it could reasonably have become known to circles specialised in the sector concerned within the Community). It will continue in force for only three years from that date; no annuities or other fees are payable. It will accrue to the designer, or to his employer, or to their successors. It is a unitary right extending to all Community states (or none if judicially held invalid) and can be transferred only as a whole, though it can be licensed for the whole or part only of the Community. Like copyright, and in contrast to rights obtained by registration, it gives protection only against copying. More specifically, as regards the validity requirements of novelty and individual character, these are the subject of qualifying and explanatory provisions in the Regulation. Thus a twelve-month grace period is permitted for, broadly speaking, disclosures attributable to the designer for both requirements. As regards the ambit of these terms, one very helpful commentary is already available (E. Lyndon-Stanford, 2001 (November) CIPA Journal, 565-570). It points out that novelty is destroyed unless the design differs from the prior-art in material details. Further, as regards individual character, this requirement will be met if the design produces a different overall impression from the prior art to the informed user. In both cases prior art world-wide (subject to the above proviso) has to be considered and is subject, of course, to the grace period. In this regard, it is worth noting that the same concepts of novelty and individual character are to be found in the 1998 Community Design Directive (98/71/EC) and that commentators are already discussing their significance and ambit in the context of the consequential amendments introduced on 9th December last into our Registered Designs Act 1949 by the Registered Design Regulation 2001. Reference to such discussion (and in due course to discussion of the likely significance of these terms in the context of registered Community designs when eventually these become available, as explained below) is therefore also worth considering. As regards the specific exclusions from registrability, these relate to component parts of complex products which are invisible during normal use of the latter, to features of appearance dictated solely by the product's technical function, to "must-fit" features (subject to a derogation for modular products), and to designs contrary to public policy or accepted principles of morality. The same exclusions will apply to new UK applications for registered designs filed since the Act was amended on 9th December 2001 as mentioned above, and eventually to applications for registered community designs as discussed below; commentaries on them again are likely to be helpful. The other Community-wide right, which the Community Design Regulation will provide will be a registered Community design right. This will require the filing of a design application and its processing to the stage of registration by the EU Trademark Office, OHIM, in Alicante, although no search or substantive examination will apparently be involved. There will be other important differences from the unregistered right, notably a 25 year term, and a monopoly right, rather than a mere right against copying (save initially when deferred publication is sought). However, the validity requirements for the two kinds of right appear to be identical. This right will operate in parallel to, and apparently have no effect on, existing and future national registrations in UK and elsewhere in the Community. However, at least until the fee and other regulations necessary to set up the system and to enable OHIM to start to register applications are promulgated, it would seem to be premature to try and formulate guidelines as to whether individual applicants will be better advised to seek Community instead of national registrations. OHIM has announced that these regulations are expected to be approved during 2002, and that Community registered design applications should start to be filed the following year. Readers involved in intellectual property licensing or other transactions involving or potentially involving designs will, of course, need to be aware of the potential existence of these new rights. An early task should perhaps be to review existing precedents for the assignment of UK registered and unregistered design rights as these may need substantial revision, particularly as any Community design rights cannot be assigned for UK alone; even precedents on analogous licences may need review and amendment. If the text of the regulation needs to be consulted, it is currently available on OHIM's web site via, http://oami.eu.int/en/aspects/default.htm. D.L. Cannon Top News from the RegionsLES WalesThe Wales branch of LES is joining forces with the IP Wales Initiative in an attempt to increase awareness of intellectual property amongst small to medium enterprises (SMEs) and in particular to encourage the commercial exploitation of IP. IP Wales Initiative is a collaboration between the public and private sectors including University of Wales Swansea, Welsh Development Agency, Business Connect Wales and professional advisors. The operation of IP Wales is overseen by a steering group under the Chairmanship of Lord Griffiths, Vice Chairman of Goldman Sachs International. LES has been asked to help with putting on a series of training sessions on commercial exploitation of IP over a two year period and is currently working with IP Wales Initiative to put together a programme. The training sessions are likely to take place throughout Wales and IP Wales Initiative has obtained funding to provide this important business support for SMEs. Heather McNabb
LES NE RegionOn 7 February the revived North East section of LES had its third, and most successful, meeting to date at 42 The Calls in Leeds. There were nearly 40 bookings for the discussion on licensing issues in a university context. Two highly knowledgeable speakers on the subject were introduced by Trevor Hunter, immediate Past President of LES Britain and Ireland and Chairman of the North East committee. The first speaker was Roger Ford, Professor of Innovation and Technology Strategy at the University of Salford. He expanded on his article in the Oct/Nov 2001 issue of News Exchange, giving a very clear picture of the complicated and subtle factors which affect licensing in the field of academia. Roger was followed by Liz Ward, Partner and Head of Intellectual Property at Solicitors Keeble Hawson and a member of LES NE committee. Liz was present at the last meeting of LES USA and Canada, where university licensing was a major topic, and so we were able to benefit from all that Liz had learned during her trip. In the USA there is a marked contrast to the UK position with a very uniform approach and, indeed, specific legislation in the form of Bayh Dole Act. The stimulating nature of the two presentations was amply demonstrated by the fact that Trevor Hunter eventually had to call a halt to the vigorous discussion that followed, as the kitchens were getting anxious as to whether we were ever going to sit down to eat! The formal meeting took place in the splendid surroundings of the Blue Room, a recently refurbished venue adjacent to the hotel and the dinner was served in the famous River Room, where the noise level from the diners bore witness to the fact that the debate that had started in the Blue Room had resumed with earnest. The next meeting will be on 14 May and will address the issue of valuation of intellectual property and will be at Malmaison Hotel in Leeds. Sharon Lister
LES ScotlandOver 60 LES members and guests turned out for the extremely successful LES (Scottish branch) meeting on 6th February "Burn-ing Issues!" held at Chambers Bar in the centre of Glasgow. The meeting loosely followed the format of a traditional Burns supper with haggis, neeps, tatties and all the accoutrements to make for an entertaining and informative evening. The company (as those who will eat the supper are known) arrived to hear the international fiddler, Alistair McCulloch, playing traditional Scottish airs and reels, which set the right ambience for the evening. The opening address was made by Caroline Sincock (LES Branch Chair) and Murdo Morrison of the Burns Federation led us in the Selkirk Grace. After cock-a-leekie soup, the company rose to receive the haggis, which was piped in by Professor David Wyper (South Glasgow University Hospitals NHS Trust) and the traditional address and toast to the haggis was delivered in style (and in Scots) by Fergus Neil, Secretary to the Medical Faculty at The University of Glasgow. During coffee, Murdo Morrison delivered a literary speech on "Burns - his life and loves", working in much of Burns' poetry and songs to illustrate the genius and humanity of Scotland's national bard. The evening continued with an informative presentation from Jim Law (MD Market Research, UK) on the power of brands, maintaining brand health and the impact of advertising, including examples of good and bad commercials. His message was strengthened by the use of case studies and television advertising, which had a significant impact on the audience, stimulating many to take a good look at their marketing material. The evening wound up with the opportunity to meet speakers, quiz the piper and network with colleagues over a drink. Our thanks go to the speakers and musicians who participated in this event and to all members who brought along guests and introduced them to the benefits of LES. Our next event is on 17th April in Edinburgh when we will be covering Dyson's intellectual property battle with Hoover - we look forward to seeing you all then. Cathy Rooney
LES NW RegionThe February meeting of the North West group took place at the 39 Steps in central Manchester. Barry Quest of Wilson Gunn M'Caw, Manchester, spoke, highlighting the major changes (and some of the reasons behind them) introduced by the new European Design Directive and Regulation. Barry's involvement in the early stages of the drafting of the Directive and Regulation left him well placed to review the changes and their implications before providing helpful guidance to both practitioners and designers. A lively question and answer session followed to ensure Barry's brain was well picked before dinner! Places are still available for the April meeting, which will take place on the 12th and will include a tour of the Jaguar plant at Halewood. Rob Lucas
Top LES Irish SectionThe LES Britain and Ireland Irish section held a very well attended and very enjoyable annual dinner on Friday 8th March 2002. The venue was Chapter One Restaurant, which is located in the basement of the Irish Writer's Museum. Members and guests were treated to an apéritif and the opportunity to view the memorabilia in the elegant Georgian building before being ushered downstairs to dinner. LES Britain and Ireland President, Chris Goodman, and his wife were guests of the committee and we were delighted to welcome them to Dublin once more. We were also particularly pleased to welcome Dr. Philip Graham from Queens University in Belfast (and Executive Director of AURIC). Philip and his wife Faustina, have been great supporters of the annual dinner for many years. Top Basil Bard 1914-2002It was with great sadness that we learnt of the death of Basil Bard on 2nd February 2002. Dr Basil Joseph Asher Bard was a founder and chairman of the UK branch of the Licensing Executives Society in 1967 and subsequently Vice President. He was the first non-American to be awarded a gold medal by the Society in 1973. He is remembered by those who knew him as a great and generous man with charm and wit and a full sense of public service. The oldest of five children of second generation immigrants from Eastern Europe, he attended Dame Alice Owen's School in Islington for the sons of poor men. By the age of 14 he was already demonstrating his academic brilliance and winning scholarships, with which he funded the rest of his education. By the age of 22 he had gained a BSc in Chemistry and a PhD in Fuel Technology from Imperial College, London whilst, in his spare time, studying for and passing Part I of his Bar exams. The following year, 1937, he studied full time at Gray's Inn and was the only student to be awarded first-class honours in that year's Bar finals. With his scientific and legal mix of qualifications he was not allowed to join the army during the Second World War but spent the war years in various government positions advising on matters such as explosives and aircraft equipment for military use. In 1945 he joined the Ministry of Supply followed, in 1950, by the National Research Development Corporation (NRDC). In his position at the NRDC he was responsible for bringing to market many British inventions, including cephalosporin, a drug used to treat people who were not able to tolerate penicillin. This work involved cross-licensing agreements with many international pharmaceutical companies. His success as a global expert on licensing, together with the income he generated for the NRDC and the Treasury led to his appointment as CBE in 1968. He became Managing Director of NRDC in 1971. Aged 63, he started a new career as a licensing consultant and for 15 years his services were much in demand. From 1977-1981 he was Chairman of the Birmingham Mint. In his spare time Basil played bridge and chess for his club, the Athenaeum, and was a great music lover. He continued playing an active role in Jewish life as president of the Anglo-Jewish Association and as a governor of the Hebrew University in Israel. He is survived by his wife, Ena, and their three sons. Basil Bard is remembered affectionately and with great admiration by many members of LES B&I and will be greatly missed. Top Copyright Infringed but Still Able to Sell Existing Stock!Robbie Williams' top selling album track "Jesus in a Camper Van" has been deemed to infringe copyright in a 1973 Wainwright song. It had been agreed between EMI (Williams' music publishers) and Ludlow that the lyrics of the track relied heavily on the Wainwright song. Ludlow had no moral or artistic objection to the track with regard to credits for the lyrics and royalty rates, however the discussion broke down over the rate EMI should pay to Ludlow as copyright owner. EMI offered 10% and Ludlow demanded 50%. Believing a settlement to be pending, EMI registered the song with the Mechanical-Copyright Protection Society LTD (MCPS) on the basis that Ludlow would get 25% and authorised the inclusion of an acknowledgement on the Williams album that the lyric was reproduced "by kind permission of Ludlow". Nearly a year after discussion began Ludlow applied for a summary judgement. The Court found that copyright had been infringed but held over to full trial the question of injunction and damages. Ludlow was found to have engaged in oppressive conduct in holding out for a royalty of 50% when the lyrics taken only represented a small part of the work. Damages were assessed on what a willing licencee and licensor would agree. The judge considered EMI's registration with MCPS and came to a figure of 25%. Although EMI had knowingly infringed, it had done so expecting agreement would be reached. An injunction was granted preventing all future use of the copyright work, including future pressings of the album but sale was permitted of existing stock. This case shows that copyright owners may not be able to prevent the sale of existing stock even where there has been a clear infringement. Based on iprights alert issue 87
Top New MembersCouncil has been pleased to welcome the following new members to the Society:
|
|
NEWS Exchange is circulated as a service to members of the Society. Editorial contributions and advertising/insert enquiries are welcome and should be addressed in the first instance to the editor. Editor: The Kudos Partnership Ltd, |