IP and Brexit: The Arts

Jane Lambert

This is the latest in my series of articles on IP and Brexit.  I set out the general position in What Sort of IP Framework do we need after Brexit and what are we likely to get?  3 July 2016 NIPC Law. As the effect of Brexit is likely to vary considerably from industry to industry I have considered the position of each economic sector.  So far I have covered fashion, software and private inventors.

In this article I consider the effect on the arts. I have published it in IP East because few regions have benefited more from investment in the arts than this one as I have mentioned more than once in this blog (see Why IP East 21 April 2014, Business Sustainability and Intellectual Property - how to make the Most of a Useful Essex Initiative 6 May 2014 and National College for the Creative and Cultural Industries 7 Dec 2014).  Thurrock, the district that has attracted much of that investment, was incidentally one of the local authorities that voted most heavily for Brexit: 79,916 people representing 72.72% of the electorate voted to leave the EU which was way above the national average (see EU referendum: full results and analysis The Guardian).

The arts will be one of the sectors least affected by changes in the low resulting from our withdrawal from the EU. Its work consists of literary and artistic works which fall into two categories:

• Works in permanent form such as broadcasts, drawings, films, musical scores, novels, paintings, plays, poems, sculptures and sound recordings; and
• Performances by actors, dancers, musicians, singers and others.

investment in creating, publishing and marketing works in permanent form is protected by copyright. Investment in performances is protected by a new intellectual property right known as rights in performances that came into being with the enactment of the Copyright, Designs and Patents Act 1988. Our law of copyright is codified by Part I of that Act and our law on rights in performances by Part II.

Now unlike designs, trade marks, plant varieties and to a lesser extent patents there has been no attempt to create an EU or Community copyright law. There have been a lot of EU directives that have been implemented by secondary legislation (see the Related Laws section on the Copyright Acts and related laws web page on the Gov.UK website) but many of these have been adopted to give effect to the EU member states' obligations under multilateral treaties to which HM government would probably have adhered whether the UK remained in the EU or not. Occasionally there have been disputes in several of the member states including Britain over the construction of those directives that have required a reference to the Court of Justice of the European Union but these have been far less common in copyright than in say trade marks.

After Brexit the directives will cease to bind the UK but the legislation that implements those directives will remain in force as it was made by or under an Act of Parliament. The one big change is that points of law arising from such legislation will cease to be referred to the Court of Justice. However, decisions of the Court of Justice on the interpretation of the directives are likely to have persuasive authority after we leave the EU. In her speech to the British group of the Union of European Practitioners in Intellectual Property on National and International-level concerns and developments regarding the IP landscape 30 June 2016 the Minister for IP promised that the UK would continue to lead in international IP discussions. One consequence of that is that we shall have to continue to implement changes in the multilateral IP treaties and when doing so it will be sensible to pay heed to what is happening in the rest of Europe.

There will be some sections of the arts that will be affected more by the disappearance of European trade marks and designs than others. The film industry, for example, depends heavily on brands but dance hardly at all (see my article Ballet as a Brand? How to bring More Money into Dance for Companies and Dancers 13 March 2014 Terpsichore). There will be some effect on merchandising and I have discussed these in IP and Brexit: the Fashion Industry (10 July 2016 4-5 IP).  

I shall discuss this topic as well as other IP issues arising out of Brexit at a seminar in Liverpool to be organized by Guy Williams Layton on 14 Sept 2016 and in London at 4-5 Gray's Inn Square on 15 Sept 2016. Both seminars are likely to be very popular and places will go very quickly. If you want to attend call me during office hours on 020 7404 5252 or send me a message through my contact form.

How to protect an innovative new service.

Jane Lambert

This is a question that I am often asked in IP clinics. The client describes his brainwave for a service that has some innovative features and asks: "Can I get a patent for that?" The answer is almost invariably "no" because patents are granted for inventions and most countries' patent laws including our own make clear that inventions are either products or processes. You can, of course, get a patent for an invention that is used to deliver a service but even then you have to be careful because art 52 (2) of the European Patent Convention excludes from the definition of "invention":

"(a) discoveries, scientific theories and mathematical methods;
(b) aesthetic creations;
(c) schemes, rules and methods for performing mental acts, playing games or doing business, and programs for computers
(d) presentations of information."

as such. The answer I usually give to the question is to rely on a cocktail of intellectual property rights for different aspects of the service.

Confidence

While making plans for your business it is best to keep your ideas to yourself. If you have to take someone into you confidence get him or her to sign a non-disclosure agreement first unless he or she is already bound by an obligation of confidence. It is sometimes possible to keep some technical and commercial information secret after the business is launched. The obligation of confidence is not an intellectual property right. It simply prevents a person to whom commercially sensitive information is disclosed in confidence ("the confidante") from passing that information on to others or using it for his or her own benefit. So long as the information can be kept secret the obligation can last indefinitely. Business and marketing plans, customer account and contact details, manuals and recipes are examples of information that can be protected in this way. It is important to note that the courts will enforce an obligation of confidence only if, and for so long as, the information remains secret. Thus, paper documents have to be kept under lock and key, computer records held in password protected files and staff have to be trained and motivated to keep their employer's confidential information secret.

Trade Marks
Since the reputation of the service provider is likely to be an important consideration for potential customers the service provider should register the sign under which his or her products are supplied as trade marks. Usually these will be the name and logo of the business but it may also be the sign under which a particular service is supplied. The sign must of course be distinctive and it should be registered for the goods or services that the service provider intends to supply over the next 5 years. It can be registered for the UK alone or for the European Union which includes the UK. When registering a trade mark it is important to remember to use the mark for it can be revoked for non-use, to look out for and challenge applications to register similar marks which can be done by registering with a watch service and to make provision for funding such challenges or enforcing the trade mark by taking out before-the-event insurance wherever possible. The small claims track of the Intellectual Property Enterprise Court ("IPEC") provides a low cost forum for infringement disputes while oppositions and applications for revocations and declarations of invalidity of British marks can be heard in the Intellectual Property Office.

Copyright
Manuals, diagrams, computer programs, videos, advertising, promotional and point of sale literature and other materials used in the delivery of a service are usually works in which copyright can subsist. Copyright prevents copying, publication, renting, lending, performance, communication and adaptation of such works but it does not prevent the use of the ideas expressed in those materials. Thus, it is unlawful to copy a business form but it is permissible to create a form that serves the same purpose in a competing business so long as the competitor does not copy or refer to the original form.  As he or she may well be challenged it is important for the competitor to keep an audit trail to prove that his or her form was created independently. There is no system of copyright registration in the UK though there is in the USA and some other countries. All that is required is that a qualified person (a British citizen or resident or citizen or resident of a country with which the UK has a reciprocal agreement which includes most countries) creates an original artistic, dramatic, literary or musical work, a film, sound recording or broadcast or a typographical arrangement of a published work. The work need not be new. It must simply be the product of the author's independent skill and labour. Again, provision must be made for funding infringement actions by insurance or otherwise. The small claims track of IPEC provides a forum for resolving copyright disputes.

Designs
Functional designs can be protected in the UK by an intellectual property right that is almost unique to this country known as "design right."  Ornamental designs can be protected by registration as registered designs under the Registered Designs Act 1949 or as registered Community designs under the Community design regulation. Designs that could be registered either as registered or registered Community designs can b protected from copying as unregistered Community designs,  Those intellectual property rights can cover much of the equipment used in the delivery of a service such as cutlery and crockery in catering, a hair dryer or sun bed in the beauty industry or the uniforms or overalls worn by employees in any industry. Design rights cannot be registered.  All that is required is the recording of the design either in a drawing or other document or the making of a prototype by a British national or resident, the national or resident of another EU member state or national or resident of another state with a reciprocal agreement with the UK. Also, the design must be original in the sense that it involves independent skill and labour and is not a copy of an antecedent work. Registered and registered Community designs must be new and have individual character. They may be registered for 5 renewable terms of 5 years each. The small claims track of IPEC can hear design right claims but not registered design or registered Community design cases.

Database Rights
Customer records, parts lists and other collections of data can be protected by database right. This is a right that prevents the unauthorized extraction and re-utilization of data held in databases and is quite separate from the design of a database that is protected by copyright.

Mixing the Cocktail
The first step is to analyse how the service is delivered and the assets that are used in such delivery. That is best done by an intellectual property audit that can be carried out by a specialist lawyer or patent or trade mark attorney. The next step is to consider the intellectual property rights that can be used to protect those assets. Sometimes there are choices to be made. For example, does the business owner apply for a patent which means that he or she must disclose his or her invention to the world or does he or she hope that he or she can keep it secret and rely on the law of confidence to prevent unauthorized use or disclosure? Those choices sometimes involve establishing priorities which usually depend in turn on the business owner's budget and other constraints. All this is part of an emerging discipline called intellectual property strategy which combines business and legal advice. It is a discipline in which I have a considerable personal as well as professional interest and I have contributed a number of articles to its small but growing literature.

Further Information
Should anybody want to discuss this article or any of he topics mentioned or referred to call me on 020 7404 5252 during normal business hours. You can also contact me through my contact form or message me through Facebook, G+, Linkedin, twitter or Xing.