Intellectual Property: Steves Options in Copyright Law - Assignment Example

Intellectual Property Q1: Steve’s options in copyright law (2036 words) Copyright is one form of intellectual property that set and grants exclusive rights to an author for subject matter falling under protected categories in Copyright, Designs and Patents Act 19881(CDPA 1988). It includes rights of property subject to copyright work, expressed ideas and information. For Steve to consider his options, there are a number of key copyright issue that will be considered to promote a sound advice. There are six distinct issues that Steve has to consider. First, he has to determine whether his material is under the category that is protected by copyright. Second, he has to consider ownership. Thirdly, he has to consider the rights he has as an owner. Fourthly, determine whether the rights are infringed. Fifthly, establish any defences that apply and sixthly, the remedies that are available. First, s 3 to 8 of CDPA 1988 in consideration of whether the material is protected by copyright, there is a criterion that is followed in order for the copyright to subsist2. Originality indicates that the form of a work as expressed originated from an author even when the ideas came from a different source or place. The works does not have to be an expressed creative or inventive though. The compilations which involve; collected information, materials and facts that are not protected are taken to be original. Under Part I s 9 and 11of CDPA 1988 that relate to works, copyright entails literary, musical, dramatic or artistic work which is unpublished3. When the works is presented, there is no requirement for establishing originality that relate to subject matter. The material must be original where person creativity is well established. Originality is guided by the theories of sweat of the brow and need for an intellectual effort. What is protected must exist in material form since copyright cannot protect facts, information and ideas other than material form that express the ideas as in Millar v. Taylor [1969]4. A material in writing, tangible form or in picture form that can be read or looked at is protected. Section 3 of Copyright, Designs and Patents Act 1988, and s 12, 13A, 13B and 14 and 15 the time or period during which a dramatic, musical, artistic or literary work must be established5. The category of work that is protected includes literary works as defined in s 3 CDPA 1988 including compilation in words, symbols, figures or programs6. Anything that provides information, literary enjoyment or instruction and is sufficiently substantial is protected. Other categories of works include dramatic works like show, film or script, musical works with notation or recorded on media or disc, artistic works like drawing, photograph and subject matter like sound recordings embodied in a record and many others. Steve’s work exists in material form, a film and consists of different forms like different scenes, themes and stock footage showing how to vote making it accessible. Protection is offered to materials where jurisdictional connection is established in s 15A7. For any unpublished works, s 9 realizes where such connection exists and if the author or owner qualified at the time that work was made. S 15A provides for a qualified person if such persons are UK citizen or a resident in United Kingdom8. Secondly, ownership of copyright must be established. This is in accordance to s 11 CDPA 1988 which provides that an author of any literary, dramatic, artistic or musical work to prove ownership of copyright that subsist in that work. S 11 provides that, a person who makes a sound recording, sound or cinematograph is the owner of that material and copyright that subsist it. Any commissioned work belongs to the person that produced it unless there is an agreement to the contrary. CDPA 1988 s9 provides that, any person who makes and for a valuable consideration an agreement for taking a material owns the work. Steve will need to present an original musical work, classified under primary work of CDPA 1988. It must be original and fixated as in s3 that classify such work as secondary. In this case, we assume that Steve produced and fixated it with some help from Imogen to improve that work. From the facts, we understand that Steve used stock footage in the film and he would need to show that he got permission to its use. In addition, he can provide the advert that guided on the film to be composed. When these are provided, it will prove that he is the owner of the film. Thirdly, the rights of owners of a copyright have to be established. Under the category of works, s 3 provides that, the owner has exclusive right for literary, musical or dramatic work to reproduce that work in material form, perform it or communicate it publicly, make an adaptation of it and publish it. The section provides exclusive right to the owner to reproduce artistic works in material form, communicate or publish it to the public. Similarly, for subject matter as well as other works like films, sound recordings and broadcast records, s 4, 5A, and 5B provides exclusive right of an owner to make copies of that film, show it or communicate it in public. The duration of rights is also set for works under s 12 provides that a copyright subsist in musical, artistic or dramatic work 70 years after an author death. For subject matter, s 13B provides copyright in film or sound recordings 50 years after the first publication9. Fourthly, Chapter II considers copyright infringement and there are a number of infringements that can be established10. Direct infringement is seen where an action done is comprised in copyright. Indirect infringement is seen when dealing with goods whose rights are infringed. Multiple infringements may be involved and it does not have to intentional. For the works, s 16 holds that the copyright in dramatic, literary, musical or artistic works can be infringed by a person who is not the owner and without a licence from the owner in UK or authorise doing an act comprised in copyright. A reference is made for an act that relate to work or subject matter that involves substantial part of a work, reproduction, and adaptation or copying of work. Substantial part is taken to mean the quality of what a person has reproduced or taken rather than just quantity just as in Dick v Yates [1881]11. Infringement may arise not only from reproduction but from objective similarity or causal connection. The other infringements may arise by publication, communication to the public, public performance or by adaptation. Poseur Productions Ltd has infringed as it has taken Steve work and communicated it to the public without his authorisation or without completing the agreement that was set. The competition that Poseur Productions Ltd invited for entries was a form of contract with an offer where Steve accepted. Any contract entered into must show considerations and Steve considered that he may win after delivering a short film. However, Poseur Productions Ltd though funded by Ministry of Propaganda failed to compensate Steve for his efforts. That amounts to a breach of contract and Steve as an aggrieved party should take a legal claim. Fifthly, a party that is claimed of infringement may rely on a number of defences for the works. Chapter III s 28 A , 29 and 31 provides a fair dealing involving literary, musical, artistic or dramatic work where it can be adapted for research purpose or study and in that case, it does not constitute infringement12. Fair criticism or review according to s 30 provides for fair dealing with works and does not involve any infringement whether it belongs to another person and at the same time, sufficient acknowledgement is ensured13. Fair dealing also applies to adaptation of works for parody, satire and reporting the news but sufficient acknowledgement of work is needed. Works can be reproduced for judicial proceedings, professional advice, different form of private use, use in places of education, incidental use. There is no point under which Poseur Productions Ltd would rely on fair dealing defence since the film was not used for any purpose acceptable under the Act. The use was not for news reporting, satire, criticism, review or personal use but for commercial usage. That means anything that is published or communicated to the public by another party without the prior consent from the copyright owner amounts to infringement. They aired the film on TV after six months and the quality of the film was similar to what Steve had made. Sixthly, there are a number of civil remedies provided when infringement is established in Chapter VI14. S 96 and 97 provides for a relief that granted by a court for infringement of copyright. Relief includes an injunction, damages or account of profits15. S 97A allows a court to award any additional damages as they would consider appropriate. Damages for conversation can be provided or the party may be required to deliver up infringed copies or templates that were used in making such copies as per s 99 and 10016. However, at this point, Poseur Productions Ltd would not be required to submit the film back as it is already used for their desired purpose. Delivery up of the film back to Steve would not make any sense as Steve had used it purposely for compensation after competition. There are criminal offences included in s 107, indictable offence is committed if one engages in a conduct that result in infringement of copyright or have substantial prejudicial impact and infringement that occur at commercial scale17. A summary offence in s 107 holds a person for committing an offence by engaging in conduct that results to infringement of copyright. An infringer who is negligent and an infringement that occur at commercial scale are held for an offense. Poseur Productions Ltd have offended as they used Steve’s work for commercial purposes and did not notify, compensate of settle for an agreement with Steve, appropriating his work as in LB (Plastics) Ltd. V. Swish Products Ltd18. In Chapter IV, s 77 to 79 a person makes an unauthorised use of works if at any time and during the works protection, the person does not get the performers rights. This includes any direct or indirect recording of a performance, communication of performance to public. If moral rights are not assigned to individuals right of attributions to author and integrity is not ensured, the act is counted as infringement19. The criteria should be novel in that; there is no possibility of being referenced to another author or possibility to have featured to the public at any time. The material must be unique and reflect development of knowledge and expertise. There are two possibilities in this case when it is brought to the court of law. One, the court might offer a relief by way of injunctions, damages, accounts or what is available to plaintiff in respect to infringement of the copyright rights as per s 92(2)20. Question 2: (2000 words) Advise Aaron as to the patentability of his invention under UK law. Most of the current legislation that relate to patents primarily consists of Patent Act that was amended and supplemented by Patent Act 2004 and Copyright, Designs and Patents Act 1988. S 4A has been added after amendment of Patent Act 197721. Patents Act 1977 has been drawn closer to the major European trading partners as per the provisions set in European Patent Convention22. Patents legislation has also taken effect throughout UK. Patents are granted by UK Intellectual Property office after a person has appropriately applied for patent. European Patent office also grant patent and the patent is filed under European Patent Convention. The criteria followed in UK for patentability was adopted from European Patent Convention23. An invention can be patentable while a certain criteria have been met. Three aspects are followed as basic for any invention. First, the invention must be new meaning that it is not simply something which has existed previously as per s 4A (2)24. The invention must owe its existence to human intellect exercise and creative though process. S 4A (4) provides that, it must not form part of state of the art in the current world. Anything that exhibit the sum total human knowledge that has ever been available at anytime or made to public somewhere cannot be patented. When an invention is proven not to be part of the state of art, it cannot be inferred as a possible part of human knowledge, it is then rendered as new25. In Aerotel v Telco and Macrossan's Application case, Aerotel’s patent was patentable as the whole system was a physical combination composed of hardware and implemented using conventional computers. It was clear than just a method of doing business and deemed to relate to patentable invention. Invention step was also established by the judge deemed it as novel. Macrossan's patent application was taken to be un-patentable since the grounds of computer program and business method could not relate26. Patentability is provided in Patent Act 1977 where Part I s 1(a) (b) and (c)27.Second and according to Patent Act 1977, an invention involve an inventive step and particularly to a person who is skilled in the area where the invention is targeting as in s 328. Third, the invention must be capable of being applied in the industry and defeat obviousness by applying Pozzoli test. Patents are meant to be functional. The technical aspects of processes and products should be used in an industry. No matter how good the ideas might appear or the elegance of explanation, it cannot be patented. However, for a thing that can be made and result to a product where a concrete thing will be made from industrial process, it can be patented. Industry is meant from a broadest sense where something distinct is made as differentiated from pure intellectual or aesthetic ideas or value. Catnic Components Ltd. v. Hill & Smith Ltd case represent a scenario where Catnic had made a design that supported the widow lintel and Hill later made a similar lintel that was elongated. The judge held that there was infringement and lack of purpose construction for Hill in patent interpretation29. From the criteria stated above, Aaron’s invention can be considered to be patented under UK law. For one, the invention contains two unique characteristics as required by Patent Act 1977. One, it involves an inventive step where Aaron, after much experimentation and his career in mountain competition has found a way out to improve the chain stability during the sports. Second, s 3 provides that it can be applied in an industry as his focus is since there is a working prototype that can demonstrate how to bolt the cog and the connection of the pedals and keep the chain stable during races30. Though the other element which requires the invention to be new can be established as such, it forms part of new progress in the bikes industry. Consequently, Aaron’s invention can be patented as it is distinct and adds value to the product in the industry. It is not mandatory for an inventor to obtain patent for protecting the new product but may instead keep the details of the invention secret. Indeed, the law does not require all the technical developments to be patented. However, considering Aaron’s invention, it has been developed by a group and that increases the risk of ownership claim in case one of them patents it as his own. While considering to apply for a patent for an invention or not, a key rationale that is required is to determine the value of the invention and protection be confidentiality. If the invention cannot be easily reverse engineered, it is right to protect the invention and do it effectively with confidentiality31. Any threat that may destroy a person’s competitive advantage can be avoided through by applying for patent. These are additional issues that Aaron ought to take into consideration to determine the way to proceed especially now that he is ready to or rather arranged talks with top manufacturing companies that might show their interest in the production and manufacturing the mechanism and sell it around the world. After the enforcement of Patent Act 2004, the Intellectual Property Office (IPO) has been given added authority for providing non-binding opinions in regard to the infringement or validity of patents. This has enabled IPO to settle disputes related to patents without the involved parties resorting to other expensive litigation. If Aaron is looking for protection within the United Kingdom, he can directly apply to IPO for protection. A person can get a patent protection in European countries when they fill an application under European Patent Convention32. In addition, they need to designate the relevant countries that subscribe to European Patent Convention. As per s 23 (1) and (1A) of 1977 Act, UK Patent provides the owner with rights within UK33. S 12 provides for protection overseas, the owners of patents are required to apply to individual countries’ patent offices or through an international patent system referred to as Patent Cooperation Treaty34. Aaron should consider all this before he proceeds to file for an application for patent. The mode of application may limit or allow the patent to cover more regions and thus offer more protection for his invention. He has shown an inclination to contact manufacturers that sell products in US and that means depending on the location of the manufacturer, Aaron will need to apply for patent in those countries. However, if the manufacturer he has arranged to contact are within the European Union where most countries offer protection of patent, he need to opt for an application under European Patent Convention35. S 14 guides on registration are a process where a patented invention is required to be recorded in patent document36. The patent document should have the description of that invention most possibly a drawing or a number of drawings that are detailed. The person that draws should be skilled in the area of that technology for performing the invention. When the drawings are presented, description must be made visible so that the concept can be understood. The presented document can also be in electronic or printed form37. The document must have claims that define the scope or the extent of protection. When interpreting those claims, description will be taken into account in the process. UK patent application is based on a legal document known as specification. The contents in the document determine whether such a patent will be granted. Before a person files for an application for patent, it is required that a patent specification be prepared. The drawing should contain a full description of the invention. It is vital to present all the necessary information about the invention in that description. Any further changes are not permissible once the patent has been filed. Claims and abstract can be supplied later but if added, they must not be added information to the document that was originally supplied38. Aaron needs to ensure that the compilation of the invention is drawn well and present the prototype. He should provides the descriptions with the details of scope of protection and ensure that all the specifications are provided at the time of first application since further details and changes cannot be accepted under the patent regulations. In addition, Aaron will be required to complete a Patents Form as a request for a grant of a patent. The documents then should be sent to UK IPO. The patent provides a legal monopoly that last for twenty years covering an invention. In s 25 of 1977 Act subsection (3), there are payments that follow any filed application for patent39. Once a patent has been granted, the owner is required to ensure payment for yearly renewal fees which keep the patent in force. Failure to pay the renewal fees as required by the end of each year lead to an end of patent rights40. Aaron has to keep in mind that as long as the invention has not been marketed and the right of ownership transferred, he has to renew each year when the Intellectual Property Office protects the patent. S 70 subsection 2 offers that, in case of any infringement of owner’s rights that might be recognized, it is up to the owner of the patent to take available or appropriate action41. Aaron will need to scrutinize to ensure that his rights to the patent are not infringed and alert the IPO which is mandated to settle the dispute that might arise from infringement. There are three conditions that are required for a patentable invention. When the three are satisfied, a patent can be granted. The invention must be new, involves an innovative step, applicable for industrial applications. From the case laws, a patent is granted when one construes the claim properly, indentify actual contribution, confirm whether the identified contribution falls within the subject matter and determine whether the contribution is technical in nature. In most cases, patents apply to industrial inventions and practices to protect against any unauthorized use, or the implementation process. Bibliography Cases Aerotel v Telco and Macrossan's Application (UK, 2006) Catnic Components Ltd. v. Hill & Smith Ltd. (1982) R.P.C. 183 Dick v Yates (1881) 18 Ch D 76 Millar v Taylor (1769) 4 Burr 2303; 98 ER 201 Journals Bessen, James, and Michael J. Meurer. "Do patents perform like property."Academy of Management Perspectives 22, no. 3 (2008): 8-20. Graham, Stuart JH, and Ted Sichelman. "Why do start-ups patent." Berkeley Tech. LJ 23 (2008): 1063. Harhoff, Dietmar, Karin Hoisl, Bettina Reichl, and Bruno Van Pottelsberghe de la Potterie. "Patent validation at the country level—the role of fees and translation costs." Research Policy 38, no. 9 (2009): 1423-1437. Macmillan, Fiona. "Intellectual Property Rights." (2008). Park, Walter G. "International patent protection: 1960–2005." Research policy37, no. 4 (2008): 761-766. Urbanchuk, Gregory J., and James R. Tumbridge. "Patent damages: the European landscape." Journal of Intellectual Property Law & Practice 3, no. 9 (2008): 576-579. Wagner, Stefan. "Business method patents in Europe and their strategic use—evidence from franking device manufacturers." Econ. Innov. New Techn. 17, no. 3 (2008): 173-194. Wong, Mary. "Toward an alternative normative framework for copyright: from private property to human rights." (2008). Statutes Copyright, Designs and Patents Act [1988] Patents Act [1977] Patents Act [2004] Read More