Intellectual Property Rights

3 key types of IP Rights

1. copyright

2. trademarks

3. patents

main statutes for IP

• copyright, Designs & Patents Act 1988

• Trade Marks Act 1994

• Patents Act 1977

Please note that none of these are in the commercial law statutes book.

Justifications for IP rights

IP serves a number of purposes, including:

1. (arguably) to provide a reward for the inventor or creator, by giving them certain exclusive rights in relation to their IP;

2. (arguably) to encourage people to share their inventive/creative ideas for the benefit of society; and 

(definitely)tocreate a recognised and legally enforceable property right.

Bently and Sherman, Intellectual Property Law, 2^nd ed, 2004,

often debated the status and legitimacy of intellectual property.  In doing so, philosophers have asked ‘why should we grant intellectual property rights?’… because the conventional arguments which justify the grant of private property rights in land and tangible resources are often premised on the scarcity or limited availability of such resources, and the impossibility of sharing, it seems especially important to justify the grant of exclusive rights over resources – ideas and information – that are not scarce and can be replicated without any direct detriment to the original possessor of the intangible.”

categories for justification for award and enforcement of IP rights - economic summary

(a) economic justifications, to create a property right that the author can exploit, in order to give the author an incentive to create more intellectual property, for the benefit of society – a reward and innovation cycle;

• if we create an exclusive property right in intangible creations, there is incentive to create and invent with the monopoly right. creators can exploit their inventions widely in society without fear of copying.

categories for justification for award and enforcement of IP rights - labour/personality summary

(b) labour or personality justifications, whereby the intellectual creation of an individual is worthy of protection to reflect the labour of the individual and to respect his personality as demonstrated by the work.

•  intellectual creation of an individual is worthy of protection, to reflect the labour of that individual or to respect their personality as demonstrated and captured in their work. As such, intellectual creations should be rewarded per se because they constitute a natural right for those who have expended intellectual labour and effort into creating something, and they should have the right to control the fruits of their labour.

criticisms of IP Rights

• wide scope and duration

• granting large monopolies to businesses which ultimately stifles innovation and creativity

• imposing limits on further innovation, follow-on creativity

• most emotively, to limit the availibility of lifesaving medications and technologies during the patent terms.

investment in IP for UK economy - intangible assets

intangible assets, of which IP is a part, play an important role in the UK economy. Investment in intangible assets grew by 0.1% to £134.5 billion between 2019 and 2020 (excluding training) while total tangible investment decreased by 13.6% to £137 billion in 2020.

investment in IP for UK economy - knowledge assets

knowledge assets are a subset of intangible assets. In 2020, firms in the UK market sector invested an estimated £99.6bn in knowledge assets, of which an estimate of £85.2bn was protected by IP rights. This equates to 4.7% and 4% of total GDP, respectively.

innovation and growth project report 2022-23

the IPO estimates that industries with an above average use in any IP right accounted for 26.9% (£298.5 billion) of UK non-financial value-added output, 15.5% (4.5 million) of total UK employment and 52.1% (£159.7 billion) of goods exported.

Contemporary Intellectual Property: Law and Policy, 6^th ed, 2023

“Copyright law is designed to protect intellectual creations such as literary, musical, dramatic, and artistic works, and films, known as author works, together with technological media works such as sound recordings, broadcasts, and the typographical arrangement of a published edition (ie the way the material is laid out) … Copyright protection arises on the creation of a protectable work. There is no need to register the right

what is a copyright Holyoak and Torremans

“[copyright] is exclusively concerned with the material expression of the ideas on which the work is based.  Copyright is not about ideas, but about the way in which they are expressed.”

s1(1) CDPA:

Copyright is a property right which subsists … in the following descriptions of work -

(a) original literary, dramatic, musical or artistic works,

(b) sound recordings, films, or broadcasts, and

(c) the typographical arrangement of published editions.

ss 153-156 CDPA

Qualification for copyright protection

Levola Hengelo BV v Smilde Foods BV (C‑310/17) [2018] Bus LR 2442

what is a work

• for there to be a work.. the subject matter protected by copyright must be expressed in a manner which makes it identifiable with sufficient precision and objectivity, even thoug that expression is not necessarily in permanent form

s.3(1) CDPA

What types of works are protected?

 “literary work” means any work, other than a dramatic or musical work, which is written, spoken or sung, and accordingly includes—

(a) a table or compilation [other than a database] 

(b) a computer program

(c) preparatory design material for a computer program and

(d) a database

Exxon Corp v Exxon Insurance Consultants Ltd [1982] Ch 119

single words are not protected by copyright, but may be trademarked.

The Newspaper Licensing Agency Ltd v Meltwater Holdings BV [2012] RPC 1

11 word headline can be protected under literary work

s.3(1) CDPA dramatic works

 “dramatic work” includes a work of dance or mime; and

“musical work” means a work consisting of music, exclusive of any words or action intended to be sung, spoken or performed with the music. (intrumental only)

s.3(2) CDPA

Copyright does not subsist in a literary, dramatic or musical work unless and until it is recorded, in writing or otherwise

known as fixation requirement

s3(3) CDPA

It is immaterial for the purposes of subsection (2) whether the work is recorded by or with the permission of the author; and where it is not recorded by the author…

s4(1) CDPA:

 “artistic work” means

(a) a graphic work, photograph, sculpture or collage, irrespective of artistic quality,

(b) a work of architecture being a building or a model for a building, or

(c) a work of artistic craftsmanship

work of artistic craftmenship

poorly described by case law.

s5A(1) CDPA

“Sound recording” means

(a) a recording of sounds, from which the sounds may be reproduced, or

(b) a recording of the whole or any part of a literary, dramatic or musical work… regardless of the medium on which the recording is made…

s5A(2) CDPA

Copyright does not subsist in a sound recording which is, or to the extent that it is, a copy taken from a previous sound recording.

s5B(1) CDPA

“film” means a recording in any medium from which a moving image may by any means be produced.

s5B(2) CDPA

The sound track accompanying a film shall be treated as part of the film…

s5B(4) CDPA

Copyright does not subsist in a film which is… a copy taken from a previous film.

s.6(1) CDPA

 a “broadcast” means an electronic transmission of visual images, sounds or other information which

(a) is transmitted for simultaneous reception by members of the public and is capable of being lawfully received by them, or 

(b) is transmitted at a time determined solely by the person making the transmission for presentation to members of the public,

and which is not excepted by subsection (1A); and references to broadcasting shall be construed accordingly.

s.8(1) CDPA

 “published edition”, in the context of copyright in the typographical arrangement of a published edition, means a published edition of the whole or any part of one or more literary, dramatic or musical works.

originality requirement - copyright

applies to four categories of works

• literary

• dramatic

• musical

• artistic

Infopaq International A/S v Danske Dagblades Forening (Case C 5/08) [2009] ECDR 16 - copyright

copyright.. is liable to apply only in relation to a subject-matter which is original in the sense that it is author's own intellectual creation which is evidenced clearly from the form, the manner in which the subject is presented and the linguistic extression. in the main proceedings, moreover, it is common ground that newspaper articles, are literary works

regrding the elements of such works covered by the protection. it should be observed that they consist of words which, considered in isolation, are not as such an intellectual creation of the author who employs them. it is only through the choice, sequence and combination of those words that the author may express his creativity in an original manner and achieve a result which is an intellectual creation

s9(1) CDPA

"author", in relation to a work, means the person who creates it

s9(2) CDPA

That person shall be taken to be— 

(aa) in the case of a sound recording, the producer;

(ab) in the case of a film, the producer and the principal director; …

s10(1) CDPA

 “work of joint authorship” means a work produced by the collaboration of two or more authors in which the contribution of each author is not distinct from that of the other author or authors

s10(1A) CDPA

 A film shall be treated as a work of joint authorship unless the producer and the principal director are the same person

Kogan v Martin [2019] EWCA Civ 1645 - collaboration copyright

1. a work of joint authorship is a work produced by the collaboration of all the people who created it.

2. there will be a collaboration where those people undertake jointly to create the work with a common design as to its general outline, and where they share the labour of working it out. the first task for the court in such a case is to determine the nature of the co-operation between the putative joint authors which resulted in the creation of the work

Kogan v Martin [2019] EWCA Civ 1645 - derivative works copyright

derivative works do not qualify. works where one of the putative authors only provides editorial corrections or critique, but where there is no wider collaboration, do not qualify. ad hoc suggestions of phrases or ideas where there is no wider collaboration do not qualify.

Kogan v Martin [2019] EWCA Civ 1645 - determining collaboration copyright

1. in determining whether there is a collaboration to create a literary or artistic work it is never enough to ask “who did the writing”. authors can collaborate to create a work in many different ways. e.g there may be joint authorship if one person creates the plot and the other writes the words. 

2. joint authors must be authors, in the sense that they must havve contributed a significant amount of skill which went into the creation of the work. again, it is not correct to focus exclusively on who physically wrote it. the statutory concept of an author includes all those who created, selected or gathered together the detailed concepts or emotions which the words have fixed in writing

Kogan v Martin [2019] EWCA Civ 1645 - sufficiency of contribution copyright

1. the question of what is enough of a contribution is to be judged by the infopaq test, i.e whether the putative joint author has contributed elements which expressed that person’s own intellectual creation. the essence of that term is that the prosn in question must have exercised free and expressive choices. the more restrictive the choices the less likely it will be that they satisfy the test.

2. contribution of a putative author must not be distinct

Kogan v Martin [2019] EWCA Civ 1645 - further intention copyright

1. there is no further requirement that the authors must have subjectively intended to create a work of joint authorship 

Kogan v Martin [2019] EWCA Civ 1645 - pro rata copyright

it follows that the respective shares of joint authors are not required to be equal but can reflect pro rata, the relative amounts of their contributions

s10A(1) CDPA

“work of co-authorship” means a work produced by the collaboration of the author of a musical work and the author of a literary work where the two works are created in order to be used together.

s11(1) CDPA

The author of a work is the first owner of any copyright in it, subject to the following provisions

s11(2) CDPA

Where a literary, dramatic, musical or artistic work, or a film, is made by an employee in the course of his employment, his employer is the first owner of any copyright in the work subject to any agreement to the contrary.

Copyright

commissioned works

• commissioners (person paying) of works do not automatically own copyright in the commissioned work; and, usually, normal first ownership rules will apply 

• in absence of a contract, a commissioner could, for instance, have an implied license to use a copyright work for the purposes of the commission 

  • but it depends on facts 

• good practise is to have a clear written contract for the commissioned work which stipulates a clear license or assignation in favour of the commissioner.

How Long Does Copyright Last? - Literary, dramatic, musical or artistic works

Copyright expires at the end of 70 years from the end of the year in which the author dies. (s12(2) CDPA)

How Long Does Copyright Last? Films:  (s13B CDPA)

70 years from the end of year in which the last principal director or author dies

How Long Does Copyright Last? Sound recordings:  (s13A CDPA)

50 years from recording made or if published or made availal to public during that period (within the 50 years) then 70 years from first publishing or first making available

How Long Does Copyright Last? Broadcast & typographical arrangement

Broadcast - 50 years 

typographical arrangement - 25 years from first publsiing 

• copyright can be passed on to heirs after death, as many times during the period of protection

• after the 70 or so years, the work falls out of copyright

s12(8) CDPA

in relation to a work of joint authorship or a work of co-authorship - 

(a) the reference in subsection (2) to the death of the author shall be construed—

(i) if the identity of all the authors is known, as a reference to the death of the last

of them to die, and

(ii) if the identity of one or more of the authors is known and the identity of one or

more others is not, as a reference to the death of the last whose identity is known;

s2(1) CDPA

The owner of the copyright in a work... has the exclusive right to do the acts specified in Chapter II… 

Chapter II - Sections 16-27

s16(1) CDPA

The owner of the copyright in a work has … the exclusive right to do the following acts in the United Kingdom— 

 (a) to copy the work (section 17);

 (b) to issue copies of the work to the public (section 18);

 (ba) to rent or lend the work to the public (section 18A);

 (c) to perform, show or play the work in public (section 19);

 (d) to communicate the work to the public (section 20);

 (e) to make an adaptation of the work … (section 21)

and those acts are referred to in this Part as the “acts restricted by the copyright”.

s16(2) CDPA

Copyright in a work is infringed by a person who without the licence of the copyright owner does, or authorises another to do, any of the acts restricted by the copyright

david Hoffman v Drug Abuse Resistance [2012] EWPCC 2 - copyright

• thus if the defendant did carry out one of the acts provided for in s.16, the fact that they thought they had permission is not relevant. although this may seem harsh, it is not. from the copyright point of view, the copyright is his property and his rights have been infringed if he did not give permission

  • Birss J at para 18

s173(2) CDPA

Where copyright (or any aspect of copyright) is owned by more than one person jointly, references in this Part to the copyright owner are to all the owners, so that, in particular, any requirement of the licence of the copyright owner requires the licence of all of them.

s16(3) CDPA

References in this Part to the doing of an act restricted by the copyright in a work are to the doing of it—

(a) in relation to the work as a whole or any substantial part of it, and

(b) either directly or indirectly;

and it is immaterial whether any intervening acts themselves infringe copyright

baigent v Random House [2008] E.M.L.R 7 copyright

 substantial part relates to taking of original expression from the first work, not taking the idea of the first work.

Secondary infringement - copyright

Sections 22-27 CDPA

s23 CDPA

The copyright in a work is infringed by a person who, without the licence of the copyright owner— 

 (a) possesses in the course of a business,

 (b) sells or lets for hire, or offers or exposes for sale or hire,

an article which is, and which he knows or has reason to believe is, an infringing copy of the work. - mens rea element

What is the impact of the internet?

Copyright infringement takes place when materials are uploaded on to and/or downloaded from the internet (e.g. the uploader copies the work and then communicates it to the public; the downloader copies the work when downloading it) without the permission of the copyright owner.

Permitted Acts of copyright

Exceptions include:

• Fair dealing with a work for the purpose of criticism or review or quotation or news reporting

• Fair dealing with a work for the purposes of non-commercial research or private study

• Fair dealing with a work for the purposes of parody, caricature or pastiche

• Fair dealing with a work for the sole purpose of illustration for instruction 

• Various uses by educational establishments

moral rights in copyright

s77(1) CDPA  The author of a copyright literary, dramatic, musical or artistic work, and the director of a copyright film, has the right to be identified as the author or director of the work in the circumstances mentioned in this section; but the right is not infringed unless it has been asserted in accordance with section 78.

s78(1) CDPA

A person does not infringe the right conferred by section 77 (right to be identified as author or director) by doing any of the acts mentioned in that section unless the right has been asserted in accordance with the following provisions so as to bind him in relation to that act.

s78(2) CDPA

The right may be asserted generally or in relation to any specified act or description of acts—

(a) on an assignment of copyright in the work, by including in the instrument effecting the assignment a statement that the author or director asserts in relation to that work his right to be identified, or

(b) by instrument in writing signed by the author or director.

s80(1) CDPA

The author of a copyright literary, dramatic, musical or artistic work, and the director of a copyright film, has the right in the circumstances mentioned in this section not to have his work subjected to derogatory treatment

s80(2)(a) CDPA

“treatment” of a work means any addition to, deletion from or alteration to or adaptation of the work,

s80(2)(b) CDPA

the treatment of a work is derogatory if it amounts to distortion or mutilation of the work or is otherwise prejudicial to the honour or reputation of the author or director ...

Pasterfield v Denham [1999] FSR 168

objectively mere distortion or mutilation not enough, has to be done in such a way that is prejudicial to reputation

s84(1) CDPA

 A person has the right in the circumstances mentioned in this section— 

(a) not to have a literary, dramatic, musical or artistic work falsely attributed to him as author, and 

(b) not to have a film falsely attributed to him as director…

and in this section an “attribution” , in relation to such a work, means a statement (express or implied) as to who is the author or director.

Contemporary Intellectual Property: Law and Policy, 6^th ed, 2023

“Trade marks operate to distinguish the goods and services of one enterprise from those of another, functioning as ‘badges of origin’ to help consumers to avoid confusion between goods or services emanating from different undertakings.”

s2(1) TMA

A registered trade mark is a property right obtained by the registration of the trade mark under this Act and the proprietor of a registered trade mark has the rights and remedies provided by this Act.

s2(2) TMA

No proceedings lie to prevent or recover damages for the infringement of an unregistered trade mark as such; but nothing in this Act affects the law relating to passing off.

™ v ®

™ - unregistered trade mark

® - registered trade mark

s1(1) TMA

 In this Act "trade mark"  means any sign which is capable—

(a)  of being represented in the register in a manner which enables the registrar and other competent authorities and the public to determine the clear and precise subject matter of the protection afforded to the proprietor, and

(b)  of distinguishing goods or services of one undertaking from those of other undertakings.

what may a trade mark consist of

 words (including personal names), designs, letters, numerals, colours, sounds or the shape of goods or their packaging.

requirement of some form of representation for clarity and precision of terms of what is protected. removes old requirement for “graphic” representation

s32(1) TMA

 An application for registration of a trade mark shall be made to the registrar.

s32(2) TMA

The application shall contain - 

(a) a request for registration of a trade mark,

(b) the name and address of the applicant,

(c) a statement of the goods or services in relation to which it is sought to register the trade mark, and

(d) a representation of the trade mark, which is capable of being represented in the register in a manner which enables the registrar and other competent authorities and the public to determine the clear and precise subject matter of the protection afforded to the proprietor.

s32(3) TMA

The application shall state that the trade mark is being used, by the applicant or with his consent, in relation to those goods or services, or that he has a bona fide intention that it should be so used.

s32(4) TMA

The application shall be subject to the payment of the application fee and such class fees as may be appropriate.

s34(1) TMA

Goods and services shall be classified for the purposes of the registration of trade marks according to a prescribed system of classification.

different classes of goods and services for TM

The 45 different classes of goods and services are often referred to as the Nice classification (based on the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks (1957)).

examination for application for TM

once the application has been applied for, it is up to other third parties to object to the application if it interferes with one of their rights, this is done after the application is made available for the public to see by the office during registration

The application will be examined by the registrar (see grounds for refusal below).

s37(1)TMA

The registrar shall examine whether an application for registration of a trade mark satisfies the requirement of this Act (including any requirements imposed by rules).

s37(3) TMA

If it appears to the registrar that the requirements for registration are not met, he shall inform the applicant and give him an opportunity, within such period as the registrar may specify, to make representations or to amend the application.

s37(4) TMA

If the applicant fails to satisfy the registrar that those requirements are met, or to amend the application so as to meet them, or fails to respond before the end of the specified period, the registrar shall refuse to accept the application.

s37(5) TMA

 If it appears to the registrar that the requirements for registration are met, he shall accept the application.

examination of application for TM

s.37 TMA

publication and opposition of application for TM

s.38 TMA

s38(1) TMA

When an application for registration has been accepted, the registrar shall cause the application to be published in the prescribed manner.

s38(2) TMA

Any person may, within the prescribed time from the date of the publication of the application, give notice to the registrar of opposition to the registration. The notice shall be given in writing in the prescribed manner, and shall include a statement of the grounds of opposition.

s38(2A) TMA

Where a notice of opposition is filed on the basis of one or more earlier trade marks or other earlier rights-

(a) the rights (if plural) must all belong to the same proprietor;

(b) the notice may be filed on the basis of part, or the totality, of the goods or services in respect of which the earlier right is protected or applied for.

s38(2B) TMA

A notice of opposition may be directed against part or the totality of the goods or services in respect of which the contested mark is applied for.

s38(3) TMA

Where an application has been published, any person may, at any time before the registration of the trade mark, make observations in writing to the registrar as to whether the trade mark should be registered; and the registrar shall inform the applicant of any such observations. A person who makes observations does not thereby become a party to the proceedings on the application

s39(1) TMA

The applicant may at any time withdraw his application or restrict the goods or services covered by the application. If the application has been published, the withdrawal or restriction shall also be published.

s.40 TMA

The application will be registered if any opposition filed is unsuccessful or if no opposition is filed and a certificate of registration is then issued to the applicant.

s40(1) TMA

Where an application has been accepted and-

(a) no notice of opposition is given within the period …or

(b) all opposition proceedings are withdrawn or decided in favour of the applicant, 

the registrar shall register the trade mark

s40(3) TMA

A trade mark when registered shall be registered as of the date of filing of the application for registration, and that date shall be deemed for the purposes of this Act to be the date of registration.

s40(4) TMA

On the registration of a trade mark the registrar shall publish the registration in the prescribed manner and issue to the applicant a certificate of registration.

Grounds for refusal of registration

An application to register a trade mark can be refused for a number of reasons, arising primarily from absolute grounds (i.e. it would never meet the criteria for registration) or relative grounds (i.e. it would be a trade mark but for the existence of an earlier trade mark)