Escolar Documentos
Profissional Documentos
Cultura Documentos
* Professor of Intellectual Property Law and Director of the Institute for Brand and
Innovation Law, UCL. This paper is based on Sir Hughs Inaugural Lecture, given at UCL
on 4 December 2007.
expiry the inventions they cover are free for all to use. The only signicant
exception to this is in the area of trade marks. They can exist indenitely
but that is because they are not designed to create new products but rather
to protect a trader from attack by others who may want to draw away
customers by deception. For as long as the trade mark owner remains in
trade, he will need protection against this most ancient type of identity
theft.
The public pays a price for IP rightsa higher cost for goods and
servicesbut that price is justied by benets it brings in the shape of
goods and services we would not otherwise have and a market in which
consumers can rely on the provenance of the goods and services they buy.
Directive 96/9/EC of the European Parliament and of the Council on the legal
protection of databases [1996] OJ L77/20, 27.3.96, transposed into UK law by the
Copyright and Rights in Databases Regulations 1997, SI 1997/3032.
See the information provided by the UK Intellectual Property Oce at <http://www.
ipo.gov.uk/design/d-decisionmaking/d-law.htm> (accessed 1 September 2008).
See The Trade Marks (Relative Grounds) Order 2007, SI 2007/1976.
See <http://www.bbc.co.uk/cbeebies/balamory/games/embedded_games/archie_game.
shtml> (accessed 1 September 2008).
See <http://www.ipo.gov.uk/education.htm> (accessed 1 September 2008).
See <http://www.theesa.com/gamesindailylife/index.asp> (accessed 1 September 2008).
See <http://www.mpaa.org/press_releases/boy%20scouts%20press%20release.pdf>
(accessed 1 September 2008).
W. Patry, Metaphors and Moral Panics in Copyright, the 2007 Stephen Stewart
Memorial Lecture, 13 November 2007.
Available at <http://www.berr.gov.uk/pressroom/Speeches/page30604.html> (accessed
1 September 2008).
See BBC News Online, KFC Licked by Pub in Menu Fight, 10 May 2007,
at <http://news.bbc.co.uk/1/hi/england/north_yorkshire/6644177.stm> (accessed
1 September 2008).
Excessive Copyright
Thus far this article has illustrated some of the more obvious excesses to
be found in the trade mark eld. Unfortunately things are at least as bad
in the area of copyright. Copyright illustrates as well as anything how far
we have departed from rationality or balance in some parts of IP law. It
will be remembered that the economic justication for IP rights is that
they replace the discipline of competition with the incentive of exclusive
rights where that incentive will bring into existence works, products, or
processes which otherwise would not have been created. Of course, once
the incentive has had its eect there is no further economic justication
for its retention. It has done its work and competition should be allowed
to return. It is for that reason that IP rights are of limited duration. When
copyright was rst introduced into British law 300 years ago, it lasted for
a period of 14 years, with the possibility of a single renewal for another
14 years. Since then, it has grown remorselessly. By the 1980s, copy-
right in all musical, literary, and artistic workswhich covers more or
less everything which is written, drawn, or painted and every piece of
softwarelasted for the life of the author plus 50 years. Consider the
case of a young software writer. With the aid of modern medicine such a
person could be expected to live to, say, 80. If he wrote his software when
he was 20, the copyright so produced would last for over 110 years. It is
dicult to believe that anyone thinks that giving copyright protection to
a work for decades after the authors death will act as an added incentive
to the authors creativity.
When the issue of duration of copyright was reconsidered in the
early 1990s in the process of harmonizing the law across the European
Union, was the opportunity taken to reduce this engorged protection to
a more sensible span? Not at all. Instead, all agreed to increase the term
to match what was available under German lawlife of the author plus
70 years. There is no economic justication for doing this. However,
once done, there is an economic incentive for its retention. The extension
of copyright creates more protectable assets and they have a value. What
otherwise would have been free now is owned. More of the public domain
is privatized. These ghostly rights continue rather like Second World War
mines, long past performing their intended function and now just an
unpleasant and unexpected nuisance to commerce.
Once again, it would be a mistake to think that this is merely
theoretical. The combination of the spread of copyright, so that virtu-
ally anything which is created now is protected by it, and the lengthy
duration, means that we are surrounded by copyrights. It is not possible
to conduct normal life without bumping up against them all the time.
Professor John Tehranian of University of Utah has published an article
in which he analysed what he did during the course of a normal day.
Taking into account his use of the internet and various acts of photo-
copying and singing songs in public spaces, he came to the conclusion
have he commits an average of at least 83 acts of infringement per day.
To put this in perspective he calculated, perhaps tongue in cheek, that
his daily liability for damages for copyright infringement in the United
States would amount to $12.45 million, or in excess of $4.5 billion each
year, if the various copyright owners had sought to enforce their rights.
He pointed out that his calculations had excluded the additional liability
he would incur if he loaded soundtracks onto his MP3 player. The refer-
ence to singing songs in public was not an accident. The words to the well
known song Happy Birthday to You were written in 1935. In some parts
of the world they will remain under copyright protection until 2030. It
is said that the owner currently receives millions of dollars in royalties for
the public performance of this work every year. In America the Copyright
Collecting Society, which is charged with recovering royalty payments
for public performance of copyright works, demanded a licence fee from
Girl Guides for singing songs round the campre. In 2006 a couple in
Essex who wanted to put an engraving of Winnie the Pooh on their still-
born childs gravestone were refused permission by Disney on copyright
grounds until the story broke in the press.
During a recent meeting with a major broadcaster, I asked why it was
that some old television programmes could only be found on the internet
site, YouTube, where presumably they were shown without any copyright
licences. The answer was that there were so many competing copyrights
involved in making most television programmes that it was too compli-
cated to try to sort out who was entitled to what or what the share-out
of the proceeds should be, so marketing an authorized version was not
See State Street Bank & Trust Company v Signature Financial Group, Inc, 149 F 3d
1368 (Fed Cir 1998), 47 USPQ2d 1596.
US Pat No. 5,960,411.
from using the same system on their sites for 20 years. This was no theor-
etical exercise by Amazon. Just three weeks after the grant of the patent,
in the middle of the pre-Christmas shopping surge, it sued its major rival,
Barnes & Noble. It alleged that Barnes & Nobles Express Lane pur-
chasing system infringed the patent. At the beginning of December of
that year a US court ordered Barnes & Noble to stop using its system.
Eventually Barnes & Noble took a licence, as have other major retail-
ers. Had it wanted to, Amazon could have refused to licence anyone.
All online retailers would have been prevented from trading in this way.
Amazon has followed this up with other patents on the way to trade
or communicate over the internet. Others have joined in the rush. For
example, a US lawyer obtained a patent which covered methods of
making online credit card payments. A large number of small online
retailers were sent threatening letters and warned that they would be
sued unless they paid a modest licence feea fee far less than it would
have cost to litigate. Indeed the proliferation of patents which, if enforced
ruthlessly, would undermine e-commerce has prompted vocal opposition
from public interest groups. In much the same vein are a patent for a
method of marketing real estate and a patent for a method for nancing
the purchase of a car.
Once it became widely known that the US PTO would grant patents to
more or less any new and inventive idea, a new feeding frenzy was created.
There has always been a small number of patents which slipped under the
radar and which, to most observers, seem to be unrelated to the primary
objective of the system, namely to promote technical development. For
example, even before the late 1990s a patent was granted for a method
of exercising a cat and there were patents for new ways of golf-putting.
However there has been a proliferation of these types of patent recently.
From an outsiders perspective this expansion has been hilarious.
Perhaps one of the most startling indications of the implications of the
anything is patentable philosophy is that patents started to be granted in
the USA for methods of avoiding tax. Presumably if these covered legal
ways of limiting the tax burden, any taxpayers who reduced their tax bill
in this way could be sued for infringement. If sued, perhaps they would
have to pay over the amount of tax saved as damages. By September 2007,
the US Patent Oce had granted 60 such patents and an additional 99
were pending. Recently the US House of Representatives voted to ban
patent is the idea that people who want to use the toilet are allowed to
do so on a rst come, rst served basis. The criticism which followed
the grant of this patent was both loud and public. So much so that IBM
decided to abandon it.
Of course most of these examples are light-hearted and have been
selected for that reason. But they represent the humourous tip of a
serious iceberg. There are numerous cases of absurd patents but most of
them are not accessible enough to engage the attention of the popular
press. Shaming proprietors into jettisoning these rights does not work.
Furthermore, because patents, like all IP rights, create assets of value, and
as the importance of these legal creations is advertised and promoted, ever
larger numbers of people and companies have a nancial interest in main-
taining and expanding the system. As mentioned above, there are some in
Europe who argue that we should follow the USA in granting business-
method patents. There are also calls for the expansion of copyright. For
example there is a current campaign to expand from 50 to 70 years the
copyright in sound recordings (that is, the records themselves rather than
the underlying musical works) led by an alliance of record companies and
well known but mature pop musicians. The European Commission has
now weighed in on their side with the suggestion that the term for this
sort of copyright should be extended to 95 years. Furthermore there
are constant calls for reduction in cost and delay in granting procedures
operated by patent oces. In Australia, this has led to an expedited sys-
tem for granting quasi-patents. In 2001, Melbourne patent lawyer, John
Keogh, obtained one of these new Australian patents. He dressed it up
in suitable scientic language. His invention was described as a circular
transportation facilitation device. He had done the impossiblehe
had patented the wheel. He claimed that his intention was to point out
the risks of this headlong rush to hand out IP rights to all and sundry.
Once again we can look to the USA to illustrate the consequence of
the proliferation of IP rights. There a vibrant new industry has been
created. Small companies, frequently set up by lawyers and well funded
by investors, buy up portfolios of patents and use them to generate large
royalty streams by threatening lengthy and costly patent infringement
lawsuits against operating companies. These rights exploiters, which
thrive because of the proliferation of patents and the high cost of litiga-
tion, are called trolls. Normally a troll has no trading activity of its own.
See the Proposal for an European Parliament and Council Directive amending
Directive 2006/116/EC of the European Parliament and of the Council on the term of
protection of copyright and certain related rights, COM(2008) 464/3, 16 July 2008.
See W. Knight, Wheel Patented in Australia, New Scientist, 3 July 2001.
Curbing IP Rights
The trouble with these sorts of activity is that they help polarize the debate
on the future direction of IP law. Amongst IP lawyers the most famous
K. Rivette and D. Kline, Rembrandts in the Attic: Unlocking the Hidden Value of
Patents (Boston, Mass: Harvard Business Press, 2000), 186.
example of strident advocacy was the late Jack Valenti who was CEO,
president, and chief lobbyist of the Motion Picture Association of America
for 38 years. He was the master of uncompromising rhetoric. For exam-
ple, on behalf of the lm industry he expressed hostility to the introduc-
tion of the videocassette recorder. During a hearing before the Committee
on the Judiciary in the United States House of Representatives in 1982
he expressed the industrys opposition as follows:
We are facing a very new and a very troubling assault on our scal security, on
our very economic life and we are facing it from a thing called the video cassette
recorder and its necessary companion called the blank tape. And it is like a great
tidal wave just o the shore. This video cassette recorder and the blank tape
threaten profoundly the life-sustaining protection, I guess you would call it, on
which copyright owners depend, on which lm people depend, on which tele-
vision people depend and it is called copyright. [He went on to say:] [Some say]
that the VCR is the greatest friend that the American lm producer ever had. I say
to you that the VCR is to the American lm producer and the American public
as the Boston Strangler is to the woman home alone.
This sort of rhetoric, and there was much of it, has been matched by
equally obdurate statements on the other side. For example, in 2004 one
commentator opposed to Valenti said:
And in the face of this onslaught of copyright extremism, we try to make change
based on moderation and balance. No wonder were losing this war. Personally,
I think the only strategy left is revolution. Completely throw out copyright laws
and thoroughly ignore them. Then let the content owners come back to the
bargaining table to renegotiate.
The language of war, revolution, rape and death destroys the middle
ground. All of the examples of excesses of IP laws given above are real.
They represent a threat not only to the idea of competition but also,
perversely, to IP rights themselves. The unyielding attitude on either
side of the debate makes it ever more dicult to secure a sensible revi-
sion of IP rights to better meet the commercial environment in the
21st Century.
Consider copyright. Whatever its origin, the copyright which is most
commercially signicant now is that which protects software, lms, sound
recordings, and broadcasts. In relation to all of them, the market now is
one of quick growth and quick obsolescence. We live in a world of instant
See e.g. Eisai Ltd v The National Institute for Health and Clinical Excellence (Nice)
[2007] EWHC 1941 (Admin).