Tuesday 15 November 2011

Licensing Seminar

Skipped away at lunchtime to the Tower - there to partake of luncheon and a seminar from @IPKat. The law firm, RPC were hosting in their glass castle set beside the water of St Katherine's Dock where once it was suggested OHIM might reside in London.

Jeremy announced as an appetiser that the idea of a small claims track for IP disputes that was suggested by Hargreaves is to be implemented.

Paul Joseph an RPC lawyer took us through the basics and differences between breaches of IP and contract. A bit of contractual interpretation law followed with reference to the leading cases ICS v West Bromwich 1997 on basic principles from Lord Hoffman, followed by AG of Belize on implied terms and finishing with the Supreme Courts Rainy Sky case advicating business common sense (2011 Lord Clarke). Then he tested our attention by seeing what we thought the punch line of a greeting card would be. It was the lesser of two Weevils so the intelligent follower will know he was talking about the Deakin v Card Rax 2011 case.
Trade mark licensing then came under the spotlight with special attention to competition law issues and territorial restrictions. Finally we touched on IP rights in products that turned out to derivative products in Global Coal.

We were then handed over to Neil Wilkof on the subject of sub licensing, a subject which has apparently not troubled the English courts, excusing a diversion into the more beloved US law. The Carey case is from 1964 and attempts to distinguish it from a situation where licensor gets someone else to produce the licensed goods. Next we had an intrinsic definition from Canada as opposed to Carey's comparative view. Next he strove to find a rationale for sublicensing. I wasn't sure why we needed one. We didn't need an excuse to create multi - level goods distribution. That was an aside as Neil is now into the delights of Scandecor and by point 5 he says let's forget the case law. The panic seems to be about never creating an unwanted agency arrangement.
Another of Neil's favourite US case is DuPont 1985 which comes from Delaware. There was a *have made* contract and then a contract to sell back to producer to deal with. This was to get round a prohibition on sub licensing. It was neatly tailored drafting but even so the Appeal decided it was a sublicense neverthless. You want more, ask Neil for the slides. There is no photograph because he keeps walking in front of the bright light.

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