Wednesday 1 October 2014

a new role for the Treasury Solicitors Department (Bona Vacantia Division) ?

Sally Cooper is feeling compassionate.

There are many good things in the “Orphan works diligent search guidance for applicants” published by the UK Government on 17th September 2014 "
 Its three key documents are
  • “Orphan works diligent search guidance : Film and sound” and 
  • “Orphan works diligent search guidance : Literary Works” and 
  • ”Orphan works diligent search guidance : Still visual art”. 
As and when I’m next involved in circumstances where an owner of copyright is unknown or cannot be located and, in consequence, there’s a suggestion of applying for a licence under the orphan works licensing scheme, I’ll know there’s where to look for a list of sources - and additional sources – that I can review in course of the diligent search recommended as part of the application process.

One additional source that attracted attention is the Treasury Solicitors Department (Bona Vacantia Division). All three documents advise “An applicant would search here in respect of bona vacantia which is the name given to ownerless property, which by law passes to the Crown. The Treasury Solicitors act for the Crown to administer the disposal of assets of people who die intestate (without a will) and without known kin (entitled blood relatives) and collect the assets of dissolved companies (emphasis supplied) ..... in England and Wales”. Emphasis is supplied because – so often – the owner of copyright is not an individual (or group of individuals) but a company because (per section 11 (2) Copyright, Designs & Patents Act 1988) :
“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”. 

Curiosity on reading about this additional source (relevant to Film and sound / Literary works / Still visual art) took me to the hypothetical client who had seen – at a trade exhibition – a computer game that was of interest but which (sadly) never made it to market as the company designing and developing the game was dissolved pre-release. This hypothetical client is able to establish that the company registered the name of the game as a trade mark [ by consulting, at the time of writing, the website of the Intellectual Property Office at ] but cannot discover whether film / sound / literary works (extending to software) / still visual art that were materials on show at the exhibition (and which he wants to buy so as to finish and release the game) happened in house or followed from an agreement with a third party. All he can say is that these may or may not have been assets of the dissolved company.

At first, the website of the Treasury Solicitor’s Bona Vacantia Division looks friendly and helpful :  But it soon becomes clear that the Division is focused on “the ownership of assets of people”. For example, its “Social Media at BVD” initiative includes use of @bonavacantia_uk on Twitter as from March 2012 : statistics, at the time of writing, are 293 tweets and 205 followers and (so far as I can see) no reference at all to the Division’s role as collector of the assets of dissolved companies. Moving on to “How to buy intellectual property that belonged to a dissolved company and now belongs to the Crown” it is made clear to the prospective purchaser (my client) that “[ the Division ] will not transfer bona vacantia intellectual property with any title guarantee or provide any representations or warranties in connection with it (express or implied)”. Moreover, the prospective purchaser must understand : “ If [ the Division ] offer to sell they will only do so for the open market value on the intellectual property subject always to the following minimum prices : - for a UK trademark £ 1,000 - for an EU trademark £ 2,000 - for a copyright £ 1,000 - for a patent or other intellectual property £ 1,000. You will have to pay VAT on the consideration. You will also have to pay [ the Division’s ] costs of £ 300 plus VAT for each asset”.

I have not been able to find information on how many transfers of assets of dissolved companies are made by the Treasury Solicitors Department (Bona Vacantia Division) but it occurs to me this might properly be the subject of a “Freedom Of Information” request : In the future, perhaps a further “Freedom of Information” request might be made to ascertain the number of requests has [ the Division ] receives (and responds to) in consequence of the Government’s “Orphan works due diligence guidance” ?

This may all seem gloriously academic – but curiosity stays with me as I ponder :
(a) the extent to which there is dialogue between the Intellectual Property Office and the Treasury Solicitors Department (Bona Vacantia Division), and
(b) the role of [ the Division ] in (shall we say) ensuring the availability and re-use of intellectual property (whether as assets of dissolved companies or assets that are orphaned works).

Sally Cooper

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