Thursday 31 December 2015

Happy New Year - Welcome the Year of EUIPO

The greeting from supporter of new entrepreneurs Goodwille
The one good thing about the turning of the year is that it or nearby dates are observed as a holiday by most lawyers wherever they are on the globe, so the emails have slowed and those that are observing today as a working day are catching up and going home early. Even some solo practitioners might allow themselves a seasonal break.

What will 2016 bring. For those of us dealing in trademark, its the demise of the Community Trademark and the Birth of the European Union Trademark. OAMI and OHIM will, as from 23 March 2016, no longer need explaining as the office will become the European Union Intellectual Property Office. The package of amendments to the CTMR is all agreed and published here on Christmas Eve. The day previously we had the new Updated Harmonisation Directive. At least this one is a continuous text and not a bundle of amendments. We will have to learn to refer to it as Directive 2015/2436. It has to be implemented by 14 January 2019 and the day after our old friend is repealed. For those of us in the United Kingdom we are not expecting major new legislation. The own name defence for companies has to go and no doubt the clever people in the IPO will find something to gold plate into an Statutory Instrument and ever after the judges will refer directly to the Directive.

The updated CTMR provides a more immediate offering to update clients. The fee changes on 23 March 2016 are so slight they are hardly worth gaming. We do get to see EU Certification Marks for the first time. It seems likely that most of the changes will benefit the internal operations of the office allowing it greater flexibility to change procedures and fees. Search reports seem to become entirely optional and if the later applicant declines the opportunity it seems the burden of those surveillance notices will also decline.

Do share your best ideas for encouraging more business from this event after you have toasted the New Year and created your new email database for 2016.

Monday 7 December 2015

FCO not ready to recognise Enterprise

FCO's  Hanslope Park
I have been defeated by a lowly civil servant. All my efforts since 2008 defending the validity of the community trademark and then enforcing it are as nought (not quite only nought if the defendant stays away which is quite useful).

Orders made by the Intellectual Property Enterprise Court are not recognised by the Foreign &Commonwealth Office.

Why does that matter? If you want to provide a document to an overseas lawyer he wants to know it's authentic. The time-honoured way of doing this is by means of a chain of trust. The Hague convention establishes what is called an Apostille and this is attached to verify the authenticity of the seal or signature. The seal or signature is what verifies the document.

Application of the apostille in England and Wales is controlled by the Foreign & Commonwealth Office. It is a responsible duty and they should discharge it with care. They discharge it in a remote part of the country (see picture above - a bleak and desolate spot to work so it may explain their bitterness) where the nearest civilisation is Milton Keynes.  The government website describes exactly how TO GET A DOCUMENT LEGALISED . The process is described with admirable clarity here. High court documents are specifically mentioned amongst those that the Foreign & Commonwealth Office will apostille directly. I would have preferred to hand deliver and collect the documents myself. What is the point of living in the centre of London if you can't do that? There is a premium service provided by the FCO. It didn't respond to my request to register. It didn't even bother to laugh in my face. Nevertheless there are businesses that are registered with them and eventually I paid one of those to take my document in, but I get ahead of myself.

Of course I had tried the way recommended on the website. This requires making the payment in advance; and filling in by hand an awkward form (after printing it out) including copying (very carefully) the 16 digit payment number from the screen and  and posting it all off. That was a waste of time. In due course they took the money and then refunded it less the postal charges and sent the papers back by snail mail so a week later I am no better off. The letter of rejection mutters about solicitors signatures and makes no sense in relation to a sealed document. Its standard letter No 2.  I ring up the helpline. It has very limited hours and a premium rate number (midday to 4pm Monday to Friday) and when I get through a very nice man says yes they've made a mistake and will I send an email. I send them an email. I send it again several times but no response not even a laugh in my face. The email address does not do delivery notifications either.

This is where I resort to the type of firm that is able to go to the Foreign & Commonwealth Office and cross their palms with silver. They procure an explanation from the great and mighty (This is the lowly civil servant. I'm feeling frustrated so it's ironic ). This Explanation is that they don't recognise the seal. It has a date in it. Apparently seals with dates in them are not OFFICIAL and cannot be verified. All IPEC seals have dates. Now you do get stamps from the court which are just to say when a document was handed in. These are usually square and black.  Now the FCO is clearly saying that this document is not what it says it is. Nevertheless, if a solicitor signs it they'll happily apostille it so I can perpetrate something they think they know is a deceit.

The Foreign & Commonwealth Office do attach their apostille to a document prepared by a notary public that suggests Filemot had told "Mr Jones" that this was a copy of a document. The FCO apostille of course is only verifying that the notary public's signature is authentic. Even in foreign parts it seems likely that anyone in authority will be less than convinced by this triple hearsay. It  sounds suspicious to me especially when it is attached to a document which very plainly is not a  copy at all and isn't as described by the notary public.

This leaves me telling the client that he better go to one of those clever international law firms that know how to do these things, because having survived an Alicante torpedo and much else this order is never going to get personally served on anyone overseas. Of course in England a seal (even with a date in it) is authentic and the order so sealed can be served in person without more ado. The IPEC will even enforce them and charging orders and bench warrants for recalcitrant parties are all possibilities if they live in Milton Keynes or thereabouts.

So there we have it end of road in Hanslope. 

Recommendations welcome.

Thursday 3 December 2015

A tribute to Jeremy Phillips by Peter Groves

On Wednesday 25th, I had the honour of speaking at Jeremy’s penultimate event before his retirement, the annual IP editors and publishers lunch. Jeremy, as I reminded him and explained to the audience, had impressed me with the careful consideration with which he evidently approached the issue of the invitation: it was after last year’s event but before we had left the building, and we had found ourselves standing side by side in circumstances which decorum prevents me from describing in greater detail, prior to setting out for our next engagements. “Would you like to give the keynote talk next year?” he asked me. I replied to the effect that I would be pleased to do so. “That’s one thing off my to-do list,” he said.

I told the audience that, in the same spirit, I had set aside a few minutes the previous day to prepare my talk. In truth I thought about it, off and on, for the entire year, although that probably didn’t show.

Being a publisher and editor as well as an author, I wondered which hat I should wear for the occasion. But being also a member of the Management Committee of the Society of Authors, I quickly decided to take the opportunity to address a roomful of publishers as a trade unionist. I put on my red tie.

This is not the talk I gave. That would be too boring. As I remarked to Andy from the 1709 Blog and Barbara the following afternoon, during the tea break of Jeremy’s final event, had I been giving the talk then it would have been rather different. Better. This describes the improved version.

More than 20 years ago, when I was teaching at London Guildhall University on the then-new Legal Practice Course, my intellectual property class found itself discussing oxymorons. I suspect I was responsible, having embarked on some digression or other. Someone wanted to understand what an oxymoron was. I think someone suggested “pretty ugly”. “Military intelligence”, another offered. “Scottish Amicable” said another, a trade union officer of whom I had expected better, so I swiftly closed down the discussion. Now every time I encounter the phrase “creative industries” that episode comes back to mind.

No industry creates anything. Individuals create. They may be employees, but of course that only affects the ownership of the rights in their creations. I know that the expression is being used loosely (although as lawyers we should resist laxity like that) but when all the authors, composers, artists, film directors and so on in the world are lumped together anonymously under a single heading, their work is devalued and they are demeaned. Just like when their work is referred to as “content”.

I don’t go the cinema very often, but a poster for a film called “Slavery Free” recently caught my eye. That’s also an oxymoron, I suppose, but it’s also axiomatic: of course slavery is free, that was always its unique selling proposition! And if by slavery you mean the condition of being forced to work for another for no or very low pay, there is a lot of it about in the legal publishing field.

Of course, legal authors are not required to work for nothing. They choose to do so, and often their firms encourage them to. Consequently few if any authors make a living out of writing legal books. Legal authors make their living by practising or teaching law, not by writing about it. There is not a class of professional legal authors.

This is my great-grandfather, Matthew Henry Groves. To the best of my knowledge he is not the
subject of a well-known (to Jeremy, anyway) song by Fairport Convention. He was a founding member of the Institute of Chartered Accountants of England and Wales. His son, my grandfather, was also a member of the Institute, and so was my father, and so is my brother. They all share the same facility with numbers. I don’t. I am more comfortable with words, so I became a solicitor.

Lawyers are professional wordsmiths, but not all are equal. Words and language are the tools of our trade. We are all, in a way, full-time authors, but some are more professional than others. Just because you’re a lawyer doesn’t mean you can write well. Jeremy explained the problem very well in his valedictory editorial in JIPLP: lawyers write well for themselves or their clients, but they often fail to write well for their readers.

A professional author will recognise a parallel construction, and be able to execute it correctly. They know what a splice comma is, and that it must be avoided. They understand that “however” is not a conjunction. They take care to avoid compound preposition, unless they need to write a minimum number of words. They might even have an idea about the subjunctive – but if not, so be it, although if I were you I would familiarise yourself with what someone like Fowler has to say on the subject.

A professional author will also be able to use the terms “verbal” and “oral” correctly, and knows that “a verbal contract ain’t worth the paper it’s written on” isn’t merely funny, it’s hilarious. He or she begins work on a document by using the search-and-replace function to change “shall” to “will”. And finally (enabling me to segue neatly into the next part of what I want to say) he or she appreciates that an acronym is a special type of abbreviation, not a synonym for it.

A professional author is more likely to produce material that is right first time. Every piece of work benefits from the attention of a good editor, of course, but how much better to receive material that needs only a light touch. Using professional authors, and treating them like professionals, will pay publishers dividends.

So how should professional legal authors be treated? My trade union has recently launched a campaign using the catchy acronym “CREATOR”. It concerns the terms on which writers are contracted to publishers.
  • C - clearer Contracts, including written contracts which set out the exact scope of the rights granted. 
  • R - fair Remuneration. Equitable and unwaivable remuneration for all forms of exploitation, to include bestseller clauses so that if a work does far better than expected the creator shares in its success, even if copyright was assigned. 
  • E - an obligation of Exploitation for each mode of exploitation, also known as the 'use it or lose it' Clause 
  • A - fair, understandable and proper Accounting clauses. 
  • T - Term. Reasonable and limited contract terms and regular reviews to take into account new forms of exploitation. 
  • O - Ownership. Authors, including illustrators and translators, should be appropriately credited for all uses of their work and moral rights should be unwaivable. 
  • R - All other clauses be subject to a general test of Reasonableness, including a list of defined clauses which are automatically deemed to be void and a general safeguarding provision that any contract provision which, contrary to the requirement of good faith, causes a significant imbalance in the parties' rights and obligations arising under the contract to the detriment of the author shall be regarded as unfair. One example would be indemnity clauses which put all the risk on the author. 

No author is ever completely satisfied with their publisher. But publishers must be aware of the value of what authors create for them, and recognise their contribution in an appropriate fashion. Without authors, of course, there would be nothing to publish – and as technology provides new ways for authors to get their material before readers, it is high time that legal publishers started to show that they appreciate what professional authors can do for them.