Licensing Intellectual Property

Oct 23, 2018 | 0 comments

Oct 23, 2018 | Miscellaneous | 0 comments

Licensing Intellectual Property

Q1:
(A) – identify and discuss key terms in TM license.

  1. The licence grant

This is at the core of a trademark licence agreement because it offers definition to the answers of the following key questions.

  1. The licence grant defines the specific rights that are conveyed and the trade marks that are being licenced.
  2. Licence grant defines what the licensee is allowed to exercise with the licenced right. Similarly, it also defines what the licensee is prohibited from doing with the licenced rights. Particularly, the types of products the licensee is allowed to sell or manufacture, which channels of distribution and which territories.
  3. Finally, licence grant defines whether the grant is non-exclusive or exclusive. Moreover, the owner of trade mark may also licence the copyrights (for brand related contents that are original, logos), and publicity rights (for the celebrity licences) (Herzfeld & Bergovoy 34).
  4. Distribution channels and territories

Territory implies the geographic area whereby the licence is allowed to the goods licenced, and usually defined on a basis of a country.

Distribution channels means the categories of buyers permissible from the licensee and the resellers of the licenced products to the general public. The most common channels of distribution include catalogues, the web and internet and stores such as speciality, mid-tier and mass department stores.

According to Herzfeld & Bergovoy, the conflict arises when negotiating the provision of channels where the licensor desire to only have the best quality and newest goods for sale in the channels that are regarded as most prestigious to boost the brand image, whereas the desire of the licensee to make the most profits by using many channels as possible to sell multiple products at whatever market price (35). In negotiating the provision of distribution channel, Herzfeld & Bergovoy indicated that licensors usually want well defined, limited channels and no right to sell-offs (inventory unsold at the agreement expiration), close outs (unsold inventory out of season), or seconds (goods having merchantable but minor defects) to discount channels without proper approval (para 8). In contrast, licensees generally desire to sell through all channels possible and also want to rights to selling sell-offs, close outs, or seconds to discount channels without proper prior licensors approval.

  1. Exclusivity

This is to what extent if whether the licence will possess exclusive rights. The licences that are non-exclusive do not restrict the ability of the licensor to grant licences for similar or like products to other groups or parties. As the name implies, exclusive rights grant exclusive rights to the licensees to produce and sell the licenced products in certain markets and territories during the term period of the licence (Herzfeld & Bergovoy 34).

  1. The licence term

The initial term’s length and the ease or difficulty or difficulty of the licensee in getting a renewal term is driven largely by consideration of businesses. Generally the licensor wants a short term without the option of automatic renewal for it to replace easily the licensee who is underperforming, or get better financial terms from new licensee or even by manufacturing the goods by itself. In contrast, the licensee wants a longer term compounded with an option for automatic renewal with no of few preconditions for it to amortize the costs of development, and guarantee longer returns for the investments it made (Herzfeld & Bergovoy 35).

  1. Royalty calculations

The trade mark licences currency are the royalties. The basis most common for calculation of royalties on licence for goods is on a percentage of wholesale net sales, defined as the gross sales subtract the agreed deductions such as returns and taxes. The figure of net sales realised is then multiplied by the rate of royalty to get the royalties sum owing to the licensor (Herzfeld & Bergovoy 35). Herzfeld & Bergovoy further pointed out the most common contention points when negotiating the provision for net sales. They include:

  1. The acceptable deductions from the gross sales when calculating accrued net sales and another limits found within.
  2. Whether the figure of net sales will be based on the licensees’ sales regardless of no pays, or based on the actual receipts from the licensee, exclusive of the purchasers who failed to make payments for whatever reasons. Herzfeld & Bergovoy asserted that generally the receipts are in favor of the licensee whereas the sales generally are favorable to the licensor (35).
  3. Free on Board (FOB) sales treatment. FOB is a legal term specifying that the buyer of items from the international commerce will have the legal responsibility of arranging and paying for shipment of the goods purchased from the point the goods pas the rail of the ship at the home port of the seller. However, FOB is used in license agreement more broadly to any scenario where the other buyer or retailer takes the delivery of the location of the licensee and ships the products licensed to the expense of the buyer, essentially removing insurance, freight, related shipping expenses and customs from the net sales price of the licensee. This definitely results to lower royalties on the part of licensor, in comparison to the non-FOB sale of similar goods (Herzfeld & Bergovoy 36).
  4. Minimum guaranteed royalties

This represents a contractual commitment to pay the licensor an agreed amount of royalties by the licensee regardless of the exact sales amount of the products licensed, if any. Herzfeld & Bergovoy stated that advance payments also form part of minimum guaranteed royalties that is paid at the commencement of the license agreement (36). The minimum guaranteed royalties are usually negotiated based on a certain percentage of royalties expected to be earned. Their intention is to motivate the licensee to promote the sale and development of the products licensed diligently in the marketplace, and reduce the risk of the licensor by guaranteeing a minimum rate of return.

  1. Quality control and approvals

According to Herzfeld & Bergovoy, trademarks operates as designators that give the consumers predictive ability to predict products quality they buy (36). Without the consistency in quality, the buyers not aided would be misled, by relying on trademarks. The licensor of a trademark that does not control and monitor its licensed products is regarded as to have granted a naked license which may lead to complete loss or abandonment of the trademark rights of the licensor. To avoid that, every trade mark license agreement must have provisions for quality control that applies to the products licensed and also related packaging, marketing and advertising materials. Furthermore, the approval provision should have mechanisms workable by which the licensor can monitor the compliance of the licensee (para 10).

(B)- Infringement quality control (bare license UK, naked license US)

Trademarks are any symbols, words, phrases, design or a combination of any that is used to distinguish products and services of one person or organization from another (Shemtov 3). The key term for any of the marks to term as trademarks is that they have to be distinguishable. Trademarks preserve not only the reputation of a product or service but also that of a producer. Trademarks are required to be registered for one to acquire exclusive rights to the symbols, designs, or a combination of these to distinguish services or products. A trademark right is not granted anyhow, one has to go through some tests before registration (Oxbridge 1). For a trademark to be registered it must fulfill a certain criteria. The mark must be used to distinguish products or services from those of others. The marks must also not be similar to any mark that has already been registered or is pending registration. The name of the mark must also not be similar to any registered name.

However, trademarks rights need not be necessarily registered since the right itself are acquired using the trademark, which designates the source of origin of the goods or services. Organizations or persons who own unregistered trademarks can prevent a third party from using their trademark if they can establish that the third party is passing off services or goods as those of the trademark owner. The trademark license has several key terms such identification of owners or parties, recitals, the license grant, compensation and obligations of parties (Dolan 2).

The license should identify the parties to the agreement and the owners of the trademark. The agreement should therefore be between the party who has the right to grant the license and the party that will exercise the license. The addresses and contacts information of each party can be included. The legal names of each party should be used in the license since its provisions will bind only party to the contract (Bloomberg Law 1).

The second term is the recital, which gives information about the parties and their relationship up to the contracting time. Recitals are helpful in explaining to the audience the context of the license. It should therefore, be consistent with the provision of the main agreement (NOLO 1). The third term is the license grant, which is the most important part of the license it usually sets out the scope and rights granted in the license together with the limitations of those rights. The fourth term is the obligations of the parties’ clause (Shemtov 1). As the name suggest this term explains the obligation of each party to the license in detail. Definition is another term of a license; it is usually referred to as the dictionary of the agreement. It explains the main terms used in the agreement giving their meanings in detail. Definition is essential for the simplification of drafting (Oxbridge 5). In addition, it can be used to limit the scope of the license setting out rights and obligations of the parties.

(C)- discuss pros and cons of exclusive and non-exclusive licensing

In exclusive licensing, the licensor agrees not to grant other licenses with similar rights within the scope of the field covered by the exclusive license. The main advantage of exclusive licensing is that it limits competition (Schmitz 112). Another is that the owner of the license exercises creative control over it. There is also the retaining of greater returns for royalties. The main disadvantage is that it is difficult to control this type of licensing. On the other hand, non-exclusive licensing is where the owner of a trademark reserves the right to grant license of the technology or mark to third parties and for his personal use (Werra 27). The main advantage is that the owner can enjoy the right to use the mark or technology. The second is that the owner can still license the mark and continue receiving royalties for the same. The main advantage is that the owner has limited possibility of controlling the mark especially after licensing.

Naked licensing occurs when the licensor does not exercise enough quality control over a trademark licensee use of the licensed trademark (Dolan 1). When a trademark is naked, there is a very high likelihood of the court declaring it as trademark abandoned and therefore not enforceable. To avoid this, companies and organization need to make sure they have a well-written agreement with quality control provisions. The provisions should place control of the mark in the hands of the licensor and permit him or her to monitor quality through inspections and agreed supervisory channels. The licensor should be allowed to terminate the licensee if it fails to meet the quality standards or if the licensee or obstructs quality control inspections (Bloomberg Law 1).

Bare license in property law means that another person has acquired permission to enter another person’s property for his or her benefit. Therefore, in trademarks and intellectual property law a bare license is said to be in existence if a person uses the property of another with express or implied permission from the owner. It is the license to use copyrighted material without conferring exclusive right (NOLO 1).

Question 2

2 (a) the question has been answered in question 1 (a)

Question 2 (a)

Issue

This case of Ben Vs. Agbio Plc was over a sublicencing dispute where the claimant was Ben and the defendant was Agbio Plc.Ben Ransome registered ‘Brensome’ as a Community trademark (CTM) for agricultural products in Class 31 of the Nice Agreement. This made Ben a licensee in the case study. In January 2009 Ben and Agbio entered into a licensing agreement providing that Agbio could use the CTM ‘Bensome’ registered to Ben, 5 years as a distinctive mark for the genetically modified potato. This implies that Ben sub-licensed his trade mark license to Agbio. The agreement did not give Ben an express contractual right to inspect or supervise Agbio’s operations. This implies that the sublicense agreement between Ben and Agbio was a naked license.

Rule

A sub-licence is a contract or licence granted to a third for a specified uses or rights of a product, logo, name, and brand among others. A trademark licensor according to Perlman, has a duty of controlling the goods and services quality offered by a licensee under the trademark (83). A trade mark license is considered “naked licence” if it does not have any provisions for quality control of if there is no exercise of quality control. According to Shemtov, a naked licencing may lead to many possible effects: a break in the continuous use, abandonment of the trademarks rights, finding the licence as void or stopping of the licensor from challenging the uncontrolled use by the licensee (45).

Application/Analysis

In the case scenario, the licensor is the registrar, the licensee is Ben and the sun-licensee is Agbio. The registrar as the licensor should perform quality control of the goods and services of licensee, which in this scenario is Ben. Schmitz asserted that under the agreement, the licensee cannot their responsibilities without the licensors consent (44). Therefore, in this case, the licensor was responsible for quality checks of the goods and services offered by both Ben and Agbio. It is stated that Ben did not do quality checks for Agbio’’s products and services because the contract stated that way, and also because Ben was not the licensor. However, it is not stated whether the Licensor performed the quality control of the products of Agbio.

Conclusion

From the legal arguments and tussle between Ben and Agbio, the following are the possible outcome of Ben’s legal action:

  1. The naked or uncontrolled licencing may result in cease of function of a trademark as a symbol of controlled source and quality source. Furthermore, where the licensor fails to perform quality control adequately over the licence, the court may find that the owner of the trademark has abandoned his or her trademark, which in this case, the court would stop the owner from asserting rights over the trademark. It is of great importance to note that the owner of a trademark may lose its rights just through its inactions or action and the owners’ intention is not relevant directly (Oxbridge 1). Therefore, in this scenario, if the licensor or Ben did not exercise quality control over the products Agbio commercialised, then Ben would be estopped from asserting rights over the trademark
  2. While is it is very important to have the formal agreement contained in a licence agreement about control of quality, it may not be necessary so long as there are provisional clauses indicating that the public will not be deceived. This implies that the licence will not be considered a naked licence, provided that the licensor relies on and is familiar with the individual efforts of the licensee to control quality (Dolan 1). From the case scenario, it is not indicated that Agbio went against their licence agreement or there was a dispute between Agbio and Ben regarding breach of contract. This can be assumed that Ben relied on the individual efforts of Agbio for quality control since Ben was not given express contractual right to inspect or supervise Agbio’s operations. Moreover, from the case described, there is insufficient evidence to establish whether there was quality control in place since the agreement was silent on the matter. Moreover, it is significant to understand that control of quality does not necessarily imply that the goods and service licensed must of high quality, but just of equal quality whether it is low, middle or high. The point here is that the consumers are to assume that the quality and nature of services and goods sold under the ‘Brensome’ trademark at all outlets licensed will be predictable and consistent. Moreover, given the nature of products in the case (genetically modified potatoes), it is reasonable to assume and expect that Ben ensured quality of his products before releasing them to the market through Agbio for commercialization.

Question 3

3 (a) the question has been answered in question 1 (a)

3 (b) the question is similar and has been exhaustively been answered in 2 (b)

Question on controlling the exploitation of personality rights:
Q1- discuss critacally Irvine v Talksport case in that relation. (Passing off)

The parties in the case of the case of Irvine v Talksport was Irvine who was the claimant and Talksport who was the defendant. Passing off according to Owen, is a common law tort that can be applied in enforcing trademark rights that are not registered (22). The law of Passing off protects a trader’s goodwill from misrepresentation. Moreover, it prevents one trader from false misrepresenting his services and goods as being services and goods of another trader. Similarly, it prevents a trade from showing out his or her products and services as having a connection or association when this is false (Hertzog 128).

In the case of Irvine v Talksport, the defendants in the case ran a radio station referred to as Talksport, formerly referred to as Talk Radio. The company which did marketing for them sent out several promotional materials to many people who are responsible for advertisement placement. Amon the materials sent was a brochure which featured a popular race driver on its cover picture (UCC 1). The right to using the picture on the promotional materials had been obtained legally, but the company which performed the marketing had edited the picture by replacing the mobile phone which the claimant held in his hands and replaced it with a radio written “Talk Radio.” According to the claimant in the case, it was a passing off since the market understood that he had endorsed Talk Radio. In his ruling, the judge held that the court noticed the judicial fact that it was very common for the celebrities or the famous individuals to exploit their images and names by a way of endorsement. Consequently, the judge held that the claimant had a good will or a substantial reputation and the defendants created a false message to the public hence were liable for the damages (para 6).

In the case of Irvine v Talksport, it is evident that the doctored image of the claimant clearly showed a false message that he had endorsed the radio station of the defendant. The action of the defendant of falsely producing a wrong message which the market understood to mean that the defendants goods and services have been recommended or endorsed by the claimant, made the claimant succeed in passing off (para 10).


Q2- discuss critically Fenty v Topshop CA 2015 case. Include in the answer the following: 


a) Statutory provision 

The statutory provision in the Fenty v Topshop CA 2015 case is law of passing off. This provision is founded on a fundamental principle that a person show their services ad goods as those of another person. The action from this provision protects the reputation and goodwill of the plaintiff from any damage that arises from misrepresentation by the defendant (Wadlow 55).

b) Elements of action

Rihanna, who is one of the recording artists that are popular globally complained in court that Top shop, a fashion retailer that is well known, selling sleeveless t-shirts that features her photograph that was taken from a video shoot for her album called Talk That Talk. The copyright of the photograph in question was owned by the photographer and has licenced for use by Topshop. According to Rihanna, the selling of the t-shirts with her photograph infringed her rights and amounted to passing off as many people purchasing them would think that she has licenced and endorsed it when in reality she has not. Furthermore, she argued that customers would purchase these t-shirts since they liked the image and product for their own qualities. Furthermore, there was nothing labelled or written on the t-shirt to indicate that it was an item from Topshop and therefore the general public would not think that it was their merchandise. Rihanna maintained that the t-shirt was a fashion led garment of high quality that was totally different from the standard merchandise for pop star.


c) How the judges apply the tort of passing off to this case?

Rihanna was a famous pop star globally who ran very large endorsements and merchandising. Additionally, she was regarded by many people as a style icon mostly young females with an age range of 13-30 years. These group of people were interested in what they believe to Rihanna’s view about fashion and style. Therefore, of Rihanna was seen to approve or wear of a clothing item, in the minds of these people, this was an endorsement. In addition, the fact that the design led garment was not a simple plain t-shirt of low quality, in the purchases mind would not be understood ruling out the idea that it was an item of Rihanna’s authorised merchandise or a product endorsed by Rihanna.

The real issue in this case was misrepresentation. In applying the tort of passing off to this case, the judge considered different aspects of specific circumstances of then case such as:

  1. The absence of comments on Topshop’s website that indicate that anybody who had purchased the t-shirt believing that Rihanna had authorised it and lack of other supporting evidence were import and relevant points in favour of Topshop but not entirely a determiner
  2. Topshop in its defence made considerable efforts in emphasising the connections in the mind of the public between famous stylish people and their store such as Rihanna. An example of this connection was their shopping competition which they organised and held in in 2010 where they offered the entrants the opportunity of winning personal appointment for shopping with Rihanna at Oxford Circus, their flagship store.
  3. Top shop also tweeted a week before launching of the sale of the t-shirt the fact that Rihanna was planning to visit their store. The judge in the case rejected the submissions of Topshop that this was just simply gossip and chatter. In particular, considering that the nature and age of the relevant customers, the social media and internet were an important part in both Rihanna’s and Topshop’s business. The social media and internet constitutes some of the fundamental channels in which Topshop and Rihanna communicated with their customers and fans. Topshop mentioned Rihanna because they though doing so would increase the sale of their products
  4. The mere fact that there was nothing to show authorisation by artist on the neck label or swing tag firmly pointed against authorisation was not sufficient enough to replace the impression that the t-shirt was authorised. Despite the fact that a good number of buyers would purchase the garment without asking the question about authorisation at all, a large percentage of the people considering the garment would be made to think that the t-shirt was authorised by Rihanna. The fans of Rihanna would recognise the particular photograph of her and relate it to her recent album/. For these people, the fact that it was licenced by the artist would be the motivating factor for then to buy it. Some would purchase the garment because of the thinking that Rihanna had approved it, while other because of the perceived authorisation value itself. In all these instances,, the purchasers would have been deceived

As the judge found, if a large percent of buyers were likely to be deceived into purchasing the garment because of the false presentation that it had been authorised by Rihanna, then definitely it would be damaging to the goodwill of Rihanna. This would also amount to loose of sales in the merchandising business of Rihanna and this represents loss of control of the reputation f Rihanna in the world of fashion. From the court case, it was evident that the tort of passing off was the only ground in law for Rihanna to object the sale of the t-shirts that bore her image


d) How Rihanna was successful for the unlawful image in the case?

Rihanna was successful for unlawful image in the case because she argued from the tort of passing off point of view. Topshop counter argument in court was that Rihanna was claiming an image right in addition to seeking have a control of licensing of her likeness and name, something which English law did not recognise. The argument by Topshop could not be supported sufficiently in court unlike Rihanna who argued and supported her claim which satisfied the court. In his ruling, the judge made it clear that the Fenty v Topshop CA 2015 case was not concerned with the image rights. Furthermore, he made emphasis that currently in England there is no such thing as a general right by anyone else or for a famous person to control their image reproduction


e) How to know if there is a compensation?

A claimant in an infringement court case who has succeeded is eligible to “damages as of right.” If it appears that the claimant have suffered above the nominal damage, then generally the claimant will be entitled to “inquiry as to damage.” Hertzog explained that inquiry as to damage is a separate legal hearing and process with the sole purpose of ascertaining the extent of the losses of the claimant and to restore him or her to the position which he would have been had the infringement not been committed (72).


f) When passing off will be applicable? 

Passing off will be applicable in in enforcing trademark rights that are not registered. The law of Passing off protects a trader’s goodwill from misrepresentation. Moreover, it prevents one trader from false misrepresenting his services and goods as being services and goods of another trader. Similarly, it prevents a trade from showing out his or her products and services as having a connection or association when this is false (Owen 37). In the case of Rihanna, Topshop misrepresented his image as having endorsed their t-shirt, of which was false and deceiving to the public, hence the tot of passing off was applied.

Q3- “Recent English case law has firmly established the celebrities and their licensees enjoy an unlimited right in controlling the commercial exploitation of their personality aspects.” Discuss the statement with reference to relevant case law. 


Celebrities in the world like Tiger woods, Marha Steward Paul Newman among others in their public persona enjoy powerful rights. The celebrities’ identity rights include their voices, faces, names and any other distinguishing characteristic. The question is who should be reaping the benefits of the images of celebrities and how allocation of rights should be done. Some recent tendencies in the law such as the recent English case law have created more expansive identity interest protection (Dreyfuss 130). The celebrities are amusing, communicate status and set moods. They are a representation of how their utilizers perceive themselves culturally and politically (Dreyfuss 124). Therefore, the paper believe that the law, must balance the interest of the celebrities in controlling their images with the interest of the public in using the images as a communication means. Countries in the common law like United Kingdom are beginning to embrace the right of protecting personas. For instance, until recently, the plaintiffs in United Kingdom have not been successful in persuading the courts that commercial exploitation of a personality that is not authorized can fall within the tort of passing off (Seville 4). The situation in United Kingdom is of particular interest in this paper since it represents an example of a developed country that is resisting inevitable creation of expansive and new intellectual property rights. Another question that need to be asked is whether lack of specific protection for the personas of the celebrities an anachronism in the world today given the huge economic stakes in mechanization of famous identities. The markets of celebrities go beyond the national boundaries and this has resulted to the steps towards having an international norm on publicity rights issue (Dinwoodie 472). This paper will discuss whether the Recent English case law has firmly established the celebrities and their licensees to enjoy an unlimited right in controlling the commercial exploitation of their personality aspects.

Publicity rights protection in United Kingdom

  1. Privacy and publicity rights

Under publicity or privacy rights, the protection of the personas of the celebrities has not achieved any international norm status. There is also no global standard for protection of publicity rights (Reiter 680). In protecting the rights of publicity and identity, the British law has taken a path that is radical. United Kingdom has no common or statutory law tort, for privacy rights, in cases of privacy invasion. Brazell pointed out that privacy right in Unite Kingdom were not recognized at all until the incorporation into the British law in 1998, the European convention of human rights (407).

On the other hand, Brazell argued that British law does not recognize anything such as publicity rights (408). Despite the fact that publicity rights in united kingdom has not been given any common law or statutory recognition, the British law has protected ones identity aspects and its commercial value in a fragmented fashion through passing off and traditional trademark law.

  1. The British law and the age of mechanization: the case of Eddie Irvine

In United Kingdom, the law of passing off and trademark law has been the preferred method of identity interest protection. According to Brazell, for many years, the significance of the concept of passing off was limited by the British courts, which needed the defendant and the plaintiff to be engaged in a common activity field (Brazell 409). UCC Stated that the breakthrough case occurred in 2002 under the British law of Irvine vs Talksport Ltd. the case of Irvine vs Talksport Ltd, was discussed earlier in one section of the paper

  1. The European convention on Human rights (ECHR) and privacy rights

Through the European rights convention, the privacy rights crept into the British law privacy rights in a likeness of a person have increasingly been recognized in United Kingdom and at the European level. According to Campbell V. MGN Ltd, the key legal justification for the change was the ECHR Article 8(1), which provides the right of respecting the private and family life of a person (459). The courts in united kingdom which for a very long time has refused recognizing any right of privacy in common law, have depended on this provision to apply to the celebrities the power of control how and when the media may report or publish their image on their private lives (para 7).

Dinwoodie indicated that these decisions are not suggesting that ECHR needs member states to recognize rights of publicity (481). It is important to note that ECHR has been very strong in pushing for the concept of privacy for the celebrities and the ordinary people. Moreover, it now provides a basis in which the British courts may extend civil liberty standard principles eventually to encompass the rights of publicity. The people or organizations who use personalities or celebrities in their media adverting obtain consent from the involved estates or people.

Breach of confidence actions have also been extended to protect the commercial interest of the celebrities in private information, and these also includes private occasion photographs, by treating it similar to a trade secret (Douglas v. Hello! Ltd 914). Catherine Zeta-Jones and Michael Douglas got married under serious security precautions (Douglas v. Hello! Ltd 819). Zeta-Jones and Douglas granted exclusive rights to OK magazine to publish their taken wedding photographs by their photographer and which has been approved by them at a price of £1 million after an unsuccessful bid by Hello Magazine for the same rights (Douglas v. Hello! Ltd 890). A paparazzo photographer infiltrated their wedding who tool photos that were unauthorized surreptitiously, of which six of them were published by Hello Magazine (Douglas v. Hello! Ltd 892). The couple sued the magazine and the judgement was held in their favor. The court held that it was a misuse of private information by publishing the photographs and this justified the distress damages. Moreover, the court held that it was a misuse of commercial information that was confidential and this justified the damages for commercial interest injury (Douglas v. Hello! Ltd 916). Furthermore, the judgement favoring OK magazine was reversed since under the terms of the contract, OK had not right apart from the exclusive license of polishing the photographs approved. (Douglas v. Hello! Ltd 918).

According to Reiter, English courts have in several instanced found confidence breaching where the information published is regarded as confidential (Reiter 690). This is either if the party disclosing the information had knowledge of the information confidentiality or was based on the person’s reasonable expectations who rights were violated. Under the rationale of breach of confidence, the House of Lords confirmed that Naomi Campbell, a model and celebrity well known could get damages from a newspaper which published her photographs leaving a center for drug rehabilitation. The court found out that the photographs taken of Naomi Campbell outside a center for drug rehabilitation and the publisher should have known or knew that Campbell the model had some expectation that the information about her addiction to drugs and treatment would remain private despite the fact that she was on a public street (Campbell V. MGN Ltd 460).

False endorsement action as an international norm

The images of celebrities go beyond their national boundaries. Famous soccer players, basketball stars and golfers have international recognition. Moving towards an international norm which will protect the developed celebrity’s goodwill will be a big achievement for transnational commerce. The benefits of an international norm to protect rights of a personality based on false endorsement would very much. The protection of the celebrities would be based on the commercial uses of a persona of a celebrity to mislead the public to believe that they have endorsed the product. According to Brazell, false endorsement action serves both the purposed of consumer protection against deception while safeguarding the commercial value and goodwill that the celebrities have built in their identities (410).

In conclusion, United Kingdom is at crossroads in the identity rights protection but the case law trajectory is trending clearly towards greater rights. It is still a matter to time to tell whether privacy laws recent developments in United Kingdom will mutate the right of publicity. Furthermore, in United Kingdom, the trend towards publicity rights recognition is already taking place through expansive privacy based notions on a breach of confidence theory. The British law, with the case of Irvine vs Talksport Ltd, has adopted the false endorsement action that were derived from the passing off principles. The false endorsement action could be the foundation for international norm to protect the celebrity identity rights

Questions on patent licensing:
Question 1 (A)

The kinds of clauses that should be included in the patent licensing agreement as means of protecting the University’s intellectual property interests include the following:

  1. Identification of the parities clauses

This clauses defines the agreement made between the party who has the right of granting the license and the other party who will exercise the license. This clause includes the identifying information of both parties that are involved in the transaction. These include the name of the company if the licensor /licensee are an organization and their registered address. However, if they are individuals then their names with their residential address should be provided (n.a 34).

  1. Recital clause

This clause explains the background and context of the license in addition to helping in agreement interpretation. It is in the recital clause that the idea or purpose behind the transaction is elaborated. All the details must be included, with all the sequence that led to the transaction in clear terms (n.a 76).

  1. Definition clause

The clause acts as the agreements dictionary. Critical terms influencing the transaction should be clearly defined. It is important to take note that if terms or words are defined in an agreement, the meaning defined will be used over other common meanings of terms or word. Materials or products licensed should be clearly defined since the whole transaction is based on them (Lennon 24).

  1. Grant clause

This clause sets out the extent and scope of the granted rights to the licensee, and the limitations to the granted rights. It is significant to define clearly what the license is supposed to do y using proper and clear grant language. Similarly, the grant clause may also explain certain restrictions on a license. For example, sub licensing restriction, modification of the fundamental character in the work licensed amongst others (n.a 37).

  1. Intellectual property (IP) rights clause

This forms an integral part in patent licensee. The licensor should retain the IP ownership being granted through the license. Moreover, the clause should state that the agreement between the parties cannot be construed as a transfer or assignment of IP ownership (n.a 45).

  1. Consideration clause

This clause outlines the consideration or the compensation amount owed to the licensor. The clause also outlines the frequency and timing of payment among others. The details of the mode of payment/payment among others can be either be explained under the consideration clause or even be given as an agreement schedule (Lennon 67).

  1. Obligation of the parties clause

The clause states particular obligations that must be met or fulfilled during the agreement term and even beyond the termination or expiry of the agreement. The obligations of parties should be unambiguous and clear. These obligations may vary from negative obligations like the duty of not competing with the licensor, to positive obligations such as duty of reporting any infringement (n.a 51).

  1. Termination and term clause

Any agreement license should have well defined provisions and terms that outline when the parties may terminate the agreement and the reasons for termination. Moreover, if termination of an agreement is done before the terms completion, the prior termination consequences should also be laid down clearly (Lennon 78).

Question 1 (B)

The likelihood of Triton successfully contesting ownership of the later patent is very high.in the contract signed between triton and Ida Innovation, the agreement stated that Ida Innovation assigned the patent for the technology and “all improvements” to Triton Limited for the further therapeutic development of the invention. Therefore, given that the scientists worked for Cranford University and Ida Innovation being the university’s transfer company, owned the patent for the technology implies that they had the patent right of the improved technology.

Q3- Discuss improvements and who owns improvements in patent licensing.
Basic patent refers to a pioneering patent type or any prior patent. On the other hand, improvement patent is a patent adding to the basic patent technology (Silverman 1). Broadly explained, improvement can be elaborated as something modifying protons of basic patent technology other than merely offering an alternate approach to achieve similar result.

When making considerations of an improvement patentability, the whole basic patent disclosure is reviewed so as to ascertain whether there are technical differences that are meaningful between the basic patent disclosure and the improvement. According to Silverman, if there exists technical differences, then the improvement is patentable since it has requisite statutory novelty (para 10). However, if the difference s between the basic patent disclosure and the improvement such that a skilled individual in the art would find the differences so obvious, then the improvement is not patentable

Q4- TTBER and impact of such a license.

Technology Transfer Block Exemption Regulation (TTBER) provide the fundamental framework of competition law for licensing agreements that relate to technology (Barazza 45). The impact of TTBER license varies since it no longer protects the common licensing provisions such as:

  1. Exclusive obligations of grant-back concerning some licensee improvements
  2. Termination rights of the licensor if a non-exclusive license challenges the licensed patents validity
  3. Some restrictions on passive sales on licenses (Arnold & Porter 1)

However, TTBER also has the following impacts on the areas it covers such as

  1. Technology rights
  2. Licensing agreements of two parties contracting
  3. Production activity relevance by the licensee. That is production of products in the contract by the licensee o the basis of the technology licensed (Curley 54)
  4. Market share where the combined market share of the parties is not exceeding 20% where the parties are competitors. Similarly, the TTBER applies where the individual market shares of the parties is not exceeding 30% and the parties are not competitors
  5. Hardcore restrictions (Arnold & Porter 1).

Q5- possibility of new patent application

There is no possibility of new patent application. Ida Innovation owns the patent and has registered it as the inventive entity as much as the investor s were the scientists at the university. The patent laws allows the inventive entity to be named in the basic patent, and the basic patent is citable against an improvement during application for patent (Silverman 1). The statute also requires that any patent application that is geared towards improvement is made one year after issuance of the basic patent, the basic patent will be used as a cross reference or prior art reference that when evaluating patentability, must be considered (para 9). Therefore, any improvements made by the scientists or triton Limited will be an improvement but not new patents since the basic patent is registered with different incentive entity, which is Ida Innovation

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