The structure you will follow is ILAC.
Issue, Law, Apply and conclusion.
This is a patchwork assessment,
Patch 1 is a problem question for which you will need to write an advice letter to your question on the copyright issue and on the copyright issue in the scenario (Question 1(a)) and on the patent issue (Question 1(b)). The word limit for the whole of Patch 1 (answers to Questions 1(a) and Question 1(b) together) is 2000 words.
Patch 2 is a trade mark search exercise of up to (word limit:1000 words) which will involve you searching the UK Trade Marks Database at ipo.gov.uk and applying UK Trade Mark Law to the results.
Refer to Appendix 1 and 2 for the assessment brief for each of the patches.
You must include a word count
You must also keep also copy of your work.
The penalties for exceeding the word limit are as follows:
• – There will be no penalty for exceeding the word limit by no more than 10%.
• – Students who exceed the word limit by more than 10% will have their mark reduced by 10% of the mark.
It is essential to submit your work in word-processed form. You should check your work very carefully for spelling, punctuation and grammar.
Argument should be appropriately referenced and your work should include a full bibliography of texts, journals etc. referred to in your work. Your bibliography should state author, publisher and year of publication. Both your references and your bibliography must comply with the OSCOLA referencing system his list gives merely an indication of the works which you should consult in preparation for writing your essay. It is not exhaustive, and you should explore other sources and materials, e.g. by following up references to journals etc. given in these works and held in the journal collection in the library, either in paper form or on-line, and by using the case lists in your Contract Course Guide. Students should also consult on-line databases such as Westlaw to facilitate wider reading.
Students should consult the standard module recommended texts in the first instance:
• Bainbridge, D. Intellectual Property, (2018, 10th Edition, Longman Pearson)
Your search for materials relevant for the assessment will also require you to make use of the journals database of either Westlaw or Lexis-Nexis, as you will be expected to consult journal articles as part of your research.
In addition, you will need to access the Trade Marks Database at www.ipo.gov.uk.
You should not restrict your reading to merely the set text. Make use of the relevant textbooks on the subject in the library to supplement your reading too.
Intended Learning Outcomes
On completion of this assessment you should be able to demonstrate the following module learning outcomes:
1. Demonstrate knowledge and the ability to critically assess the relationship between the common law and statutory rules protecting a person’s business name and trade mark, the law relating to copyright and its infringement, and the use of patent law to protect inventions, including the ability to critically evaluate the contentious issues such as those caused by new technology.
2. Identify and synthesis erelevantint ellectual property rules, and critically evaluate their application to a fact pattern, along with the ability to evaluate appropriate remedies available for breach or infringement of any of the above-mentioned rules.
3. Critically assess the developing nature of this area of law, including critical evaluation of trends and developments in it.
4. Demonstrate the ability to undertake independent research in the area, involving the use of information independently located in patents and trademark law databases selected by the student, case law and statute law, evaluation of paper-based and electronic sources, and produce word-processed coursework using these skills.
The way in which these outcomes will be addressed is through the assessment criteria listed in the assessment question.
Marking guidelines/mark bands You will be expected to show:
• The appropriate essay form for your answer
• A clear understanding of what the question is asking you
to do and close attention to the requirements of the question
• Appropriate research in preparation for your answer
• Proper referencing and a full bibliography (the latter
should be on a separate but attached sheet)
• The proficient use of legal and other information and
materials
• A structured discussion of the relevant issues
• Skills of analysis, synthesis and evaluation of relevant
legal rules, doctrine, policy, principles and concepts
• An effective and precise use of written English.
In particular,
A first-class answer is likely to:
• Be coherent, well-expressed and well-structured
• Be free of substantial error
• Demonstrate a high level of critical analysis, synthesis
and evaluation and show comparative and analytical
discussion
• Display a considerable degree of creative thought
• Demonstrate wide research
• Display an excellent standard of presentation
Appendix 1 Patch 1
Morgan is a pigment scientist who works for W B Gall & Co (WBG), a company that manufactures artists’ pigments.
He is also a talented amateur artist and hosts his own art-related MeTube channel. As part of his job, his employers encourage him to experiment and to come up with new pigments.
In pursuing his ‘out of hours’ activity of creating art, he was frustrated that he could not find a black pigment that was the kind of perfect deep black he was looking for. He found that most ‘black’ pigments he used faded to very dark grey and he spent a lot of his working hours trying to come up with a ‘perfect’ black pigment.
One evening, having stayed at work late to continue with his experiments with black pigments, he realised he had ‘cracked’ it, after experiment with a combination of existing pigments and chemical compounds.
The pigment he created dried to a perfect intense black that absorbed all light rather than reflecting any.
Morgan informed the CEO of WBG, Enzo and demonstrated it to him. Enzo was very excited about the possibility of putting the new pigment into production and marketing it to customers.
With the permission of his employers, Morgan decided to stage a performance involving him creating an artwork in front of an invited audience, prominently featuring his use of his new black pigment. On arriving for the performance, invited guests were required to hand in their mobile phones as Morgan would be videoing the performance himself, would be making the video available via his MeTube channel and didn’t want unauthorised recordings of his performance to be shared or to appear on-line.
Unknown to Morgan, one guest, Stephanie, had smuggled a second phone into the performance and used it to video his performance. Her video was quite poor quality given that she had to conceal the fact she was videoing, to avoid detection.
She adds special effects to the video intended to make both Morgan and his performance look ridiculous and posts it to her own MeTube channel having added her own commentary, poking further fun at Morgan and his performance.
Soon afterwards, WBG tells Morgan that it intends to file an application to register a patent in respect of the combination of pigments and chemical compounds used to create the new black pigment.
A few days later, Enzo (CEO of RBG) and Morgan both receive identical letters from solicitors representing Anisha Mansoor, a well know professional artist, explaining that they have heard that WBG have developed and intend to patent a perfect black pigment and that their client, Anisha, has an exclusive licence from Digbeth Nanotechnologies (DN) to use in her art a perfect black pigment that they (DN) have created, called Xantablack. Anisha’s lawyers go on to say that if WBG go ahead with their application to patent their own/Morgan’s new black pigment, their client will formally object to the patent being granted on the grounds that a perfect black pigment that absorbs all light and doesn’t reflect any, Xantablack, already exists and has been patented.
Also, a dispute has arisen between WBG and Morgan ownership of the patent. Morgan feels that he invented the pigment, so he should own it, whereas WBG are arguing that they will own the patent, if it’s granted.
Q.1(a) Advise Morgan regarding the copyright issues:-
1. (i) Is/are his performance in which he created a work of art using his new black pigment, the MeTube video of that performance and/or the piece of art created in that video a copyright work/copyright works?
2. (ii) If Morgan’s performance of him creating the artwork or the artwork itself is/are a copyright work(s) , does the video recording made by Stephanie and/or her edited video as it appears on MeTube amount to an infringement of that copyright, and if it does, what would be the appropriate remedy?
3. (iii) If Morgan’s performance and/or his (as opposed to Stephanie’s) MeTube video of that performance and/or the piece of art created by Morgan during his performance are copyright works, who owns the copyright in each?
Q.1(b) Advise WBG regarding the patent issues:
1. (i) Is the process for creating the new pigment patentable, and what impact, if any, on its patentability does either of the following have?
• the publication on MeTube of Stephanie’s video, and
• the claim made by Anisha Mansoor.
2. (ii) If the new black pigment is patentable, who owns the patent, Morgan or RBG?
Your legal advice (answers to Questions 1(a) and (b) together) must be no longer than 2000 words.
Appendix 2
Patch 2 Patch 2: Trade Marks Searching and Registering
This will take the form of a report based upon a search of the trade marks database. You will be assessed on the following criteria:
• Demonstrate the practical skill of formulating a strategy for searching the trade marks database, then executing it
• Identification of the rules governing registration of trade marks, including relative and absolute grounds for refusal of a mark
• Application of these rules to a factual scenario, in order to resolve a practical problem
• The ability to draft an appropriate report advising the client in the scenario regarding the potential registration of their trade mark
Remember that in order to complete this exercise, you will have to bear in mind the rules regarding trade marks
The Scenario
You are a trainee in a law firm specialising in intellectual property law. Your senior asks you to report on a request from two clients regarding a trade mark that they wish to register for their business. You will need to examine their proposed trade mark, and provide a recommendation to them regarding whether you think his trade mark would be registrable or not. In order to do this, you will need to address several points (listed below) in a report no longer than 1000 words in length.
The Mark
Your clients wish to register this trade mark for a subscription service they are offering enabling subscribers to create an ‘a la carte’ television schedule for themselves by choosing their favourite shows and programmes originally created and broadcast by a variety of television companies. (Do not worry about any possible breach of copyright by your clients. You can assume they have licence arrangements in place with the original broadcasters of these shows/programmes).
You will be required to:
a. examine the rules regarding absolute grounds for refusal, and decide whether any of them are applicable here
b. decide which class or classes in the trade marks register would be most applicable to your client’s trade mark
c. conduct a thorough search of the database to look for the possibilities of conflicting
trade marks account the i.
ii.
iii.
iv.
already registered. In order to do this, ensure that you have taken into following:
any trade marks in the same class as the one you wish to register this trade mark in (see http://www.ipo.gov.uk/types/tm/t-applying/t- class.htm for the list of classes)
any trade marks in similar classes to the one you wish to register this trade mark in (see http://www.ipo.gov.uk/t-class-cross-list.htm for a list of classes the IPO consider to be ‘similar’)
any trade marks which use a similar device (picture, design, etc) to yours but in other classes
the names of any competing companies in the same class as the one you are wishing to register in
d. if there is a
grounds for refusal is causing the problem, e.g.
conflict, explain what the problem is, and which part of the relative
i. Identical mark, identical goods
ii. Identical mark, similar goods, likelihood of confusion
iii. Similar mark, identical/similar goods, likelihood of confusion
iv. Identical/similar mark, with a reputation
All of the above should be considered along with an explanation of relevant law
Writing your report
You will need to discuss your findings from the above points in your report. Write a report, no longer than 1000 words, which discusses whether this trade mark is registrable or not. Remember that your focus should be upon whether there are any problems with possible registration of this as a trade mark, and therefore your focus is UK TRADE MARK LAW.
As part of this, you will need to:
1. Identify any possible problems with the absolute grounds for refusal in the Trade Marks Act, making reference to relevant case law.
2. Discuss these archyou conductedofthetrademarksdatabase,bearinginmindthe advice in section c) above.
3. Identify any possible conflicts with other trade marks, and why you believe there is a conflict, in line with the categories in d) above. You must support your discussion with reference to relevant case law.
4. Provide clear advice to your client regarding the registrability of their trade mark.
The structure you will follow is ILAC.
Issue, Law, Apply and conclusion.