Reforms promised in the new unjustified threats bill are the culmination of hard work by the Law Society’s intellectual property committee, its chair writes.
Last week’s announcement in the Queen’s speech of the Intellectual Property (Unjustified Threats) Bill was the culmination of a campaign initiated by the Law Society’s intellectual property committee (IPLC) that began sometime in 2006.
The exact date is lost in the mists of time, but I have managed to find a committee paper on this subject dated February 2006.
As that paper noted: ‘Today we have an illogical and inconsistent assortment of threats actions relating to various IP rights; they run counter to the overarching encouragement [for example in the Civil Procedure Rules] to communicate and settle rather than precipitately issue legal proceeding and they leave clients and solicitors in jeopardy of being sued for making actionable threats, simply by reason of the sending of what would otherwise be an uncontroversial letter before action.’
The intellectual property (IP) threats provisions are complex and technical, but in essence they provide a legal remedy to someone who is threatened with IP litigation allowing them to sue for ‘unjustified threats’.
How you view these provisions may depend on what question is asked. If you are asked, ‘should we have laws that stop aggressive IP owners from using spurious IP claims to bully smaller businesses and consumers into buying their products over someone else’s?’, the answer may be ‘yes’.
If, on the other hand, you are asked ‘should struggling creative artists, whose IP is being misused by major companies without acknowledgement or compensation, be inhibited from asserting their IP rights by satellite litigation that focuses on their precise choice of words in correspondence?’, then the answer may be ‘no’.
English IP owners (or their lawyers) who know about these laws have typically drafted ‘cease and desist’ letters (to use an American term) so blandly worded they avoid being accused of making threats. Unless the recipient is also in the know, and can interpret the code, they are left none the wiser by the letter.
Some lawyers have taken the view even a bland letter is too risky – that the only safe course of action is to issue proceedings before communicating with the infringer; once proceedings are started, the threats provisions no longer apply. These strategies run completely against the spirit of the English CPRs, where clear and open communication is required.
Another strategy is to focus, in the letter, on types of IP not covered by the threats provisions. For example, a product may infringe both copyright and design rights. A so-called ‘clever’ solicitor might try to draft a letter threatening (only) to sue for copyright infringement - not covered by the threats provisions - and avoid mentioning design rights, which are.
In other words, the threats provisions promote some absurd behaviour by IP owners and their specialist lawyers.
The IP owner who cannot afford specialist UK IP lawyers, and who communicates in clear terms with an alleged infringer, is at great risk of being sued for making threats.
We persisted, and kept arguing the case for change
One of the leading cases on this subject in recent years concerned correspondence from a Spanish law firm that might not have been expected to know the quirks of English and Welsh law in this area, it being out of line with most other jurisdictions on this subject.
As specialist IP practitioners, our committee realised this area of the law wasn’t working properly, and needed to be changed. But there were obstacles. First, the subject was very technical, and unlikely to get much political interest. Secondly, several IP judges were initially against change. The IP judges’ view is influential with legislators.
From a judge’s perspective, IP threats provisions might be thought useful as a curb on egregious behaviour by aggressive IP owners. But the judge only sees the cases that come before him or her, and not the large number of claims that are settled or which are not made at all, due to the dampening effect of the threats legislation. As practitioners at the coalface it was all too clear to us.
So, we didn’t get much traction for our ideas in the early years. But we persisted, and kept arguing the case for change, for example in our responses to government-sponsored reviews of the IP system, including the Gowers and Hargreaves reviews. Eventually the Law Commission decided to take up this issue, with our active encouragement.
In this new bill, the threats provisions are not to be abolished, but they are to be greatly improved, and made more consistent between IP types.
Sometimes, the law is changed through vigorous political activity. Our campaign illustrates a different approach: it is possible to achieve important, but very technical, changes to the law through patient committee work.
Mark Anderson is chair of the Law Society’s intellectual property committee