Announcing JIPLP Conference on the Present and Future of EU and UK Copyright

A preview of the
JIPLP copyright conference

The Journal of Intellectual Property Law & Practice (JIPLP), published by Oxford University Press, is thrilled to announce that it is organising a conference on the present and future of EU and UK copyright laws.

Generously hosted by Simmons & Simmons at its London offices, this event will be held on Monday, 16 January 2017 and bring together a stellar cast of speakers and copyright experts.

With keynote addresses by Professor Maciej Szpunar (Advocate General at the Court of Justice of the European Union) and Sir Richard Arnold (Judge of the High Court of England and Wales - Chancery Division), this event will be composed of two principal sessions devoted to discussing relevant developments at the EU and UK levels, respectively.

This is the programme:

13:50-14:20 - Registration

14:20-14:30 - Welcome (Simmons & Simmons + JIPLP)

14:30-15:30 - KEYNOTE: Prof Maciej Szpunar (Advocate General at the Court of Justice of the European Union)

15:30-16:30 - Panel Discussion: The present and future of EU Copyright (Moderator: Dr Eleonora Rosati (University of Southampton and JIPLP). Panellists: Mr Alberto Bellan (Hogan Lovells), Mr Pierre-Olivier Lesburgueres (IFRRO), Dr Cédric Manara (Google), Dr Sophie Stalla-Bourdillon (University of Southampton))

16:30-16:50 - Coffee Break

16:50-17:50 - KEYNOTE: Sir Richard Arnold (Judge of the High Court of England and Wales – Chancery Division)

17:50-18:50 - Panel Discussion: The present and future of UK Copyright (Moderator: Mr Darren Meale (Simmons & and IPEC Deputy District Judge). Panellists: Ms Charlotte May QC (8 New Square), Dr Nicholas Saunders (Brick Court Chambers), Mr Kiaron Whitehead (BPI)

18:50 - Conference ends and drinks

The event is FREE but registration is required. Places are limited, so hurry up and register here.

The official social media hashtag will be #jiplpc.

Editorial - The future of IP in higher education

In our October issue, I discussed some ideas on the future of IP teaching in higher education, advancing a number of proposals to improve the way in which intellectual property, broadly conceived, is taught to students in the UK and beyond. There are certainly many institutions, all around the world, that apply these principles and deliver first class IP education to their students. However, IP teaching does not always play a central role in higher education: sometimes it is confined within the boundaries of an optional, complex, module in law courses, or relegated to supplementary training offered to (and not always accepted by) research students, or unconvincingly marketed as a set of short "crash courses" for students enrolled on science or arts degrees. 

What is lacking, in such cases, is a vision, a perspective capable of keeping together IP education, creativity and innovation, The creation of spaces (not only in a physical sense) dedicated to learning goes hand in hand, as far as IP is concerned, with the creation of spaces to create and innovate: such spaces should ideally blend together. Following this idea, I suggest that IP teaching should be comprehensive and compulsory, as we should not separate the substance and form of IP protection (i.e. creativity and inventiveness from the legal frameworks employed for their protection). Further, I envision an inclusive and open-minded IP education that crosses the boundaries of faculties and calls for the participation of industry players, professionals and other external speakers. Finally, I discuss the necessity of providing students with an awareness of the broader significance of IP, promoting occasions for networking and sharing, in an international and comparative perspectives.

You are more than welcome to share your thoughts and experiences, as well as your own list of wishes for the future of IP in higher education, either as comments to this post, or via email.

The future of IP in higher education

Stefano Barazza
Email: stefbar@gmail.com

In 2012, the National Union of Students (NUS), together with the UK Intellectual Property Office and the Intellectual Property Awareness Network (IPAN), set out to evaluate the attitude of UK students towards intellectual property, with the aim of identifying new strategies for effective IP teaching in the higher education sector (see ‘Student attitudes towards intellectual property’ (2012), available at http://www.nus.org.uk/PageFiles/12238/IP%20report.pdf (last accessed 14 July 2016)). The study showed that over 80% of the students surveyed considered IP an important part of their curriculum, but portrayed a picture of IP teaching that prompted a widespread reflection, leading to the creation of new resources to streamline and standardise IP education. Successful examples of these initiatives include the UK IPO’s Cracking Ideas platform (http://crackingideas.com/), the IP Tutor online courses (http://crackingideas.com/keystage/Higher+Education), and the EPO/EUIPO’s IP Teaching Kit (http://www.epo.org/learning-events/materials/kit.html). 

The study identified a number of potentially critical areas. First, IP teaching seemed to focus on plagiarism (73%), followed at a great distance by copyright (35%), with trade mark (13%) and patent (12%) law aspects mostly limited to modules for law, business and engineering students. Second, there was evidence of a very low level of engagement with the wider IP community, as outside speakers were involved in only 5% of the IP modules. Third, IP teaching appeared to rely heavily on traditional teaching resources, with a significant lack of engagement with practical case studies (14%) and materials from professional or government bodies (6%); similarly, there was very limited reliance on external organisations for support on IP issues (e.g. only 5% of the students mentioned the IPO as a source of support). Finally, students advocated the tailoring of IP teaching to their academic studies, asking for a more in-depth coverage of IP issues. 

Four years later, the situation has apparently improved: the availability of high quality resources, as well as other initiatives (e.g. the StudentshIP Enterprise Awards in the UK), has increased IP awareness and set minimum requirements for IP education. However, under the surface, significant issues remain. The traditional approach to IP teaching, based on self-contained modules taught from a predominantly doctrinal and theoretical perspective, appears insufficient to meet the needs of future IP lawyers, authors, artists, scientists and people in business. In this perspective, we advance five recommendations to shift the focus of IP education from informing to involving. 

• IP education should be comprehensive and compulsory: it is necessary to recognise that both law and non-law students are likely to encounter IP issues at various stages of their future careers. IP teaching should not be limited to plagiarism; rather, it should include an overview of the entire spectrum of IP rights. For law students, a sound knowledge of intellectual property law appears essential in all fields of law (e.g. commercial, corporate, contract, employment law, etc.), and would justify the inclusion of an IP module within the core LLB curriculum.  

• IP modules should be cross-faculty: there is a strong need to strengthen a multifaceted understanding of IP, to help students contextualise the subject and understand how creativity shapes, and is in turn shaped by, intellectual property (for example, a mixed class of engineers, lawyers and musicians would promote a much richer understanding of IP from a variety of perspectives).  

• Professionals and outside speakers should play a key role in IP teaching: the contribution of external professionals is of fundamental importance to (i) bring the subject to life, by sharing their experience and case studies, (ii) show the interconnections between IP and other subjects, and (iii) prompt students (and lecturers) to confront the constantly changing legal framework, engaging with the most recent issues and cases. Professionals should include IP lawyers (readers should feel free to volunteer…), but also staff of cultural and scientific institutions, right holders, etc.  

• IP teaching should be context-aware: students should familiarise themselves with the significance of IP for cultural and scientific policies, as well as for business development and related fields (e.g. marketing). Law students should be introduced to the crossroads of IP and competition and should be supported in developing a wide range of skills (in particular, litigation and contract drafting) within the IP module.  

• IP education should go beyond national boundaries: this seems to be a necessary corollary to the previous recommendations, especially in light of the results of the Brexit referendum in the UK. It is essential to expose students to a global understanding of IP in an international and comparative perspective, promoting exchanges and networking with other universities in the EU and beyond, to make sure that tomorrow’s lawyers, creators and people in business will work together to further creativity and scientific progress.

© The Author(s) 2016. Published by Oxford University Press. All rights reserved.

IP Publishers' and Editors' Lunch 2016 - a reminder

As announced on this blog a couple of weeks ago, the IP Publishers' and Editors' Lunch 2016 will take place on Friday 25 November, from 12.30 pm to 2.30 pm (registration from 12.15 pm), at the London office of the law firm Veale Wasbrough Vizards. The brief keynote speech will be delivered by the knowledgeable and brilliant Jaani Riordan (8 New Square), who will discuss hyperlinking in the aftermath of the CJEU's decision in GS Media, analysing the relevant implications for publishers. The Lunch will continue with a buffet and the usual, friendly and inspiring, networking among the participants. We already have a significant number of attendees, but we hope that, if you are involved in writing, editing or publishing in the world of IP, you will consider joining us. It doesn't matter whether you are a blogger, author, reviewer, editor, publisher or simply someone who is considering a career in this field: if you love building and sharing IP knowledge, there is a place for you at the Lunch!

To register for the event, please visit our Eventbrite page. Attendance is, of course, free. If you have never attended the Lunch before, and wish to check your eligibility to attend, please contact Stefano Barazza via email. If you are new to IP publishing and don't know any of the other attendees, don't be shy - you will soon find yourself engaged in stimulating discussions with colleagues and future friends.

Please note that this event is not sponsored or organised by OUP or JIPLP - it belongs to our community of IP researchers and enthusiasts. Its success lies in the hands of each of us and in our willingness to share our own experiences and ideas. This event is made possible by the generosity of many people, in primis Serena Tierney and the law firm Veale Wasbrough Vizards, Romany Wilson, Jaani Riordan and, of course, Jeremy Phillips, who created this wonderful event and brought us all together .

We look forward to seeing you at the 2016 IP Publishers' and Editors' Lunch! 

Editorial - The Trade Secrets Directive: consistency of approach required, with or without Brexit

In a clear, analytical and thought-provoking Editorial, published in our September issue, editorial board member Rachel Montagnon (Herbert Smith Freehills) discussed the changes introduced by the new Trade Secrets Directive (Directive (EU) 2016/943) from a UK perspective, evaluating the potential effects of Brexit on its implementation and arguing in favour of a consistent approach to its interpretation and application, to provide pan-European businesses with a stable and solid framework for the protection of trade secrets. Thank you, Rachel, for your very interesting and topical editorial!

The Trade Secrets Directive – consistency of approach required, with or without Brexit 

Rachel Montagnon* 

A year ago, when I agreed to write this editorial once the new Trade Secrets Directive 1 (the Directive) had entered in to force, I thought that I would be discussing a harmonisation of approach to trade secrets across the EU including the UK. Well, despite the result of the UK's Brexit referendum, harmonisation still looks likely, even if it's only at a commercial level in the UK. The Directive will affect all businesses operating across Europe; any business with employees and research and development in multiple European states, with people and product concepts moving between states in the course of employment/development, will want to apply a consistent approach to the protection of its trade secrets and know-how. This will now be made easier by virtue of the Directive. 

In fact, the UK will still be a member of the EU on the date by which the Directive must be implemented (2 years from coming into force on 5 July 2016) and so, if political will allows, the UK may even implement the Directive prior to ‘Brexit’ in any case. In any case, the minimum harmonisation required by the Directive equates to a position so similar to the current protection accorded to confidential information by the UK common law including the approach taken by the UK courts that it was always questionable whether this measure would change UK law significantly. The UK may instead find itself with no implementation but a sufficiently similar legal position that businesses can feel comfortable sharing trade secrets across borders, even if those become EU/non-EU borders in due course. Ironically perhaps, the main tenets of the UK's approach to the protection of confidential information have effectively been exported to the rest of the EU via this Directive, just at the moment that the UK has decided to leave. 

A key differentiator between the new Directive and the UK common law has been said to be in the definition of a “trade secret”. The Directive defines a trade secret as information that is secret (not generally known among or readily accessible to, persons within the circles that normally deal with this kind of information), has commercial value because it is secret, and has been subject to reasonable steps under the circumstances by the person lawfully in control of the information to keep it secret. In its assessment of whether information should be accorded protection, the UK common law considers the quality of the information and the circumstances in which it was disclosed. On closer inspection however, much of the detail of the assessments applied to confidential information under UK common law mirror those under the new Directive. If anything, UK law may be more generous in its application of the status of confidential to information being allegedly misused. 

Another aspect of the new Directive of particular note is the protection that will now be given to trade secrets that are revealed in the course of court proceedings. The lack of sufficient protection within the EU currently has meant that businesses are hesitant, at the very least, about initiating any court actions by virtue of which such revelations might be made. The Directive will ensure that the confidentiality clubs and redaction common in UK litigation will be made available EU-wide. 

The Directive introduces the concept of trade secret-"infringing goods, i.e. those whose design, characteristics, functioning, production process or marketing “significantly benefits” from trade secrets unlawfully acquired, used or disclosed. The production, offering or placing on the market of infringing goods or the importation, export or storage of such goods for those purposes will be unlawful where the person carrying out such activities knew, or ought under the circumstances to have known, that the trade secrets were used unlawfully (acquired unlawfully or in breach of confidentiality agreement or other duty not to disclose or in breach of a contractual duty or duty to limit the use of the trade secret). However, these are not intellectual property rights as such and are not subject to the IP Enforcement Directive (2004/48). Nevertheless, the Directive makes provision for injunctions and damages to be awarded in respect of unlawful use as well as the recall and destruction of “infringing goods” or the deprivation of their infringing quality, so, in many respects, the remedies are very similar to those provided for under the IP Enforcement Directive. 

The Directive's Recitals state that the Directive is not intended to grant the holder of a trade secret the exclusive right to exploit the information if parties arrive at it via independent means. Reverse engineering is allowed. Article 3 sets out the means by which a trade secret may lawfully be acquired (by independent discovery or creation or by observation, study, disassembly or testing) but only where the product has been made available to the public or is lawfully in the possession of the acquirer of the information which is free from any legally valid duty to limit the acquisition of the trade secret; or any other practice which under the circumstances is in conformity with honest commercial practices – although, in each case, only where the acquirer of the information “is free from any legally valid duty to limit the acquisition of the trade secret”. 

Many terms within the Directive are not given definitions, such as “significantly benefits” and “in conformity with honest commercial practices” (although trade mark practitioners will be familiar with this term) and will no doubt create the opportunity for CJEU references in the near future. Whilst the UK may by then not be bound by its decisions its pronouncements will likely still be of evidential value to UK courts (if the Directive has been implemented). 

In the meantime, for those seeking to rationalise their trade secret and confidential information controls across the EU, and to future-proof them to any extent possible pre-Brexit, it is worth taking “reasonable steps in the circumstances” by: (i) identifying, cataloguing and labelling commercially critical confidential information held within the business; (ii) protecting the information using appropriate confidentiality obligations in employment contracts and any joint ventures or other interactions where such information needs to be shared with third parties (confidentiality clubs); (iii) educating the workforce and management about intellectual property protection and confidentiality and embedding these elements into security policies; (iv) restricting access to key information on a “need to know” basis and limiting the circulation of such material, whilst establishing a means by which its mis-distribution can be reported; (v) using security measures such as encryption and passwords; (vi) monitoring employee emails (although note that such surveillance can be more difficult to put in place in some jurisdictions where there are greater privacy protections in place than in the UK); and (vii) preventing the loss of confidential information when staff leave by repeating the messages about their obligations and ensuring that there is sufficient awareness as soon as their departure is indicated, including the surrender of company property, where necessary. 

Where a business has to rely on trade secrets alone to protect its key business assets, there is cause for concern, since the possibility of an unauthorised disclosure to the world at large risks the continued nature of protection of a trade secret, unless legal steps are taken to address this. Despite this, many businesses – particularly SMEs - continue to rely on trade secrets, either through a lack of appreciation of the IP rights available or to avoid to costs that registering such rights entails. Thus a strengthening of the standing of trade secrets and a more universal appreciation of their worth and substance can only assist these sorts of businesses across Europe. 

In general, the “minimum harmonisation” standard of the Directive should provide comfort to pan-European businesses that there will be a basic standard of protection for their trade secrets, although there will be variations in procedure and process in each jurisdiction, with some (arguably such as the UK) providing broader protection than others. Competitors beware!


↵*Email: rachel.montagnon@hsf.com.
↵1 Directive EU 2016/943 of the European Parliament and of the Council of 8 June 2016 on the protection of undisclosed know-how and business information (trade secrets) against their unlawful acquisition, use and disclosure.
© The Author(s) (2016). Published by Oxford University Press. All rights reserved.

IP Publishers' and Editors' Lunch 2016

The annual IP Publishers' and Editors' Lunch is a friendly, informal and exciting event that welcomes anyone involved in IP publishing, editing, authoring and blogging, from all around the world. A brilliant creation of our own Jeremy Phillips (founding editor of JIPLP and creator of the IPKat), the Lunch is the perfect occasion to share experiences, ideas, projects and issues related to the world of IP publishing. Your background, experience, age or qualifications don't matter: if you write or blog about intellectual property, edit or publish IP journals, books, magazines or blogs, review IP research or have editorial board responsibilities, or if you are in any other way involved in related activities, you are welcome to join us for two hours of fruitful, engaging and interesting discussions with like-minded individuals.

The 2016 IP Publishers' and Editors' Lunch will take place on Friday 25 November, from 12.30 pm to 2.30 pm (registration from 12.15 pm), at the London office of the law firm Veale Wasbrough Vizards. The Lunch will begin with a keynote speech by the eclectic (not only an IP star, but also an excellent violinist, fencer and photographer) and knowledgeable Jaani Riordan (8 New Square), who will discuss hyperlinking in the aftermath of the CJEU's decision in GS Media, analysing the relevant implications for publishers. As always, the keynote speech will be followed by informal conversations and networking among the participants, facilitated by a delicious buffet lunch and drinks.

To register for the event, please visit our Eventbrite page.

Attendance is free and open to anyone involved in IP publishing as author, blogger, editor, editorial board member or publisher (as well as to anyone involved in related activities or contemplating a career change). If you have never attended the Lunch before, and wish to check your eligibility to attend, please contact Stefano Barazza via email. If you are new to IP publishing and don't know any of the other attendees, don't be shy - you will soon find yourself engaged in stimulating discussions with colleagues and future friends.

A heartfelt thank you to the law firm Veale Wasbrough Vizards and Serena Tierney, for volunteering to host the event, to Romany Wilson, whose support in organising the Lunch is truly indispensable, and to Jaani Riordan, for accepting our invitation to deliver the keynote speech. 

We look forward to seeing you at the 2016 IP Publishers' and Editors' Lunch!