Editorial - the Future of Terpsichore

Jane Lambert

I started blogging nearly 10 years ago because I had been commissioned by Gower-Ashgate to write a book for entrepreneurs and small business owners on enforcing intellectual property rights. Writing articles for the blog helped me compile the manuscript for Enforcing Intellectual Property Rights A Concise Guide for Businesses, Innovative and Creative Individuals which was published in 2009.

I continued the blog after I had submitted my manuscript and it became very big indeed with thousands of hits. Some of my posts, such as my case note on the Red Bus photograph case, went viral. I found two kinds of readers: patent and trade mark attorneys and specialist intellectual property lawyers who wanted to discuss every last detail of the latest case or enactment and artists, designers, inventors and business owners who wanted to know about changes in the law that might affect them personally. For the latter group I set up regional blogs such as IP Yorkshire and IP North West.

Ballet scores, choreography notations, performances by dancers and musicians and films and broadcasts of ballets are intellectual assets which the law protects with intellectual property rights. In discussing those rights I found myself inadvertently writing reviews of performances by Northern Ballet for IP Yorkshire and IP North West. Similarly, dance studios are small businesses so I found myself writing about the studio where I took my first dance lessons in Interesting Yorkshire Businesses No. 1: The Base Studios Huddersfield.

Now not every lawyer is a dance fan and few dance fans have any interest in the law - particularly not the very esoteric area in which I practise - so I started Terpsichore in February 2013. That, too, has grown very big and I now find myself writing and tweeting almost as much about dance as I do about the law. As my discussions on legal topics can't be much fun for dancers and I have been told many times that my discussions on dance classes are a bit of a turn off for many lawyers I have decided to separate the two. I will still tweet about great performances and great classes as "nipclaw" just as I will throw in my 5p worth about business, economics, politics and religion on that account but I will channel most of my dance talk through my new "Terpsichore" twitter account and Facebook group.

Over the last two years I have noticed a number of unmet needs for dance fans, dancers, dance teachers, dance schools, dance studios and even dance companies which have given me ideas for small spin-off businesses under the Terpsichore brand. If I ever have time to get any of those projects off the ground I will announce them in this blog and through the new social media accounts.

I should like to wish all my readers a very happy New Year.

Inventions for the Ballet

Patent examiners in 1900 courtesy the IPO

Over the last few weeks I have been writing about intellectual property and ballet. I have concentrated largely on copyrights, rights and performances and trade marks because these are the rights that are most important to companies, theatres and dancers; but there are others such as registered and registered Community designs, unregistered design right and patents for inventions. I was therefore interested to see Lauren Godfrey's recent post "The wonderful world of ballet inventions". Lauren is Northern Ballet's publicity officer and her blog is fascinating. I read and enjoy everything she writes.

Lauren Godfrey - author of
The Wonderful World of
Ballet Inventions

As I said in "Branding and Ballet - Copyright and Rights in Performances" 3 May 2014 "intellectual property ("IP") is a portmanteau terms for the bundle of laws that protect investment in intellectual assets." The intellectual assets that patents protect are inventions. There is no statutory definition of "invention" in England though s.1 (2) of the Patents Act 1977 declares what is not an invention.  However, it may be surmised from s.60 (1) that an invention may be a new product or a new process.

Patent law in England goes back a very long way. In the 17th century the Stewart kings tried to dispense with Parliament by selling monopolies of various commodities. As you can imagine this and other money making wheezes of the sovereign were not very popular with the public and they did not raise enough money anyway. Eventually King James I was forced to convene Parliament in order to raise taxes. Parliament agreed to vote him some money but only on condition that the king abolished monopolies.

The Act of Parliament that implemented that bargain was The Statute of Monopolies 1623. The Act provided that:

"All [Monapolies] and all Commissions Graunts Licences Charters and tres patents heretofore made or graunted, or hereafter to be made or graunted to any person or persons Bodies Politique or Corporate whatsoever of or for the sole buyinge sellinge makinge workinge or usinge of any thinge within this Realme or the Dominion of Wales, or of any other Monopolies, or of Power Liberty or Facultie to dispence with any others, . . . , are altogether contrary to the Lawes of this Realme, and so are and shalbe utterlie void and of none effecte, and in noe wise to be putt in ure or execucion."

However it was subject to one proviso and that was

"That any Declaracion before mencioned shall not extend to any tres Patents and Graunt of Privilege for the tearme of fowerteene yeares or under, hereafter to be made of the sole working or makinge of any manner of new Manufactures within this Realme, to the true and first Inventor and Inventors of such Manufactures, which others at the tyme of makinge such tres Patents and Graunts shall not use, soe as alsoe they be not contrary to the Lawe nor mischievous to the State, by raisinge prices of Commodities at home, or hurt of Trade, or generallie inconvenient; the said fourteene yeares to be [accomplished] from the date of the first tres Patents or Grant of such priviledge hereafter to be made, but that the same shall be of such force as they should be if this Act had never byn made, and of none other."

That exception is the basis of our own and every other country's patent law.

A patent confers a monopoly on the manufacture, importation, stocking, marketing, distribution of use of patented products or products derived from a patented processes. In order to qualify for this monopoly, the invention has to be new. involve an inventive step, be capable of industrial application and not fall within any of a number of statutory exceptions. To apply for this monopoly the inventor has to pay quite a lot of money to a patent attorney to prepare the application. The applicant must describe the invention in sufficient detail for it to be made or used by someone with the relevant skills and knowledge ("person skilled in the art") after the monopoly ends. He or she must also pay for the patent office to search its records to see whether the invention or something close to it has already been invented. If, and only if the office is satisfied that the invention meets all the statutory criteria, then it will grant a patent. The cost of that process for the UK alone is around £5,000.  For  the UK and several other European countries it can be several times that amount. If protection is also sought in big manufacturing countries overseas like China, Japan, Korea and the USA, the total bill will be even higher.

After the patent is granted there are renewal fees to pay in each country. In some countries these actually increase with the passage of time. If the patent is infringed or its validity is challenged, proceedings in the Patents Court can cost hundreds of thousands of pounds. Even in the Intellectual Property Enterprise Court the costs could be many tens of thousands of which only £50,000 is recoverable from the losing party. Patents are granted for terms of up to 20 years from the date of filing. Once that term has expired anyone can work the patent. However if a court or Intellectual Property Office decides that a patent should never have been granted it can revoke the patent immediately whereupon anyone can make use of the invention.

According to Peter Bissell and Graham Barker who wrote "A Better Mousetrap: the Business of Invention" only a small proportion of patented inventions on the world's patent office registers are ever worked. Of those that are, only a few ever cover their costs.  Just a handful ever make serious money for their owners.

For all those reasons patents are of limited interest to companies, dancers or theatres. They are more likely to be of interest to companies that make flooring, footwear, textiles or perhaps to broadcasters and electronics manufacturers. All the patents and patent applications in Lauren's post will have expired or about to expire by now (if indeed they ever ran their full term) except for the high-heeled bifunctional pointe shoe. However, you never know.  I will certainly mention patents in my seminar on IP and ballet.

Branding and Ballet - Copyright and Rights in Performances

Theatre Royal Drury Lane 1821                                           Source Wikipedia

This is the fourth in my series of articles on ballet and branding which is my thank you to companies, theatres and dancers for a lifetime of pleasure watching their performances. The others are "Ballet as a Brand? How to bring More Money into Dance for Companies and Dancers" 13 March 2014, "Protecting the Brand" 31 March 2014 and "Branding and Ballet - Licensing the Brand" 18 April 2014. In this article I shall discuss two important intellectual property rights ("IPR") for companies, theatres and dancers: copyrights and rights in performances.

What is IP?
Intellectual property ("IP") is a portmanteau terms for the bundle of laws that protect investment in intellectual assets.  Intellectual assets are creations of the mind that give one business a competitive advantage over all others. Such assets can be a new invention, a blockbuster film or novel, the cachet that is given to luxury product and so on.  

Intellectual assets fall into four categories:

• Brands
• Design
• Technology, and
• Works of art and literature.

The laws that protect the investment in creating those assets in the UK include the Patents Act 1977, the Copyright, Designs and Patents Act 1988 ("CDPA") and the Trade Marks Act 1994. The rights that those laws confer, such as patents for inventions, copyrights in original works of art and literature and registered trade marks for signs that distinguish one business's goods or services from those of all others are types of IPR (intellectual property rights). 

The exercise of those rights can be very valuable for a business which is why we regard them as property.  As they protect creations of the mind or intellect we call them intellectual property.

Copyrights and Rights in Performances

The intellectual assets that copyrights and rights in performances protect are works of art and literature. 

Copyrights have existed in one form or another since the days of Queen Anne. The first copyright statute for this country is still referred to as The Statute of Anne. Copyrights prevent the unauthorized copyright, distribution, performance and other exploitation of works that are written, drawn or otherwise created in some permanent medium such as film or optical or magnetic memory. 

Rights in performances are much more recent. These protect the performances of actors, musicians, dancers and other performers from unauthorized broadcasting, filming or taping and other exploitation of their performances. The existence of those rights has only been possible since the development of sound and motion picture recording and transmission technologies. 

The CDPA

In the UK copyright and rights in performances are conferred by different parts of the CPDA.  Copyright is conferred by Part I of the Act and rights in performances by Part 2.  The CPDA came into force on the 1 Aug 1989 and has been amended many times since then. The Intellectual Property Office has helpfully compiled an up to date version of Parts 1 and 2 of the Act together with other relevant legislation.

International Agreements

The UK is party to a number of international agreements that require foreign governments to protect the intellectual assets of British businesses and individuals in their territories and the British government to protect the intellectual assets of foreigners here.  The agreement that provides reciprocal protection of works or art and literature is the Berne Convention for the Protection of Literary and Artistic Works ("Berne").  The agreement that provides reciprocal protection for performances is the Rome Convention for the Protection of Performers, Producers of Phonograms and Broadcasting Organizations ("Rome"). Berne and Rome have been supplemented by a number of other international agreements of which the most important are the WIPO Copyright Treaty and the WIPO Performances and Phonograms Treaty. One of the reasons why Parliament enacted and has revised the CPDA was to enable the UK to comply with those conventions and treaties.

Copyright Works

The CDPA protects the following types of work from unauthorized copying, publishing, performance and other distribution in the UK:

• Original artistic, dramatic, literary and musical works
• Broadcasts, films and sound recordings, and
• Typographical arrangements of publications.

That covers such works as the story, score, the choreology, broadcasts and HDTV transmissions and some of the art work such as scenery and fabric designs.  One of the many things that the Court of Appeal decided in Massine v De Basil[1936 - 1945] MCC 233, one of the few copyright cases relating to ballet, was that there is no such thing as copyright in a ballet. There are instead a bundle of copyrights in the works that make up a ballet such as an outline of the plot, the music, notation, artwork for the scenery, costumes and other works. Secondary copyrights are created in any videos that are made during class and rehearsals as well as in any sound recordings that may be made. Yet more copyrights are made in the notes, photos, compilation, editing and typographical arrangement of the programmes. 

Rights in Performances

Performers including dancers and those who have contracted with a dancer or other performer to broadcast, film or tape a performance such as the BBC, a film studio or a record company have the right to object to the broadcasting, filming or taping of a performance regardless of whether the performance takes place in a theatre, TV studio or film set.

Creating a Copyright?
There is no system of copyright registration in the UK though there is in some other countries. Copyrights come into being the moment a work in which copyright can subsist is created by a British citizen or resident or a citizen or resident of any other state that confers confers protection on the works of British citizens and residents within its territories pursuant to the Berne Convention or some other agreement with the UK government. Most countries of the world are party to Berne and the few that are not have entered other multi or bilateral agreements with the UK.

Copyright can subsist in any of the works listed above provided that it is not copied wholly from another work. Essentially copyright rewards the labour, skill and taste that has been expended on a work. Thus, a poet may write a poem which creates a literary copyright; an artist a drawing that creates an artistic copyright; and an editor may choose the poem and the drawing and combine them with other poems and drawings in an anthology which creates yet another literary copyright in the compilation.

Creating a Right in a Performance
Consent is required for broadcasting, filming or taping of a performance from the moment the dancer or other performer walks on stage to the final curtain call so long as the performance takes place in the UK or by a national of a country that is party to the Rome Convention or some agreement with the UK.

Who owns Copyright?
Usually the author (that is to say the person who makes the work) is the first owner of the copyright subsisting in the work but there are a number of exceptions. If the author is employed to create the work under a contract of employment or apprenticeship the author's employer becomes the first owner unless the employer and employee have agreed otherwise. Merely commissioning a work, however, does not usually confer copyright on the commissioner unless the circumstances suggest that that is what the parties had intended as happened in Massine v de Basil.  When commissioning a score, choreography or other work it is important for the parties to think about who is to own the work and what rights (if any) each of the parties has or should have in its exploitation.

Who owns a Right in a Performance?
In the first instance it is up to the dancer or other performer to consent to the broadcasting, filming, taping or other exploitation of his or performance.  In practice the terms upon which such consent is given have been negotiated by Equity on behalf of its members. Such terms are incorporated into individual performers' contracts of employment. Broadcasters, film and recording studios that have negotiated exclusive contracts to record a performance can also object to broadcasting, filming and taping of performances.

How to make Money from Copyrights and Rights in Performances
Copyrights and rights to make, distribute and otherwise exploit copies of recordings may be assigned or licensed for money or moneysworth.   How much will be paid by way of a royalty, licence fee or other payment will depend on supply and demand. The work of a well known artist, choreographer or composer will generally command a greater payment than that of a lesser known one.  Some copyright owners assign their rights to organizations known as "collecting societies" which collect payments on behalf of all their members and distribute them after deducting their expenses as individual dividends. BECS (British Equity Collecting Society) collects royalties for licensing performers' rights on behalf of their members.

Moral Rights
In addition to the rights mentioned above which are generally referred to as "economic rights" performers and some copyright owners have rights to be identified as performer or author and the right to object to derogatory treatment of their works that are known as "moral rights".  These subsist quite independently of the economic rights and cannot be assigned.

Enforcement
Violation of an IPR is known as "infringement".

Large scale deliberate infringement of copyright (known as "piracy") and rights in performances ("bootlegging") are offences that can be punished by up to 10 years imprisonment and an unlimited fine. Local authority trading standards officers have a statutory duty to investigate and prosecute such offences.

IPR owners can also sue infringers in the civil courts for injunctions (orders of the court to refrain from or stop infringements on pain of fine or imprisonment for disobedience), damages (compensation for past infringements) or an account of profits (disgorging any profits that have been made from infringements), surrender of infringing copies and their costs (legal expenses for bringing the action). In England and Wales most claims for IPR infringement (including small claims) are brought in the Intellectual Property Enterprise Court ("IPEC") or the Intellectual Property list of the Chancery Division of the High Court of Justice.

Collecting societies also bring proceedings in the civil courts on behalf of their members.

Further Reading
The Intellectual Property Office has published a very useful guide entitled "Copyright, Essential Reading" which can be downloaded in pdf from its website. Equity also has a considerable volume of materials on performers' rights which is accessible to its members.

Should anyone require additional information he or she can call me during office hours on 020 7404 5252 or send me a message through my contact form, twitter, Facebook, G+, Linkedin or Xing.

Happy May bank holiday everybody.

Protecting the Brand

The United Kingdom Intellectual Property Office

In "Ballet as a Brand? How to bring More Money into Dance for Companies and Dancers" 13 March 2014 I argued that if dancers are adequately to be paid and companies and theatres properly to be funded they should learn from sport and indeed the other performing arts and tap the potentially enormous sums that could be released from harnessing their goodwill. In order to do that they need to protect that goodwill. The best way of doing that is by registering the names, logos and other signs under which they are recognized by their audiences as trade marks. As I said in my previous article I made a search of the UK Intellectual Property Office trade mark database and was surprised to find how few dancers or even ballet companies and theatres had taken that step.

What is a Trade Mark?
The UK Intellectual Property Office defines a trade mark as

"a sign which can distinguish your goods and services from those of your competitors ........... It can be for example words, logos or a combination of both."

It can be an actual name like "W H Smith", an invented name like "Microsoft" or indeed a logo such as the three red arrows against a black background in the shape of a triangle of the National Westminster Bank.  It can be just about anything that can be the recorded on paper or other medium. In ballet English National Ballet's white stripe against a red background and the words ENGLISH NATIONAL BALLET are good examples.

Protection of a Mark without Registration
You can have a trade mark whether you register it or not and there is a limited degree of legal protection for trade marks in the UK and many other countries under a doctrine that we call "passing off" and other countries "unfair competition" ("concurrence déloyale"). In England and Wales (and similarly in Scotland, Northern Ireland and most other English speaking countries) this doctrine has been developed by the judges in a series of decisions over many years. Essentially, it means that you cannot offer your goods or services under a name, logo or other sign that is the same as or similar to that of another trader. If you do, even inadvertently, that trader can sue you for an injunction (order by a judge to do or refrain from doing something upon threat of punishment if you disobey), damages (compensation) and other remedies. To win such an action the complainant must show that he or she is recognized in the market by his name or other sign, that you have misled his or her customers or potential customers by using a similar sign and that he or she has suffered as a result.

Trade Mark Registration
The trouble with passing off is that it takes a lot of time and costs a lot of money to prove those three things. Moreover the doctrine will not help a new or very small business that has not yet established itself in the market. To avoid those difficulties the UK and most other countries provide a service by which businesses can register their names, logos or other signs and the goods or services for which they use or intend to use those signs with a national or supra-national registry. The registry for the United Kingdom is part of the Intellectual Property Office in Newport (also the home town of Ballet Cymru) but businesses can if they so wish register their mark for the whole of the European Union at the Office for Harmonization in the Internal Market ("OHIM") in Spain. By registering a mark the registered you can prevent anyone else from using the same mark in relation to the same goods or services, the same or similar mark in relation to the same or similar goods or services where by reason of the similarity there is a likelihood of confusion including association with yourself. Registration avoids the need to prove reputation, misrepresentation and damage as is required for an action for passing off.

Why bother to register?
If you have a trade mark you have something to license. A registered trade mark is much more manageable, tangible and substantial than a right merely to sue for passing off. Registration makes it much easier to negotiate deals with major clothing, stationery, toys and games, food and drink and other manufacturers and distributors of those products and thus gain royalties on sales of branded products as a result of such deals. Registration also makes it easier to control the quality of such products because you can insert conditions on materials and workmanship into the contract. A trade mark registration will make it easier to prevent cyber-squatters from registering domain names that incorporate your mark under the Uniform Domain Name Dispute Resolution Policy or Nominet Dispute Resolution Service. If you do have to go to court to prevent others from supplying goods or services that incorporates your mark it is considerably easier and cheaper to do that if you have registered your mark.

What Sort of Sign can I register?
The first thing you need is a trade mark that is capable of registration. S.1 (1) of the Trade Marks Act 1994 defines a "trade mark" as

"any sign capable of being represented graphically which is capable of distinguishing goods or services of one undertaking from those of other undertakings."

Although this is a British statute it implements an EU directive which has to comply with a number of international agreements so there are broadly similar requirements at OHIM and in most other countries. The sign has to be capable of distinguishing your goods or services from those of others. Clearly you can't register "ballet" or "dance" simpliciter because those are activities that everyone in the dance world perform but you can usually register the name of a nation, town or other region for a ballet company associated with that town. Similarly there are some national emblems that you need permission to use. Her Majesty allows the Royal Ballet and Birmingham Royal Ballet to use the royal coat of arms but nobody else has that right.

Secondly, you can't register a trade mark that someone else already uses or is about to use for the same or similar goods or services. As there are many registered marks some of which you are unlikely to have heard of it is always a good idea to carry out a search of prior registrations and applications. You can do some of that work yourself but it is always better to commission a search by a specialist librarian or other professional.

As unregistered marks do not show up on a search it is also sensible to scour the internet and specialist magazines and publications to see whether anyone else is using the same or similar sign as an unregistered mark.

How to register your Mark
As there is a lot of help on the "Applying for a trade mark page" on the Intellectual Property Office website I won't go into too much detail here. You will find all the information you need on the articles linked to that page. There are a few extra points that I would stress. The first is that although there is nothing to prevent you from applying for a mark yourself and plenty of people do it is probably more cost effective and certainly safer to instruct a trade mark agent (also known as "trade mark attorneys"). They will carry out the necessary searches, draft the application in the correct way, deal with queries from the examiners and generally shepherd your application through to grant. They will charge only a few hundred pound extra for their services. Trade Mark agents (like patent agents) and regulated by the Intellectual Property Regulation Board ("IPReg") so if you have a problem with your agent IPReg will investigate it and if necessary correct it. If you do not know any agents you can find one through IPReg's "Find an attorney" page. Secondly, you must be sure that you will use the mark in respect of the goods or services for which you register it within 5 years or you could lose it. Thirdly, there are a lot of sharks who prey on unrepresented applicants demanding money for listing and other services that you don't need and often never get. Be on your guard. The Intellectual Property Office gives loads of warnings about those practices but it is amazing how many businesses fall for this trick.

How much does it cost?
It depends on how many goods or service you want to register, whether you use an agent, what extras you need and whether your application is opposed. Goods and services are grouped in classes and you can register your mark in any number of them. The basic cost for a UK mark is £170 which includes one class and £50 for each additional class. Agents usually charge a few hundred pounds for preparing and filing the application.  They would probably advise you to commission a search which will be another £100. If your application is opposed you will have to spend a lot of money on legal representation if you want to fight though you may get some of that back. Once you get your mark I would recommend your subscribing to a watch service which looks our for applications that are similar to your registration so you can challenge it in good time. Unless you have plenty of money I would also advise you to take out IP litigation insurance so that you can afford to take an infringer to court.

Further Information
I am making this information available to the ballet world pro bono as a thank you for all the pleasure dancers, companies, theatres and schools have given me throughout my life. I have offered to give a free half day seminar on IP relating to dance to Middlesex University which has a very successful dance programme in its performing arts department. I have already lectured on IP in the law school and I hold an IP clinic there once a month. If my offer is accepted I will ask for the University to admit dancers, administrators and others to the seminar free of charge. In the meantime I will answer any questions that anyone has by phone or email. My number is 020 7404 5252 and you can contact me through my contact form, twitter, Linkedin, G+. Facebook or Xing.

Intellectual Property and Ballet

"How can they stop us taking videos with our phones?" I overheard one member of the audience ask in The Lowry recently? "Well there is the law of trespass for a start" I nearly told her. "You're only allowed into this place on conditions and one of those conditions is that you don't make a thundering nuisance of yourself. Or I could have told her about performers' rights, the right of a performer (which includes a dancer) under s.180 (1) (a) of The Copyright Designs and Patents Act 1988 to object to the exploitation (which includes filming and taping) of his performance.

Before I started this blog I used rights in performances as an excuse to indulge my passion for ballet in my intellectual property titles. I reviewed the Northern Ballet's performance of The Nutcracker in "Cracking Nuts - Copyright in Choreography" IP North West, 24 Nov 2011. In it I discussed Massine v De Basil [1936 - 1945] MCC 233.which is quite an important case on non-literal copying and title. I have referred judges to it more than once in software disputes.

Then in "Ballet and Intellectual Property - my Excuse for reviewing 'Beauty and the Beast'" I reviewed Northern Ballet's Beauty and the Beast in my IP Yorkshire blog a few weeks later. I pushed my luck again in "Northern Ballet's Ondine" in the same publication on 11 Sept 2012.  And earlier this year I gave my dance school a plug in "Interesting Yorkshire Businesses No. 1: The Base Studios Huddersfield" on 11 Jan and "Huddersfield Youth Dance Academy Auditions 26 Jan 2013" and 18 Jan 2013.

Now some lawyers and intellectual property owners like ballet. As I said in "From Bar to Barre" 20 March 2013 there are links between those two worlds. It was through looking for a parking space one Saturday afternoon when Floral Street was packed that I discovered Lincoln's Inn Fields and hence Lincoln's Inn. But most do not. And for those who know little about ballet and care even less my reviews were something of a turn off.

"Now then lass" protest my clients. "We've seen thee make a fool of thou's ane attempting pliés and tendus in t'Base but we can only laugh so much. So do us a favour and keep it to tha' self." So I did and hence this publication.

Now as I have probably upset all my balletomane readers by rabbiting on about the law I have inserted this clip from the TV series "Rumpole of the Bailey". It has nowt to do with ballet but it is very funny. I hope you enjoy it.