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European IP Bulletin, Issue 11, April - Copyright
Copyright
2. Ownership Of Copyright in Research Partnerships: Cyprotex Discovery v University of Sheffield
On 1 April 2004, Lord Justice Potter delivered the appeal judgment in Cyprotex Discovery v University of Sheffield [2004] EWCA Civ 380.
The University of Sheffield had created a number of computer-based algorithms to assist research and development in the pharmaceutical industry, the Simcyp Project. The University sought to develop the project for commercial exploitation which required outside funding (in the form of sponsorship from pharmaceutical companies) and outside expertise (in the form of a programmer to develop a user interface for the underlying algorithms). Sponsors were to receive preferential licensing rights and input into development of the underlying data to which the algorithms would be applied.
Cyprotex, through one of its employees, Dr Edwards, provided the computer programming expertise and also received sponsorship rights in the program. Initially, this was the subject of an informal agreement whereby the University employed a programmer from Cyprotex, and a later formal written sponsorship agreement was entered into by the parties and a number of sponsoring pharmaceutical companies. Although Cyprotex was to contribute funding under the sponsorship agreement, this was informally understood to be off-set by the provision of Dr Edwards’ services.
The sponsorship agreement contained two competing clauses relating to ownership of intellectual property rights:
The first clause provided that “all inventions, improvements and/or discoveries …which are conceived and/or made by one or more members or other agents of the university acting either on their own or jointly with one or more employees of the sponsors in performance of the Programme of Research and relating to its objectives...shall belong in the first instance to the University”.
The second clause provided that “Rights to inventions, improvements and/or discoveries relating to the Programme of Research made solely by employees of the Sponsors shall belong to each Sponsor respectively”.
The first instance judge held that, given the factual circumstances and relationships between the parties, the correct position was that Dr Edwards’ work fell within the meaning of the first clause. His reasons were that Dr Edwards’ work was not “related to” the programme but was the program itself and that the work was not “solely” done by Dr Edwards. The judge also relied on the unreal commercial effect of the sponsorship agreement for the University if Cyprotex had retained ownership under the second clause. The judge rejected the University’s argument that Dr Edwards was acting as “other agent” of the University under the informal agreement on the basis of the entire agreement and the no-agency clauses in the sponsorship agreement.
On appeal, the judge’s decision and interpretation of the sponsorship agreement was upheld. Furthermore, the University’s agency argument was held to be correct since the sponsorship agreement did not reflect the true position of the parties and did not preclude a separate relationship of agency between them.
The parties had sought to set out their relationship by inclusion of Cyprotex in the sponsorship agreement, even though the nature of Cyprotex’s involvement was very different to that of the other sponsors by virtue of the contribution of expertise of Dr Edwards. This case demonstrates the need for parties to clearly identify their respective capabilities, contributions and intentions in research agreements as well including clauses to deal with ownership of IP rights. This must be done at the earliest opportunity in the light of the services and expertise offered and the aims of the particular collaboration. The use of inappropriate contractual mechanisms for the sake of convenience needs to be avoided.
Pam Brighton, the former director of “Stones in his Pocket”, which is currently playing in the West End and has become a worldwide success, is claiming joint copyright ownership of the play.
Pam Brighton is suing the play’s writer, Marie Jones, claiming that she was not given due credit for her work on the script, which was originally written and produced by the Dubbeljoint Theatre in 1996, and redrafted by Jones three years later.
Brighton’s counsel, Keith Garnett QC said Brighton and Jones had worked together on the play in 1996 and had agreed on the plot and the title of the play and on the fact that the play would be a two-hander in which actors would play a number of different roles.
Brighton claims that she wrote some of the opening scenes herself, and made several other suggestions to Jones, who later used them in the script. Because of this, Brighton claims to be the joint author, with Jones, of the script, and the author of the notes that were used in the play.
In addition, while Jones has given the Dubbeljoint theatre a royalty payment of £30,000 and an undertaking that it will be properly credited, the company is now seeking an account of further royalties due and wants an inquiry as to damages. Both these claims were, however, contested by Jones, who said she would “vigorously defend” Pam Brighton’s claim for a share of the profits of the show.
This dispute is the latest example of the importance of putting in place contractual provisions governing ownership of the rights arising out of any collaboration. Ideally, this should be done at the outset, although this may not always be practical, particularly with informal collaborating. Nevertheless, it should be addressed as soon as practical, and especially before any success is added, as wealth and glory have a nasty habit of distorting people’s memories. Although it might be considered by some to be rude or distasteful, it’s far more pleasant than bringing legal proceedings after the event.
On 12 March 2004, Lewison J delivered judgment in Ultra Marketing v Universal Components [2004] EWHC 468 (Ch).
In 1976 Thomas Scott drew a picture incorporating pips in a frame for an un-illuminated sign. In 1989 a company called WASP began, with Mr Scott’s consent, producing frames incorporating the pips (GAP500) which were indirectly derived from the 1976 drawing. Mr. Scott made the drawings for the GAP500 which became the product called “Ultraframe”. It was decided at a preliminary hearing (Ultra Marketing (UK) Ltd and others v Universal Components Ltd [2002] EWAC 2285 (Ch) that Mr. Scott was not the owner of the copyright in GAP500, the copyright instead being owned by SPS, the company for whom he was working, and for whom WASP was a customer.
Universal Components sued WASP for patent infringement and Mr. Scott subsequently sued for infringement of the copyright in his 1976 drawings claiming that his drawing of 1976, his GAP500 drawing, and samples of Ultraframe were supplied to Universal Components.
Universal Components claimed, and the Judge agreed, that only the GAP500 drawings were received. However, this did not deter Mr Scott from bringing proceedings for indirect copying of the 1976 drawings on which the 1987 drawings were based.
However, the Judge stated that whilst Mr. Scott’s 1976 drawing was original and artistic, thus protected by copyright, copyright protects only its artistic characteristics and not for the technical idea that it embodies. The Judge held that the idea had not been copied by Universal Components as the idea itself was of such simplicity that it would have needed to have been copied exactly before the copying could be said to amount to a substantial part of the work. In this case, they were not copied at all, let alone exactly. Consequently, copyright was not infringed.
The practice issue is that although not successful in this case due to the specific facts, the notion of indirect copying emphasises the need to know the propriety basis of any artistic or other protected work used in a commercial undertaking.
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