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:-
(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?
(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?
(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:
(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.
(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
