Jane Glover Barrister – Mediator – Adjudicator



I know, I know – we are all intellectual property specialists; we have the words ‘intellectual property’ sprinkled liberally throughout our websites; we read intellectual property articles and cases; we go to intellectual property conferences….

And yet. “Intellectual property” is just a catch-all, a voluminous handbag filled with largely unrelated items, some more useful than others. It’s a shorthand term that we use because it is too annoying to say, “I am a trade mark-patent-copyright-confidential information-Fair Trading Act-domain names-passing off-layout designs-design rights-geographical indications-plant variety rights expert.” And many of us specialise in just a handful of those rights anyway. Or we jump in at different stages of the life cycle of those rights – I couldn’t draft a patent, for example, or a licensing agreement, but I am happy to conduct the litigation when matters relating to that patent or that agreement turn pear-shaped.

The truth is, many of the things that get dumped into the “intellectual property” handbag have precious little in common with each other. Some are creatures of statute, some of common law. Some must be registered, some arise automatically. Some are owned collectively, some individually. The list of differences goes on and on.

Another uncomfortable truth is that the contents of our intellectual property handbag are not just messy and diverse, but very poorly understood. For whatever reason, it seems that we have done a terrible job of communicating the essentials of our craft to the public, to lawyers, and sometimes even to judges.

I just read one of the most depressing cases I have ever encountered: Ngāti Tama Custodian Trustee Ltd v Phillips [2019] NZCA 647. It was depressing for a range of reasons. Ngāti Tama sunk a horrifying amount of capital into a software startup, MyVirtualHome, and lost nearly the lot. The ensuing litigation was a complex nightmare. Finally, it settled. But then it flared up again: three years after the settlement agreement was signed, Mr Phillips sent notices of “breach and infringement of copyright” to Ngāti Tama, alleging that it was infringing certain “business systems IP” that wasn’t covered by the settlement agreement.

Ngāti Tama applied for summary judgment, saying that the matter had been fully settled, but the summary judgment application was unsuccessful in the High Court. Courtney J accepted that the “business systems IP” wasn’t covered by the settlement agreement.

Now, perhaps you, like me, are starting to wonder…what on earth IS this mysterious “business systems IP?” From the notice of breach it sounds as though it is some form of copyright – but copyright in what?

When the matter went to the Court of Appeal, that Court asked the same question. By a process of elimination, it ruled out copyright in the software, and it ruled out any trade mark rights – eventually, what was left seemed to be…drum roll…copyright in a 20-page high-level strategy document entitled “Potential Income Streams: Visionary Considerations”. So, basically a marketing plan and value estimate for the worldwide monetisation of the software product.

Are you having a face palm moment here, too? I mean – what??? Unless I am missing something – and that is entirely possible – the argument seemed to be that copyright in this document gave the owner of copyright exclusive rights to monetise the software. Surely I am missing something.

You will be pleased to hear that the Court of Appeal allowed the appeal, but it did so on the basis that, contrary to the High Court’s finding, the “business systems IP” was in fact covered by the settlement agreement.

There were some other important things that the Court did not say, though, that it might have done. For example, idea-expression dichotomy, anyone? Just because you write down an idea in a document, copyright in that document doesn’t give you rights to the idea itself. Also, in this case, the document was not copied. Copyright was not infringed.

Maybe I’m being too harsh here. I guess the Court of Appeal didn’t need to delve too deeply into the copyright issue, given that it could determine the case on other grounds. And I know plenty of smart, curious lawyers to whom all things IP remain a mystery. Perhaps the failure rests with us. Do we need IP communicators to go forth and evangelise about the difference between copyright and patent law? About the relationship between the common law of passing off and registered trade mark rights? Is part of the problem that even we don’t fully understand how all the different rights fit together so that we can explain them to others? Do we need an IP elevator pitch, giving an overview in 60 seconds? Is that even possible? And who amongst us knows anything about plant variety rights???

Too many questions, sorry. But I do feel that we need to do SOMETHING, even if it is just continuing to plug away with raising awareness. Actually, I am quite taken with the 60 second overview idea. We could do it as a rap song. (Or not.)

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Jane Glover

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By Jane Glover
Jane Glover Barrister – Mediator – Adjudicator

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