Wednesday, 31 March 2010

Can There Be Too Much IP Within the Organization?

How much IP awareness should there be in a company? It is all the rage these days to argue in favor of IP empowerment, whereby the goal is spread IP awareness throughout the organization. But is this vision of IP penetration as desirable as it might seem at first glance? Consider the following two examples.

In an article entitled "Understanding and Unifying Diverse IP Strategies", which appeared in the January/February 2009 issue of Intellectual Asset Management, John Cronin and Paul DiGiammarino argue that proper IP strategy is based on "extracting the definition of each stakeholder's IP strategy", as opposed to simply deciding "what inventions to file as patents and in what countries to file them." The endgame is to develop and overarching IP strategy. And who are these stakeholders? The authors list the following: (i) patent counsel; (ii) engineers and inventors: (iii) product and technical managers; (iv) executive management: (v) business development; (vi) commercialization and marketing; and (vii) CTO.

More recently, Mark Blaxill and Ralph Eckardt argued in their article, "Putting the IAM Function at the Heart of Corporate Strategy," published in the July/August 2009 issue of Intellectual Asset Management (to be read in tandem with their 2009 book, The Invisible Edge: Taking Your Strategy to the Next Level Using Intellectual Property), that "IP has become the principle source of competitive advantage." And what is the mechanism for realizing this strategy? The author explain that the goal is to "break out of IP's organizational silo ... IP executives must push for deeper integration of IP management into the business, where it can have its greatest and strategic impact."

The common thread of these two articles is that IP management needs to be released from the organization's patent department, whereby everyone with a material interest in IP within the company will presumably have some influence over the company's IP policy. The problem is this: the persons most likely to "benefit" from this view may in fact be skeptical about its efficacy. My MBA students tend to be culled from middle management across a range of departments and are overwhelmingly employed in hi-tech companies.One would think that this would be an ideal cohort to embrace the view that IP should be the province of multiple stakeholders within their companies. However, their reaction to these proposals was largely one of skepticism.

There appear to be two reasons for this skepticism. The first was a sense that these authors have overstated the importance of IP (at least in most of their companies). That is not to say that they do not recognize the potential importance of IP, but rather to say that, having regard to the multiple managerial requirements that they face, overstating the centrality of IP is no more helpful than understating it.

The second was a feeling that the authors have confused IP strategy with IP awareness. Not every department within a company is, nor should be engaged, in fashioning or implementing IP strategy. For some departments IP may be more important; for others, less so. While consideration of the role of IP within a given corporate department is not the same thing as consideration of IP strategy, the company is organized for strategy and IP is a part of that overarching organizational structure, not some stand-alone body of information and decisions.

What the students wanted, and what is missing in these two articles, is not strategic empowerment, but rather a heightened awareness of what IP is, and how it may be expressed in their daily activities. Stated otherwise, both articles seem to take as a given exactly what students view as a form of unknown, namely a greater understanding of IP with the larger commercial and managerial context. Unfortunately, how this appreciation of IP is spread throughout the organization remains largely untouched, not just in the two articles but most of the managerial literature. That is a pity, because it is here that IP can have the greatest impact throughout an organization.

IP at the Corporate Periphery?

Sunday, 28 March 2010

ICAP Ocean Tomo Auction Sees Record Bidding

icap-ocean-tomo.pngIt's good to see that Patent Auctions are apparently back up running again. ICAP OceanTomo issued a press release yesterday to highlight the USD 11.43 Million received in their 11th auction.

The press release highlights two sets of lots. An exclusive licence to a group of patents owned by the University of Southern California on a multimedia architecture went for USD 7.7 Million in a pre-auction sale.

Walker-Digital.jpgA set of patents owned by Walker Digital LLC for which Ocean Tomo is the exclusive sales agent, according to this report. The bidding for this group started at USD 50 Million according to the press release, and stopped at USD 350 Million without reaching the reserve price. No doubt post-auction bidding will be continuing by some parties to access the portfolio. Indeed ICAP OceanTomo Managing Director Dean Becker clearly states that he plans to finish work on this lot within weeks.Dean-Becker.jpg

Patent auctions have been criticised for allowing patents to fall into the hands of "trolls" who then exploit them. They do provide a means, however, for researchers and universities to monetarise their assets and allow the generation of cash which can be ploughed back into research and development, as the deal with the University of Southern California clearly shows.

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Photo Credits: Dean Becker from www.oceantomo.com and Jay Walker from Inventors Digest (www.inventorsdigest.com)

Friday, 26 March 2010

Two new articles

The March 2010 issue of Informa Law's Copyright World has now been published. This issue is of particular interest to readers of this weblog since it contains two articles on transactions involving virtual assets.


In "Buying Virtual Assets", a short piece by Rob Hawley, a partner at Mathys & Squire, the challenges of buying virtual assets are examined in light of the purchase earlier this year of the Crystal Palace space station -- an asset which exists only within the context of the MMORPG Planet Calypso. Also, in the somewhat longer “Virtual Worlds, Real Risks, Real Money” Linklaters’ Christian W. Liedtke discusses both the business benefits and the legal framework of user-generated online content.

Further details of this issue can be seen here.

Monsanto's Patent Strategy: Less Today May Be More Tomorrow

I have been under (blog)water for the better part of the last two weeks but, with the trial over, it's great to be able to comment once again. What grabbed my immediate attention is an article that appeared in the February 1 & 8 issue of Bloomberg Business Week, entitled "Monsanto Sets a Soybean Free."

Monsanto
may be the world's largest seed company, and seeds are a desirable commodity to be selling. Still, circumstances have not been kind to the company. Genetically modified crops, with which it is closed identified, have been viewed in some circles as a Frankenstein with roots. As well, the U.S. Justice Department has been carrying on a civil investigation of whether the company has been liable for anti-competitive practices with respect to the soybean business. Further, DuPont -- no shrinking violet in the business, being number 2 behind Monsanto -- has sued Monsanto, claiming an abuse of its market position in the soybeans space, where Monsanto is reported to have a 93% (!) market share of the U.S. soybean crop via its first generation biotech seed. Monsanto is entitled to feel somewhat unloved both in the U.S. and abroad.

Against this backdrop, it is interesting to consider the recent moves taken by Monsanto with respect to its patent position. According to the article, the company will allow its current patents for bio-engineered farm seeds to "expire without a fight", starting with the patent on its soybean market leader, Roundup Ready, with an expiration date in 2014. As a result, competitors will be able to manufacture copycat products, presumably at a lower price. Also, farmers will be able to plant seed taken from the farmers' own harvests, without the threat of legal action by Monsanto.

While Monsanto might have some interest in enjoying the positive publicity that surrounds such a move, the primary motivation appears to be a decision to refocus its strategic focus with respect to its patent portfolio from the first generation of bio-engineered seeds, which are close to expiration, in favor of promoting new versions of gene-modified products. It has already begun to sell new versions of herbicide-resistant soybeans and corn, and it plans to launch additional genetically modified seed products in 2011. Interestingly, Monsanto is also relying on licences granted to other producers to extend the reach of these new generation seed products.

The strategy contained in these moves was described in the article as follows: "Grant [being Hugh Grant, the CEO of the company] is betting that sales of these higher-priced, second-generation seeds will more than offset the loss of sales of earlier versions as their patents expire. 'Growers will decide, do I go with the old 1996 material or do I go with some of these new varieties?' Grant says. "I am fine with that setup.'"


I meant the other Hugh Grant

Stepping back from Grant's comment, this is an interesting strategic move on Monsanto's part. Monsanto seems prepared to de-emphasize its current product line, and the IP enforcement that goes with it, in favour of promoting a new generation of products, backed up by a determination to enforce its patent rights in these new products. Further, Monsanto seems to be betting on the strength of its brand awareness, which will to allow it sell a higher-priced seed to an "installed base" of farmers who have already become accustomed to Monsanto-based genetically modified products.

In so doing, Monsanto seems to be providing a partial answer to the perennial question that bedevils a patent owner who is faced with the ultimate expiry of his patent: "What do I do the day after?" The answer is to try and make certain that there is no perceptible "day after", but rather to provide a continuous branded product stream, where today's product is able to command a premium price, backed by an explicit commitment to enforce its IP rights in the new products.

If so, the question is whether such a strategy is different in context from the incremental development strategy that has been an issue in the pharmaceutical industry. Most notably, Indian patent law contains the controversial section 3(d), which makes it much more difficult for a patent owner to enjoy continued patent protection in pharmaceuticals for incremental development (and thereby, it is argued, make it easier for the generic pharmaceutical industry in India to operate).

With respect to Monsanto's bio-engineered new generation of seeds, the issue then becomes whether we are talking about material improvements in product or "mere" incrementalism backed by the threat of enforcement of patent rights. If the former, Monsanto's effort to extract a higher price will seem reasonable. If the latter, however, one can foresee a time in the not-too-distant future where Monsanto's current patent munificence will be viewed as a Trojan horse intended simply to accelerate (unjustified?) price increases in its seed products.

Find the Seeds?

Wednesday, 24 March 2010

UK Budget - quick review of IP-related announcements

Three main points - plus some more investment in green technology, but that's not specifically aimed at new IP.

Following consultation on design, the Government will introduce a tax relief for the UK video games industry, subject to state aid approval from the European Commission. No more detail than that, but it will presumably be similar to the film/sound recordings reliefs.

The Government is creating a £270 million Higher Education Modernisation Fund in 2010-11. This fund will enable universities to identify and drive efficiencies in the sector and fund an extra 20,000 undergraduates on courses starting in September 2010, with priority given to key subjects like science, technology, engineering and mathematics.

A little more news on the patent box announced in the 2009 Pre-Budget Report:
The Government will work with business to design a practical and competitive regime for patents to support the UK's strengths in innovative industries. This will include looking at how to identify and value embedded patent income and how to give relief to acquired patents. In addition to patents granted after legislation is passed in 2011, the consultation will also consider how to include patents not yet commercialised at that point, and how the regime will apply to equivalent overseas patents held by UK companies. The Government will be consulting with business over the summer.

More details to follow if I find any on digging through the press releases ..

Tuesday, 23 March 2010

"Film" includes the copyright in it for tax purposes, says Court of Appeal

Last week the Court of Appeal, England and Wales, in Micro Fusion 2004-1 LLP v Revenue & Customs Commissioners [2010] EWCA Civ 260 (not yet on BAILII, but noted on Lawtel), had to consider the meaning of the word "film" for the purposes of the Finance (No. 2) Act 1992, section 42 -- the film in question being Mrs Henderson Presents.

This was an appeal by Micro Fusion against a decision relating to the deduction of film production costs. In its tax return for the year ended 5 April 2005 Micro Fusion had sought to deduct from its profits and gains from trade or business the costs it incurred in the production of a film, under the Finance (No. 2) Act 1992 section 42 and the Finance (No. 2) Act 1997 section 48. The commissioners rejected this claim on the grounds that Micro Fusion's trade or business did not consist of or include "the exploitation of films" for the purposes of section 42 and that, even if it did, the film in question constituted "trading stock" as defined in the Income and Corporation Taxes Act 1988 section 100(2).

Micro Fusion appealed and the commissioners raised an additional ground: that the Finance Act 2005 section 60 reduced the amount of any relief to which Micro Fusion was otherwise entitled. The commissioners submitted that the concept of "films" in section 42 comprised only the physical record on or in which the sequence of images was embodied and that the substance and effect of a distribution and commissioning agreement (DCA) entered into by Micro Fusion was that it had sold the master negative of the film for at least a 21 year period. This being so, it was not exploiting the film. Micro Fusion disagreed, arguing that a "film" included the intellectual property rights in it and that, by entering into the DCA, under which it retained a residual or reversionary interest in the master negative, Micro Fusion had exploited its interest in the rights it held in the film.

The Court of Appeal (Sir Andrew Morritt, Lords Justices Rimer and Etherton) allowed Micro Fusion's appeal. In its view,

* the word "film" in section 42 was to be construed in accordance with the definition of the same word in the Films Act 1985 Sch.1 para.1. In that context "film" was not confined to the master disc, negative or tape and included the intellectual property rights -- it was a compendious word and its meaning was not confined to, and did not require, the inclusion of ownership of the original physical record;

* it was self-evident that the value in a film susceptible of exploitation lay in the copyright, not in the physical embodiment of the sequence of images.

* it was not the case that the intellectual property rights could only be exploited through ownership of the original physical record.

* Micro Fusion did exploit the film under the DCA since the concept of exploitation did not exclude an outright disposal.

* whatever the position in respect of the master negative, under the DCA Micro Fusion had not made an outright disposal of the copyright and exploitation of the film was its trade or business within the meaning of section 42(1).

* the film was not actually "trading stock" because Micro Fusion retained the copyright in it, and the only disposals were a 21-year licence under the copyright and an option to buy it at the expiration of the term of the licence. Accordingly section 42 did not operate so as to preclude the deduction of expenditure from the profits of Micro Fusion's trade or business.

Thursday, 18 March 2010

Update on the UNCITRAL secured transaction project

It has been a while since we last reported on where things stand with the proposed IP Supplement to the 2007 UNCITRAL Legislative Guide on Secured Transactions setting out recommendations for a uniform legal regime for secured financing. The following is an update on this project since our last update in October.

Working Group session in Vienna, November 2009

Following the London seminar of 14 October 2009 on IP rights and the UNCITRAL secured transaction project, the Working Group (“WG”) session in Vienna last November improved the language of the IP Supplement considerably, adding some helpful explanations regarding a number of points that were discussed at the seminar. The improved wording concerns in particular the issues of automatic termination clauses and acceleration clauses in licence agreements, as well as the integrity of licence agreement provisions and the secured creditor’s inability to acquire greater rights in an encumbered asset than the rights the grantor has. However, the WG did not reach agreement on two remaining issues of concern that were also discussed at the October seminar: 1) the issue of “ordinary course of business” exceptions, and 2) the choice of law question.

Working Group session in New York, February 2010

This session – the final WG session where the IP Supplement was scheduled for discussion on substance - was mainly about finding a solution on the two key remaining issues:

Issue # 1: Ordinary course of business: the “ordinary course of business” exception (an exception unknown under IP law) on the purchase of IP, intended for consumers to take copyrighted software free of any security interests that the vendor might have granted in the IP.

At this session, the WG was able to resolve this issue fairly quickly, agreeing on compromise wording to replace the previous, rather detailed recommendation focusing on software (included in doc. no. A/CN.9/WG.VI/WP.42/Add.4 dated 26 November 2009), as follows:

"The law should provide that the rule in Recommendation 81(c) applies to the rights and remedies of a secured credit under this law and does not affect the rights and remedies the secured creditor may have under the law relating to intellectual property."

The Guide in Recommendation 81, subparagraph (c) provides that an ordinary course licensee takes its rights unaffected by a security right previously granted by the licensor. The effect of this rule is that in the case of enforcement of the security right by the licensor’s secured creditor, the secured creditor cannot terminate the “ordinary course” licensee, as long as the licensee performs the terms of the licence agreement. All the secured creditor can do is to continue to collect royalties owed by the licensee to the licensor.
The new compromise wording essentially refers matters to the Guide’s Recommendation 4(b) - the overall rule clarifying that where the Guide is inconsistent with IP law, it does not apply. IP commentators have noted that this constitutes an acceptable compromise as it leaves the secured creditor with the possibility to sue the licensee in case of infringement of the IP right in question – with the important proviso that the underlying financing agreement must be drafted in a way that allows the secured creditor to do so.

Issue # 2: Choice of law: the question of which law is to apply, the law of the state(s) in which the IP is protected or the law of the state where the grantor of the security interest is located, which could create problems with chain of title searches and debtor allocation where there are multiple rightholders and/or creditors in different countries.

The WG could reach no consensus on this issue and a decision was made to defer the matter for further consideration to the UNCITRAL Commission which is to make a final decision at its next meeting in June/July when the IP Supplement is scheduled for finalisation and adoption. At the WG session a total of 6 different options to deal with the issue were discussed. All options would apply a different mix of lex protectionis and the grantor’s location law for the different proprietary matters the Guide deals with (the law applicable to the creation; effectiveness against third parties; priority as against the rights of competing claimants; and enforcement of a security right). Some of the options would also differentiate between registered and unregistered IP rights. Out of the 6 options discussed, the WG agreed that 4 options (with one option entailing two different versions) should be presented to the Commission.

Spring time at UNCITRAL ?


It will be interesting to see how the Commission will deal with this impasse. At the WG session it was noted that it is important to reach agreement on one option only, as otherwise a different rule would apply depending on the conflict-of-laws rule of the forum state, a situation which would perpetuate the currently prevailing uncertainty. If no agreement can be reached on an IP-specific recommendation, the general recommendations of the Guide as to the law applicable to security rights in intangible assets would apply - see recommendations 208 and 218, subparagraph (b) of the Guide.

Licensee and Equity

Two UK technology licensing companies have recently announced deals in which they have sold both a technology licence and a stake in the company to an overseas manufacturer.

Automotive transmission company Torotrak plc have received £8.44 million from Allison, a US-based manufacturer of truck transmissions. According to the press release, the payments have provided Allison with non-exclusive licence rights over Torotrak’s full-toroidal traction drive technology in the medium-sized commercial vehicle together with options to secure global manufacturing and sales exclusivity in this sector (except for Torotrak’s existing licensees in this field). The payments were made as part of a deal under which Allison also paid £2.4 million to acquire 10% of the previously issued share capital in Torotrak.

Loudspeaker and touch sensor company NXT plc have announced a placing of new shares with Japanese touch screen manufacturer Nissha Printing Co. Ltd. In 2008, Nissha paid a £1.2 million up front fee for an exclusive worldwide licence to use NXT’s haptic and associated bending wave technology in certain small touch screen applications.

Recent financial reports suggest that neither company has made a profit this year. The licensees’ investments should ensure that the companies are able to provide the licensees with any technical support they need in order to successfully bring the licensed technologies to market.

What is a "sample"? CJ opinion next month

The Advocate General's Opinion in Case C-581/08 EMI Group Ltd v The Commissioners for Her Majesty's Revenue & Customs, a reference to the Court of Justice for a preliminary ruling, will be delivered on 15 April. The reference is not a copyright issue, since it turns on the interpretation of Sixth Council Directive 77/388 (on the harmonization of the laws of the Member States relating to turnover taxes - Common system of value added tax: uniform basis of assessment). However, it relates to the manner in which recorded materials have been used-- the giving of samples of recorded music that are not generally available to the public in order to boost sales and to promote artists --and to the tax liability for such forms of marketing. The questions before the court are as follows:

"How is the last sentence of Article 5.6 of the Sixth Directive to be interpreted in the context of the circumstances of the present case?
In particular, what are the essential characteristics of a "sample" within the meaning of the last sentence of Article 5.6 of the Sixth Directive?
(c) Is a Member State permitted to limit the interpretation of "sample" in the last sentence of Article 5.6 of the Sixth Directive to-
(i) an industrial sample in a form not ordinarily available for sale to the public given to an actual or potential customer of the business (until 1993),
(ii) only one, or only the first of a number of samples given by the same person to the same recipient where those samples are identical or do not differ in any material respect from each other (from 1993)?
(d) Is a Member State permitted to limit the interpretation of "gifts of small value" in the last sentence of Article 5.6 of the Sixth Directive in such a way as to exclude-
(i) a gift of goods forming part of a series or succession of gifts made to the same person from time to time (to October 2003),
(ii) any business gifts made to the same person in any 12-month period where the total cost exceeds £50 (October 2003 onwards)?
(e) If the answer to question (c)(ii) above or any part of question (d) above is "yes", where a taxable person gives a similar or identical gift of recorded music to two or more different individuals because of their personal qualities in being able to influence the level of exposure the artist in question receives, is the Member Stale permitted to treat those items as given to the same person solely because those individuals are employed by the same person?
(f) Would the answers to questions (a) to (e) above be affected by the recipient being, or being employed by, a fully taxable person, who would be (or would have been) able to deduct any input tax payable on the provision of the goods consisting of the sample?"

Wednesday, 17 March 2010

Tommy goes to PVH for $3bn

It has been widely reported (see eg brancchannel here) that Phillips-Van Heusen has paid somewhere in the region of $3 billion in cash and stock for fashion brand Tommy Hilfiger.

Is this money well-spent? Phillips-Van Heusen is no stranger to investment in fashion and clothing brands since its portfolio already contains Arrow, Calvin Klein and Izod, and the company's judgment appears to be backed by a respectable track record. However, there is always a risk that 1 + 1 will not always give you 2 and that the success of one brand in the stable may be at the expense of other brands held by the same owner. In a resurgent market, where consumer spending is on the rise, there is less danger of this happening -- but the market is not conspicuously buoyant at present. Likewise, where brands are geographically complementary, one is less likely to tread on the toes of the others -- but as globalisation and e-sales continue to shrink the world into an increasingly unitary marketplace, the benefits of geographic complementarity diminish. Let's watch and see what happens next.

Tuesday, 16 March 2010

Art as Art; Art as Income Stream; Art as Collateral

It is unusual when a photography collection becomes the focus of a publicized debt workout. It is for that reason that we have been following for some time the financial woes of the well-known photographer Annie Leibovitz. Leibovitz is perhaps most famous for the picture that appeared in Vanity Fair magazine of a largely exposed and pregnant Demi Moore, and that of John Lennon and Yoko Ono in a conjointly curled position, apparently only hours before the singer's tragic death. The story itself makes for interesting reading regarding the interplay between art and finance.

In July 2009 the artist was sued by Art Capital, whom she owed a large sum of money in repayment of a loan. In particular, the artist had allegedly refused to cooperate in the sale of certain of photographs (as well as various pieces of real estate), which presumably had been offered as collateral for the loan. That segment of the legal saga was resolved in September 2009, when Leibovitz paid an unspecified amount in exchange for regaining control of these assets, in exchange for which the lawsuit was dropped and the loan was extended.

Now, as reported in Bloomberg.com on March 13, under the title "How Leibovitz Found New Partner for $24 Million Debt, Archive", a new financial actor has come on stage to assist Ms Leibovitz. According to the report, an LA-based private equity firm called Colony Capital reached agreement on March 8 with Art Capital. In its place, the artist has entered into a new agreement with Colony Capital. The details of the new arrangement were not revealed, but the report suggests that Colony could see income from both the sale of the artist's current photographs as well as enabling Leibovitz to renew her artistic endeavors and thereby to get a cut from revenues received from sales of such future photographs.

One can only speculate how much pressure there might be on Leibovitz to create a new portfolio of photos, sooner rather than later, that can attract purchasers in an amount that is consistent with the financial arrangements between Colony and herself. After all, as noted in the article, "Colony is the business of making money .... They've got to structure it in a way that they are compensated." Will she be more creative, or less creative, than usual, or will not not matter?

If so, it gives rise to that question the question of how financial exigencies will affect the creative impulse of the artist, especially if there is a misalignment between the artistic and the financial timelines. Moreover, one wonders how the market for her photos might be affected by this news. The artist's dealer claims that her individual photos sell for between $8,500 and $50,000. If so, can those prices be maintained in a situation where there is a perception that their sale is driven by external factors framed by the restructuring arrangement?

After all, while the commercial world has its own dynamic, it is still a market. When one adds to that the overlay of the financial restructuring of the artist's debt, as reported in the article, the way that the market for her photographs, at least for the near term, will play out can hardly be predicted.

Prices Go Up; Prices Go Down

Friday, 12 March 2010

How much is the use of "Lindsay" worth?

"Lindsay Lohan wants $100M over E-Trade ad" is the headline of an article by Kieran Crowley in the NY Post (thanks, Miri Frankel, for the link). The article reports that actress, model, singer and general purpose celebrity Lindsay Lohan is commencing legal proceedings against financial company E-Trade before the Nassau County Supreme Court. Ms Lohan maintains that a boyfriend-stealing, "milkaholic" baby in its latest commercial -- who happens to be named Lindsay -- was modelled on her. Damages of $100 million are sought for her pain and suffering.


The advertisement in question is part of a series starring babies who play the stock market. It depicts a boy apologizing to his girlfriend via video chat for not calling her the night before.
"And that milkaholic Lindsay wasn't over?" the baby girl asks him suspiciously. "Lindsay?" the boy replies, just before a baby girl sticks her head into the frame and slurs, "Milk-a-what?"

According to Stephanie Ovadia, the attorney acting for Ms Lohan, her client has the same single-name recognition as Oprah or Madonna: "Many celebrities are known by one name only, and E-Trade is using that knowledge to profit".

Without prejudice to the issue of liability, the interesting issue is the claim for damages and the basis of its assessment. While it is stated that "since the spot was seen by hundreds of millions of people watching the Super Bowl and Winter Olympics finals, the firm has garnered great profits". It does not appear however that an account of profits is sought. It would be good to see a judicial inquiry into damages, given Neil Wilkof's thoughtful piece on this blog earlier on the changing face of Super Bowl advertising. Maybe we would then get some guidance as to the quantification, in terms of profit, of advertising which both boosts immediate sales and -- to the extent that it still does so -- enriches the brand's equity.

In any event, the convenient and arbitrary figure of $100 million is sought, this being made up of $50 million in exemplary damages, plus another $50 million in compensatory damages. IP Finance looks forward to the next developments.

Wednesday, 10 March 2010

The brand cameo matrix

Writing for brandchannel ("Product Placement In 2009 Oscar-Nominated Films: An Approval Matrix", here), Abe Sauer comes up with this a-picture-is-worth-a-thousand-words diagrammatic representation of the fluctuating fortunes of those brands whose strategic product placement in Oscar-nominated movies was designed to provide market-positive exposure to the right sort of consumer. What it would be good to know next is how much was paid for each brand cameo and what sort of return one might expect on one's investment in product placement in even the more successful of the year's films.

Tuesday, 9 March 2010

“Brands and the Cost of Corporate Conscience”: a special event

“Brands and the Cost of Corporate Conscience” is the title of a special IP Finance seminar to celebrate World Intellectual Property Day, Monday 26 April. The speaker is the dynamic and thought-provoking Marjolijn Vencken (Trouble in Paradise, The Hague, The Netherlands), whom some of you may have heard speak at the MARQUES Conference last autumn in Brighton. The venue is the London office of Olswang LLP, 90 High Holborn. Doors open at 12.30pm and Marjolijn speaks at 1pm. Chairing the event is barrister, author and Appointed Person Amanda Michaels (Hogarth Chambers), whose new book -- A Practical Approach to Trade Mark Law, co-authored with Andrew Norris -- is coincidentally published by Oxford University Press this week.


We have the use of the venue till 2.30pm, so there's plenty of time to stay and discuss the talk afterwards. Refreshments are provided. If you'd like to attend, admission is FREE but can you please email Emma Killick here to let her know you're coming, making sure your email has the subject title "Brand Conscience". The room holds 100 but, in the event that we're oversubscribed, we'll have a ballot!

For those of you who don't yet know Marjolijn, here's a brief biography. Having obtained a law degree from Radboud University Nijmegen, she trained at the Institute for Policy Analysis (IFPA) in Washington D.C. where she monitored European government policy and analyzed its impact on companies operating in the United States. She was responsible for the brand strategies of different multinationals such as Heineken, Sarah Lee, Mars, KPN, Toyota and Delta Lloyd Group. At Trouble in Paradise she develops sustainable strategies within the brand by letting companies combine their organisational goals, their consumers’ lifestyle and communication in order to achieve economical performance with large societal profit. What are the issues and strategies used by experts in terms of filing trade marks and improving brand image? How do you revitalize a well-known brand without damaging its reputation? How do you create and maintain a sustainable brand? Marjolijn advises companies in their journey towards doing more responsible business.

The IP Finance weblog wishes to thank Olswang LLP and Hogarth Chambers for their part in making this lovely event possible.

Monday, 8 March 2010

E-books and the Challenge of Price

The Apple announcement of the iPad tablet has raised the question whether the hardware portion of the e-book market will be dominated by a dedicated reader or a multi-purpose device with e-book functionality. In addition to Apple, the sheer diversity of entrants into the e-book space, ranging from device manufacturers such as Sony, online purveyors such as Amazon, and book retailers such as Barnes & Noble, indicates the extent, to which the e-book platform is viewed, correctly or incorrectly, as a likely staple of how people will receive and read books and other contents in the near future.

No matter who wins, however, there still remains the question of how the e-book platform will impact on the traditional stakeholders in the publishing business, i.e., authors and publishers.The view is often taken the e-book is inherently a less costly production and distribution platform than the traditional book. The reason would at first glance appear to be obvious: with no printing, storage or shipping costs, the cost of an e-book must surely be set for a downward trajectory, with the result that books will become less expensive for publishers and therefore for consumers. This is supposedly true, even after one factors in the initial outlay for the reader device.

In truth, however, the situation is not so clear, as explained by Motoko Rich of the New York Times in a article that appeared on March 1 entitled "Math of Publishing Meets the e-Book". Rich notes that, while it appears that e-book titles will cost less their traditional counterpart, "... publishers also say consumers exaggerate the savings and [more importantly--NJW] have developed unrealistic expectations about how low the prices of e-books can go." Against this background, Rich goes on to consider the cost implications of producing and distributing an e-book and reaches some interesting conclusions.

As described by Rich, in order to understand the cost structure for the publisher, let's use a hardback book at a retail price of $26.00 as our baseline. The bookseller will pay the publisher half of that amount-$13. From that sum, the publisher pays $3.25 for print, storage and shipping (including returns). Printing and production functions such as cover design, typesetting and copy-editing, costs the publisher another 80 cents. Marketing will amount to a $1.00 or so, going up or down depending upon the title. Economies of scale on a per unit of book basis will also kick-in.

Let's not forget the author, of course. Assuming a royalty rate of 15%, the publisher must expend another $3.90. If an advance to the author has also been agreed-upon, there is a front-end outlay that may, or may not, be recouped against against royalties. This brings the net amount for the publisher to $4.05. From that the publisher still has to pay for office space and utilities. Based on the foregoing, it is easy to see why, for the traditional retail publishing business, blockbusters are crucial for financial success.

Will it always have a price?

And what about e-books? According to Rich, using the reported agreement with Apple, the following price scenario applies. The publishers will fix the price (although there have been some tension on this point), and the e-book retail platform then serves as an agent, with a commission of 30% per sale. Using a $12.99 baseline price (though there is no firm notion of what the price point range will be), the publisher is left with $9.09, from which he has costs of approximately 50 cents for file conversion and digital typesetting, plus an additional 78 cents. The author's royalty will a matter of negotiation, of source. Rich posits a 25% royalty on either gross revenue or the consumer price. All of this leaves the publisher with an amount in the realm of $4.56 to $5.54, to which overhead and related expenses must then be covered.

This looks like a good deal with the publisher. Not so fast though. C0ntrary to my impression, Rich suggests that publishers recoup costs and make material profits in the paperback segment of the book business. That argues in favor of a mixed model, where both the traditional book
industry and the e-book business will co-exist. However, if the price for the e-book product is similar to the price of a paperback book, the result may be that the paperback industry is severely hurt, eroding the profit potential for the traditional book industry. Whether the hardback market will itself then survive is a question.

Based on the foregoing, we can think of a number of less than socially desirable outcomes in an e-book world. First, there may well be a "e-book reader/computer tablet" divide between the haves and have-nots of the hardware device. Second, it remains to be seen whether the e-book space will allow for the kind of marketing and distribution that allow the traditional book business to introduce authors as well as provide the socio/tactile experience that only takes place in a bricks and mortar bookstore. If the traditional book business shrivels, the combined upshot may be fewer with the resources and access to books, and less choice for those lucky enough to have both the resources and ready access to book contents.

This may be nothing compared with the e-book divide

One thing is clear--we are only in the infancy of the e-book world, with consequences both benign and malign, socially beneficial and socially harmful, intended and unintended, before us.

Wednesday, 3 March 2010

Valuation of copyright in drawings and equipment manuals

A correspondent has written to ask the following:

"I have a question relating to valuation of copyrights in drawings and instruction manuals of plant and equipment (e.g. machinery).

Is the value of the copyright separately identifiable from the plant and equipment or is the value inherent in the value of plant and equipment?

If it is separately identifiable, then how does one value the copyright if there is no market for these drawings and instruction manuals?"
I suspect that readers of this weblog may have some useful guidance for our correspondent. Please post your comments below, if possible, of email them to me here.

Does download dip denote disaster?

In his article for FT Online, "Demand Dips for Online Films", Matthew Garrahan observes that recent research shows a decline in US consumer demand for movies online -- the business model on which the movie industry was pinning its hopes as an income replacement scheme to deal with plummeting sales of once-popular physical DVDs. While sales of digital films rose sharply in 2007 and 2008, media research group Screen Digest reports that 2009 sales, predicted to hit $360m for 2009, crept in at a modest $291m. Whether (as Screen Digest suggests) consumers have been deterred by an array of competing online platforms that prevent viewers from watching digitally downloaded films on the devices of their choice, or whether some other factor is at play -- P2P, pirate products or just download fatigue -- is unclear to this writer. Adds Garrahan (and this is perhaps the worst news):

"The private equity and hedge fund money that poured into the industry fuelling a production boom has evaporated following the financial crisis, leaving the studios desperate for new revenue sources".