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Security interests in intellectual property: proposals for reform

Published online by Cambridge University Press:  02 January 2018

Sean Thomas
Sean Thomas*
Affiliation:
Durham University
*
Correspondence to: Sean Thomas, Senior Lecturer in Law, Durham Law School, Palatine Centre, Stockton Road, Durham DH1 3LE, UK. Email: [email protected]
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Abstract

This paper considers some of the difficulties arising from how English law conceptualises certain types of security interests over IPRs, and the problems arising from dual registration systems. This analysis is informed by a critical comparison of the current English doctrine, alongside the US system and the proposals from UNCITRAL. It is argued that attempts to regulate a world of integrated goods (whereby goods and software are inextricably interconnected), through unintegrated regimes of legal governance of security interests over goods and IPRs, is unsustainable. It will thus be argued that reform of security interest law generally (to bring about a functional system of security) and a single register for security interests whether over goods or IPRs is necessary. Specific recommendations to deal with problems concerning purchase money security interests, and third-party purchasers, are put forward.

Type
Research Article
Information
Legal Studies , Volume 37 , Issue 2 , June 2017 , pp. 214 - 247
Copyright
Copyright © Society of Legal Scholars 2017

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Footnotes

*

Aspects of this paper were written during a period of academic study leave granted by the University of Leicester, for which I am grateful. A version of this paper was presented at Queen Mary University in February 2014, and I thank the participants there for their helpful comments. I would also like to thank Dr Daniel Attenborough, Professor Sir Roy Goode, Dr Albert Sanchez Graells and Dr Paolo Vargiu for their valuable comments. The author is a member of the Secured Transactions Law Reform Project (http://securedtransactionslawreformproject.org/) and agrees with its aims and objectives. This paper represents the author’s personal view and is not necessarily representative of the Project’s perspective on security over IPRs. All URLs were last accessed on 17 October 2016.

References

1. Lipson, JC ‘Financing information technologies: fairness and function’ [2001] Wis L Rev 1067 at 1068Google Scholar.

2. For the purposes of this paper, a security interest is taken to simply mean an interest over an asset that secures an obligation. This paper does not aim to provide an exhaustive outline of the English law of security interests: the reader is directed to the standard texts on such matters. The discussion of the conceptual problems with protecting security over IPRs, below at text following n 59, examines the types of security interest relevant to this specific topic. For a useful recent analysis of security interests, see GG Castellano ‘Reforming non-possessory secured transactions laws: a new strategy?’ (2015) 78 Mod L Rev 611 (arguing in favour of the UNCITRAL system generally).

3. Allen and Overy LLP made this point in their submission to I Hargreaves Digital Opportunity: A Review of Intellectual Property and Growth (May 2011), available at http://tinyurl.com/mql4pjy, but the Hargreaves Review did not discuss the issue.

4. Cf Davies, I ‘Technology-based small firms and the commodification of intellectual property rights’ in de Lacy, J (ed) The Reform of UK Personal Property Security Law: Comparative Perspectives (Abingdon: Routledge-Cavendish, 2010) p 308 at p 309Google Scholar, noting that this issue was not considered in A Gowers Gowers Review of Intellectual Property (December 2006).

5. Townend, DMR Using Intellectual Property as Security (London: The Intellectual Property Institute, 1996)Google Scholar.

6. See eg A Tosato ‘Security interests over intellectual property’ (2011) 6 J Intel Prop L & Practice 93 at 94 fn 7.

7. Henry, M ‘Mortgages of intellectual property in the United Kingdom’ (1992) 14 Eur Intel Prop Rev 158 at 158Google Scholar.

8. Bridge, M et al The Law of Personal Property (London: Sweet & Maxwell, 2013) at para 26-001Google Scholar.

9. Beale, H et al The Law of Security and Title-Based Financing (Oxford: Oxford University Press, 2nd edn, 2012) at paras 1.13, 7.73Google Scholar.

10. Cf Davies, above n 4, at 308–309; Tosato, above n 6, at 93 fn 4. See also Scottish Law Commission Discussion Paper on Moveable Transactions (DP 151, June 2011) p 246; A Orr and T Guthrie ‘Fixed security rights over intellectual property in Scotland’ (1996) 18 Eur Intel Prop Rev 597.

11. J Lipton ‘Security interests in intellectual property’ in de Lacy, above n 4, p 285 at p 288.

12. Cf Beale et al, above n 9, at paras 14.61–14.76; W Cornish, D Llewellyn and T Aplin Cornish, Llewellyn & Aplin: Intellectual Property: Patents, Copyright, Trade Marks and Allied Rights (London: Sweet & Maxwell, 8th edn, 2013) (no discussion of the issue); Bently, L and Sherman, B Intellectual Property Law (Oxford: Oxford University Press, 4th edn, 2014) pp 300–301 CrossRefGoogle Scholar (copyright), 645 (patents), 1097–1110 (trade marks).

13. Barry, PR ‘Software copyrights as loan collateral: evaluating the reform proposals’ (1994–1995) 46 Hastings L J 581 at 584Google Scholar.

14. Davies, above n 4, at 308.

15. Ghosh, S ‘The morphing of property rules and liability rules: an intellectual property optimist examines Article 9 and bankruptcy’ (1997–1998) 8 Fordham Intel Prop, Media & Ent L J 99 at 101Google Scholar.

16. See eg Davies, above n 4, at 308; Bromfield, V and Runeckles, J ‘Taking security over intellectual property: a practical overview’ (2006) 28 Eur Intel Prop Rev 344 at 344Google Scholar.

17. This ‘non-usability’ may be a consequence of law: Microbeads SA v Vinhurst Road Markings [1975] 1 Lloyd's Rep 375.

18. Niblett v Confectioners’ Materials Co Ltd [1921] 3 KB 387; Accurist Watches Ltd v King [1992] FSR 80 (ChD) at 87–88 (Millett J).

19. Eagles, I and Longdin, L Refusals to License Intellectual Property: Testing the Limits of Law and Economics (Oxford: Hart Publishing, 2011) p 119 Google Scholar. See also eg Burk, DL ‘Copyright and the new materialism’ in Lai, J and Maget, A (eds) Intellectual Property and Access to Im/material Goods (Cheltenham: Edward Elgar, 2016) ch 2Google Scholar.

20. Desai, DR ‘The new steam: on digitization, decentralization, and disruption’ (2014) 65 Hastings L J 1469 at 1481Google Scholar.

21. Robinson, WK ‘Patent law challenges for the internet of things’ (2015) 15 Wake Forest J Bus & Intel Prop L 655 at 657Google Scholar.

22. Ibid, at 661–662.

23. M Prigg ‘Google's Eric Schmidt claims the “Internet will disappear” as everything in our life gets connected’ Dailymail.com (22 January 2015), available at http://tinyurl.com/lzhvxql. See further eg M Chui, M Löffler and R Roberts ‘The internet of things’ (March 2010), available at http://tinyurl.com/n4ksysw; B Wasik ‘In the programmable world, all our objects will act as one’ (14 May 2013), available at http://tinyurl.com/kbrylt5; WK Hon, C Millard and J Singh ‘Twenty legal considerations for clouds of things’ Queen Mary School of Law Legal Studies Research Paper no 216/2016 (4 January 2016), available at http://ssrn.com/abstract=2716966. The internet of things is part of the EU's digital agenda: see https://ec.europa.eu/digital-single-market/en/internet-things; http://www.internet-of-things-research.eu/. It also has potential for the development of circular economies: see eg Ellen MacArthur Foundation Intelligent Assets: Unlocking the Circular Economy Potential (8 February 2016), available at http://www.ellenmacarthurfoundation.org/publications.

24. See eg Thomas, S ‘Goods with embedded software: obligations under Section 12 of the Sale of Goods Act 1979’ (2012) 26 Int Rev L, Computers & Tech 165 CrossRefGoogle Scholar; Thomas, S ‘Sale of goods and intellectual property: problems with ownership’ (2014) Intel Prop Forum 25 Google Scholar; Robinson, above n 21, at 659: with the internet of things, ‘technology will rely heavily on software’.

25. See eg Desai, DR and Magliocca, GN ‘Patents, meet Napster: 3D printing and the digitization of things’ (2014) 102 Geo L J 1691 Google Scholar; D Mendis ‘“The Clone Wars”: episode 1 – the rise of 3D printing and its implications for intellectual property law: learning lessons from the past?’ [2013] 35 Eur Intel Prop Rev 155.

26. Robinson, above n 21, at 662. Hon et al, above n 23, at 5–8 simply use the term ‘thing’, which is followed in GN La Diega and I Walden ‘Contracting for the “internet of things”: looking into the nest’ Queen Mary School of Law Legal Studies Research Paper no 219/2016 (1 February 2016), available at http://ssrn.com/abstract=2725913.

27. K Manwaring and R Clarke ‘Surfing the third wave of computing: a framework for research into networked eObjects’ (2015) 31 Computer L & Sec Rev 586 at 599.

28. Ibid.

29. Ibid, at 601.

30. Cf Robinson, above n 21, at 661: the internet of things ‘is a paradigm shift from Internet Age technology’.

31. See eg http://www.bbc.co.uk/news/technology-33978561 (September 2015) (various articles considering the impact of intelligent machines).

32. See eg Surden, H ‘Technological cost as law in intellectual property’ (2013) 27 Harv J L & Tech 135 at 138Google Scholar.

33. Ibid, at 178–182. See also Desai, above n 20, at 1481: ‘as soon as digitization offers a method of control, it will be exerted’. See further JP Liu ‘Paracopyright – a peculiar right to control access’ and Dusollier, S ‘The protection of technological measures: much abo about nothing of silent remodelling of copyright?’ in Dreyfuss, RC and Ginsburg, JC (eds) Intellectual Property at the Edge: The Contested Contours of IP (Cambridge: Cambridge University Press, 2014) chs 11–12Google Scholar.

34. K Wiens ‘We can't let John Deere destroy the very idea of ownership’ Wired Business (21 April 2015), available at http://www.wired.com/2015/04/dmca-ownership-john-deere/.

35. For a valuable overview of the debates in this area, and a provocative suggestion to resolve the debate, see eg Green, S and Saidov, D ‘Software as goods’ [2007] J Bus L 161 Google Scholar. See also Moon, K ‘The nature of computer programs: Tangible? Goods? Personal property? Intellectual property?’ [2009] 31 Eur Intel Prop Rev 396 Google Scholar; Marsoof, A ‘Digital content and the definition dilemma under the Sale of Goods Act 1979: will the Consumer Rights Bill 2013 remedy the malady?’ (2014) 9 J Int'l Com L & Tech 285 Google Scholar.

36. See eg Rowland, D, Kohl, U and Charlesworth, A Information Technology Law (Abingdon: Routledge, 2012) ch 10Google Scholar.

37. Lipson, above n 1, at 1121 n 286.

38. Below text following n 204.

39. K Manwaring ‘A legal analysis of socio-technological change arising out of eObjects’ UNSW Law Research Paper no 2016-15 (5 January 2016), available at http://ssrn.com/abstract=2690024.

40. There is no mention of this issue in eg Manwaring and Clarke, above n 27; Manwaring, above n 39. Hon et al, above n 23, at 15–17, and La Diega and Walden, above n 26, at 7 indicate various potential issues concerning ownership and control, but not the problems concerning security interests discussed here.

41. This paper will not be covering consumer law issues either generally or in light of the Consumer Rights Act 2015, not least because the obligation to have the right to supply digital content (s 41) is functionally identical to SGA s12. It is also noted that while the definition of ‘digital content’ in s 2(9) of that Act would align that concept with the notion of embedded software, it continues the increasingly dated delineation of goods and software.

42. Lipton, above n 11, at 287–300 (while there are significant differences between IPRs, there are three broad groups: (1) copyrights, patents and trade marks; (2) sui generis statutory IP, such as design rights and semiconductor topography rights; and (3) quasi-IP, such as trade secrets, confidential information, domain names and unregistered trade marks). This paper focuses on the first group, but the other types are considered on an ad hoc basis. See also eg X-TN Nguyen ‘Commercial law collides with cyberspace: the trouble with perfection – insecurity interests in the new corporate asset’ (2002) 59 Wash & Lee L Rev 37 (arguing that domain names can and should be subject to security interests). For the substantive meaning and content of IP law, the reader is directed towards the standard texts on IP.

43. WJ Murphy and T Ward ‘Proposal for a centralized and integrated registry for security interests in intellectual property’ (2001–2002) 41 IDEA 297 at 301; I Davies ‘Secured financing of intellectual property assets and the reform of English personal property security law’ (2006) 26 Oxford J Legal Stud 559 at 576; M Elliot ‘IP creates jobs for America’ Global Intellectual Property Centre (25 May 2012), available at http://tinyurl.com/npq77g9. See further I Davies ‘Patent grants, signals and commodification: a legal dilemma?’ in I Davies (ed) Issues in International Commercial Law (Aldershot: Ashgate, 2005) pp 53–61 (assessing the correlation between patent grants and economic activity); M Bridge Personal Property Law (Oxford: Clarendon Press, 4th edn, 2015) p 14: the importance of IPRs ‘can barely be overestimated in modern commercial conditions’.

44. AL Diamond A Review of Security Interests in Property (London: HMSO, 1989) at para 8.1.5.

45. See eg Davies, above n 43, at 574–575; Heymann, LA ‘Overlapping intellectual property doctrines: election of rights versus selection of remedies’ (2013) 17 Stan Tech L Rev 241 Google Scholar. See also eg Intellectual Property Office, Department for Business Innovation & Skills ‘The government's response to the Law Commission's Report (Law Com 346) “Patents, Trade Marks and Design Rights: Groundless Threats”’ (London: BIS, 26 February 2015), available at http://tinyurl.com/kytt7t3; Law Commission Patents, Trade Marks and Design Rights: Groundless Threats Law Com No 346 (London: Law Commission, 2014).

46. Lipton, above n 11, at 303; RJ Mann ‘Secured credit and software financing’ (1999–2000) 85 Cornell L Rev 134 at 139.

47. Your Response Ltd v Datateam Business Media Ltd [2014] EWCA Civ 281 (not possible to exercise a lien over an electronic database), following OBG Ltd v Allan [2007] UKHL 21, [2008] 1 AC 1.

48. Mann, above n 46, at 177–179.

49. Mann, RJ ‘Strategy and force in the liquidation of secured debt’ (1997) 96 Mich L Rev 159 at 181CrossRefGoogle Scholar

50. Mann, above n 46, at 178 fn 178. Termination of the use of software by a seller may infringe the Sale of Goods Act 1979, s 12(2)(b): Rubicon Computer Systems Ltd v United Paints Ltd (2000) 2 TCLR 453. The position of secured parties is unclear in this case.

51. Lipson, above n 1, at 1156–1157. See also eg M Bezant ‘The use of intellectual property as security for debt finance’ (1998) 1 J Knowledge Mgmt 237 at 253; Ghosh, above n 15, at 103; Townend, above n 5, p 30.

52. See eg Weinberger, S ‘Perfection of security interests in copyrights: the Peregrine effect on the Orion Pictures plan of reorganization’ (1993) 11 Cardozo Arts & Ent L J 959 Google Scholar (noting how the fallout from the Orion Pictures bankruptcy demonstrates the negative impact of a lack of conceptual clarity).

53. Tosato, above n 6, at 94 fn 15 (noting the considerable academic debate in the 1890s concerning the nature of IP); Lipton, above n 11, at 301: ‘it makes little conceptual sense to take a legal or equitable mortgage or charge over computer software per se as distinct from, say, the copyright in the software’.

54. Torkington v Magee [1902] 2 KB 427 at 430 (Channel J): choses in action are ‘all personal rights of property which can only be claimed or enforced by action, and not by taking physical possession’.

55. Your Response Ltd, above n 47, at [26] (Moore-Bick LJ): the decision in Colonial Bank v Whinney (1886) 11 App Cas 426 ‘makes it very difficult to accept that the common law recognises the existence of intangible property other than choses in action (apart from patents, which are subject to statutory classification)’.

56. Patents Act 1977, s 30(1). Cf Townend, above n 5, p 18; Davies, above n 43, at 61 (both suggesting that, functionally, patents are choses in action).

57. Patents Act 1977, s 30; Copyrights, Designs and Patents Act 1988, s 90(1); Trade Marks Act 1994, s 24; Registered Designs Act 1949, s 19. The following discussion will only cover patents and trade marks; however, registered designs appear to have the same basic structure, and thus the same potential flaws, with regard to security: Beale et al, above n 9, at paras 14.72–14.76.

58. Davies, above n 4, at 315: ‘This [the proprietary nature of such IPRs] is the effect of registration.’ Cf Mulligan, C ‘A numerus clausus principle for intellectual property’ (2013) 80 Tenn L Rev 235 at 252–255Google Scholar: one of the consequences of the lack of a coherent numerus clausus principle for IPRs is the capacity in IP law for prohibitions on alienation to develop.

59. Lipton, above n 11, at 300. As to the necessity of including in a mortgage agreement those quasi-IPRs in order to cover them, see Henry, above n 7, at 161–163. It is difficult to see how the proposed EU Directive on protecting trade secrets will provide any clarity on this issue: see eg http://ec.europa.eu/internal_market/iprenforcement/trade_secrets/index_en.htm.

60. Patents Act 1977, s 30(2).

61. This may be the best way of explaining the Patents Act 1977, s 30(2): ‘Subject to section 36(3) below, any patent or any such application, or any right in it, may be assigned or mortgaged.’

62. Swiss Bank v Lloyds Bank [1982] AC 584 at 613 (Lord Wilberforce). See further eg Gorringe v Irwell India Rubber Works (1886) LR 34 ChD 128; William Brandt's Sons & Co v Dunlop Rubber Co Ltd [1905] AC 454; Baxter International Inc v Nederlands Produktielaboratorium voor Bloedtransfusiapparatuur BV [1998] RPC 250.

63. Section 30(6).

64. Patent Rules 2007, SI 2007/3291, r 44(6); Patents Act 1977, s 33(3)(b).

65. Beale et al, above n 9, at para 14.61.

66. (1890) 44 ChD 374. As to the possible problems arising due to confusion between a charge and a mortgage, see eg Henry, above n 7. However, as a result of changes to the Companies Act 2006, for which see text to n 106, these problems may be less relevant now in that particular context.

67. Tosato, above n 6, at 96–97.

68. Bromfield and Runeckles, above n 16, at 346.

69. In such a case, the mortgagor holds the future property on trust for the mortgagee: Holroyd v Marshall (1862) 10 HL Cas 191, 11 ER 999.

70. Patents Act 1977, s 32(2)(b).

71. Beale et al, above n 9, at para 14.62.

72. Baxter, above n 62. Cf Scottish Law Commission, above n 10, at [7.25]: the Patents Act 1977, s 33 ‘is not easy to understand and we are not sure that we do understand it’.

73. Patents Act 1977, s 33(4).

74. Coflexip Stena Offshore Ltd's Patent [1997] RPC 179 at 188. It is tentatively suggested that this problem may be a reason for the apparently limited demand for, or supply of, debt financing at the early stage of IP development (as noted by Bezant, above n 51, at 239).

75. Trade Marks Act 1994, s 24(5). There may be pragmatic reasons why a financier would not want to become a legal mortgagee: see eg R Burrell and M Handler, ‘The PPSA and registered trade marks: when bureaucratic systems collide’ (2011) 34 UNSW L J 600 at 617.

76. Trade Marks Act 1994, s 24(1), (4). This altered the previous position: Holly Hobbie Trade Mark [1984] RPC 329 (HL).

77. Trade Marks Act 1994, s 25(2)(b),(c).

78. Beale et al, above n 9, at 14.68.

79. Trade Marks Act 1994, s 27(3).

80. Phillips, J ‘Intellectual property as security for debt finance – a time to advance?’ (1997) 19 Eur Intel Prop Rev 276 at 276Google Scholar.

81. Copyright, Designs and Patents Act 1988, s 90(3): to be effective an assignment must be signed by or on behalf of the assignor.

82. See http://tinyurl.com/mql4pjy.

83. Copyright, Designs and Patents Act 1988, s 91(1); Performing Rights Society Ltd v B4U Network (Europe) Ltd [2012] EWHC 3010 (Ch), [2013] FSR 19.

84. See eg Griggs Group Ltd v Evans [2005] EWCA Civ 11, [2005] FSR 31.

85. Tosato, above n 6, at 97.

86. Cf Tosato, above n 6, at 98: ‘invisibility and blind spots must be considered inherent flaws of these registration systems.’ See also Patents Act 1977, s 72; Trade Marks Act 1994 ss 46–47: the patent or trade mark can be deregistered.

87. In Scottish law, the ‘standard view’ is that ‘unless and until there is registration [of IPRs], the grantee has only a personal right. So no security can exist before registration’, but it is possible for there to be unregistered security, though such security ‘lives a precarious life’. Scottish Law Commission, above n 10, at [7.27].

88. Patents Act 1977, s 33(1). As noted in Beale et al, above n 9, at para 14.66, it is unclear whether this rule would apply if the later charge was also unregistered, but the submission therein that the common law rule that equitable charges rank in order of creation would be a simple and acceptable solution here.

89. Beale et al, above n 9, at 14.69–14.71.

90. See eg Davies, above n 4, at 316. Such registration may provide constructive notice sufficient to satisfy the knowledge element of the priority scheme set out in the Patents Act 1977, but this is not entirely clear: Beale et al, above n 9, at 14.65: ‘It is possible that, in this context, “know” may include having constructive notice’ (emphasis added).

91. Fraser v Oystertec [2003] EWHC 2787 (Pat Ct), [2004] FSR (22) at 446 (Peter Prescott QC)

92. Ibid.

93. Patents Act 1977, s 33(1). The effect of failure to register is set out in s 68, which is ‘not a very well thought-out piece of legislation’: Schütz (UK) Ltd v Werit UK Ltd (No 2) [2011] EWCA Civ 927, [2012] FSR (2) at para 29 (Sir Robin Jacob). See also LG Electronics v NCR Financial Solutions Group Ltd [2003] FSR (24) (Pat Ct) at para 18 (Jacob J): ‘People need to know who is on the register. This section is aimed at making the people who own the monopolies get on the register. If they do not, they lose their right to damages and they do not have a right to sell the right to damages to someone else.’ The decision of the Supreme Court in Schütz on s 68 is partially obiter and thus the true meaning of that section remains to be determined: CIPA Guide to the Patents Act (London: Sweet & Maxwell, 7th edn, 2011) at para 68.02.

94. CIPA Guide, above n 93, at para 33.03.

95. Transfer Systems v International Consultants BL 0/1/05, cited in CIPA Guide, above n 93, at para 33.04.

96. Cf In Morey's Patent (1858) 25 Beav 581, 53 ER 759; Bridge et al, above n 8, at para 36-029 (the facts of Morey's Patent suggest that there was actual notice).

97. CIPA Guide, above n 93, at para 33.04.

98. Ibid, at para 33.03: ‘The later transaction, instrument or event need not itself be registered, but will only take effect as against subsequent transactions when notice of it has been given to the public by an application to register it.’ Beale et al, above n 9, at para 14.66 (noting that s 33 might be interpreted as only applying to registered mortgages). See also Bridge et al, above n 8, at para 36-029, noting potential problems of circularity. Contrast Finecard International Ltd v Urquhart Dyke & Lord [2005] EWHC 2481 (Ch), [2006] FSR (27) at 511 (Peter Smith J): ‘The purpose of [Patents Act 1977, s 33] is to provide that priority as between persons who claim to have acquired the property in a patent shall be regulated by the priority according to registration.’

99. Patent Rules 2007, r 47(1)(b).

100. On which the application to register the transaction must be made: Patent Rules 2007, r 47(1)(a).

101. CIPA Guide, above n 93, at para 32.26.

102. See above n 72.

103. CIPA Guide, above n 93, at para 32.26.

104. This aspect is partially mitigated by the existence of an Assignment Index for patents, held at the British Library, which provides a record of assignments and mortgages. See CIPA Guide, above n 93, at para 32.34.

105. The Companies Act 2006 (Amendment of Part 25) Regulations 2013, SI 2013/600. For an overview, see eg – ‘Revised system of registration of company charges comes into force – at last’ [2013]332 Company Law Newsletter 1.

106. Companies Act 2006, s 859A(7).

107. There are three exceptions: Companies Act 2006, s 859A(1); (6): a charge in favour of a landlord on a cash deposit given as a security in connection with the lease of land; a charge created by a member of Lloyd's to secure its obligations in connection with its underwriting business at Lloyd's; and a charge excluded by or under any other Act.

108. Companies Act 2006, s 859D(1)(c).

109. Ibid, s 859D(2)(d).

110. Ibid, s 859D(1)(d).

111. Ibid, s 859D(3)(c)–(e).

112. Ibid, s 859D(5). This means, in essence, that the current register is no different to the 1928 version, which is of course ‘unfortunate’: J de Lacy ‘Reflections on the ambit and reform of Part 12 of the Companies Act 1985 and the doctrine of constructive notice’ in J de Lacy (ed) The Reform of United Kingdom Company Law (London: Cavendish, 2002) p 333 at p 337.

113. See generally Beale et al, above n 9, ch 11.

114. Bills of Sale Act 1878, s 4. It appears that this issue will not be resolved by the proposed reforms to the Bills of Sale regime: Law Commission Bills of Sale: A Consultation Paper Law Com CP 225 (September 2015) [8.19] (excluding IPRs from the reform proposals).

115. Davies, above n 4, at 315.

116. Tosato, above n 6, at 100.

117. Ibid, at 100: ‘The absence of a specialist register, combined with the compulsory registration and the priority rules that govern the CA, renders taking security over a copyright owned by a company one of the most palatable IPRs to use as collateral.’

118. Law Commission Company Security Interests: A Consultative Report Law Com CP 176 (London: Law Commission, 2004) paras 2.20, 2.48, 2.50–2.51. This followed from the same suggestion in the Consultative Paper: Law Commission Registration of Security Interests: Company Charges and Property Other Than Land Law Com CP 164 (London: Law Commission, 2002) para 4.211. Cf Security Interests (Jersey) Law 2012, s 4(a)(v): ‘any intellectual property created under the law of Jersey other than intellectual property registered on a register of intellectual property in Jersey’ is covered, thus potentially setting up distinct regimes for different types of IPRs. However, it is worth noting that Security Interests (Jersey) Law 2012 is the first stage, and the second stage (which will cover tangible movables) will lead to the development of a common registration system: Email from Professor Sir Roy Goode to author (20 December 2014).

119. UNCITRAL Legislative Guide on Secured Transactions (New York, 2010). For a valuable analysis, see eg N Orkun Akseli International Secured Transactions Law: Facilitation of Credit and International Conventions and Instruments (Abingdon: Routledge, 2011).

120. UNCITRAL Legislative Guide on Secured Transactions: Supplement on Security Rights in Intellectual Property (New York, 2011). For an outline of the development of this supplement, see eg A Tosato ‘The UNCITRAL Annex on security rights in IP: a work in progress’ (2009) 4 J Intel Prop L & Practice 743.

121. UNCITRAL, Supplement, above n 120, at [4].

122. Ibid, at [126]–[129]. Recommendation 4(b) of the Legislative Guide has particular effect here, reinforcing state autonomy over the regulation of IP law.

123. Ibid, at [138].

124. Ibid, at [49]–[52], [55], [60]–[63].

125. Law Commission Company Security Interests, above n 118, at paras 2.51, 3.338.

126. Ibid, at para 3.293.

127. See eg R Goode Convention on International Interests in Mobile Equipment and Protocol Thereto on Matters Specific to Aircraft Equipment: Official Commentary (Rome: UNIDROIT, 2008) p 1.

128. Cf Lipson, JC ‘Remote control: revised Article 9 and the negotiability of information’ (2002) 63 Ohio St L J 1327 at 1412Google Scholar: ‘hyperkinetic information assets’.

129. Cf Lipson, above n 1, at 1071: ‘theoretically … security interests in information technology assets will travel like a computer virus, encumbering the intellectual property or data in the computers of every person or company that has communicated, directly or indirectly – with the debtor’.

130. Townend, above n 5, p 23: the system for IPRs is akin to the system for unregistered land prior to the 1925 reforms: ‘The registers could be said to give a form of notice, but they do not offer complete protection and a one-stop scheme.’ See also Calnan, R Taking Security (London: Jordans, 3rd edn, 2013) at para 7.283Google Scholar: ‘registration of security over [registerable IPRs] is different from that for ships and aircraft. The [IP] register does not purport to be conclusive.’ See further TM Ward ‘The perfection and priority rules for security interests in copyrights, patents, and trademarks: the current structural dissonance and proposed legislative cures’ (2001) 53 Me L Rev 391 at 394 n 7 (making the same point about the US law); Solomons v US 21 Ct Cl 479 at 483 (1886): IP is ‘closer in analogy to real than to personal estate’ (cited in Murphy and Ward, above n 43, at 481).

131. For a brief analysis of this problem, which otherwise tends to be absent in the literature, see eg Henry, above n 7, at 163–166. See also the Allen and Overy submission to the Hargreaves Review (http://tinyurl.com/mql4pjy): ‘the security taker must rely on its registration of the security against the IPR owner at Companies House. There is much uncertainty surrounding the effect of this registration as against subsequent bona fide purchasers (or licensees) or other interest holders for value without notice, and this affects the attractiveness of copyright and other unregistered IPR as a basis for financing.’

132. Law Commission Company Security Interests, above n 118, at para 3.339. The problems concerning copyright were acknowledged: Law Commission Company Security Interests, above n 118, at para 3.341. However, no clear alternative was suggested.

133. Law Commission Company Security Interests Law Com 296 (London: Law Commision, 2005) at paras 3.41, 3.231.

134. Ibid, at para 3.40.

135. Ibid, at para 3.235.

136. Scottish Law Commission, above n 10, at [19.11]–[19.16], proposal 68. For criticism, see eg H Patrick ‘Reform of security over moveable property: a view from practice’ (2012) 16 Edin L Rev 272 at 276.

137. The difficult interaction between state and federal registration regimes for IPRs and security interests under the Uniform Commercial Code was pointed out in G Gilmore Security Interests in Personal Property vol 1 (Boston, MA: Little Brown, 1965) p 402. An enormous volume of work has since been published on the relationship between these regimes, and only a brief outline of this literature can be referred to here. In addition to work already cited, further analysis is provided in eg HC Su and MB Weiss ‘Secured financing of research and development using intellectual property as security – reconciling Article 9 heuristics with the patent law regime’ (1990–1991) 13 Geo Mason U L Rev 607; P Heald ‘Resolving priority disputes in intellectual property collateral’ (1993–1994) 1 J Intel Prop L 135; AA Babaian ‘Striving for perfection: the reform proposals for copyright-secured financing’ (1999–2000) 33 Loy L A L Rev 1205; L Brennan ‘Financing intellectual property under federal law: a national imperative’ (2001) 23 Hastings Com & Ent L J 195; J Sarnelli ‘Grasping for air: revised Article 9 and intellectual property in an electronic world’ (2004) 11 UCLA Ent L Rev 103; X-T Nguyen ‘Collateralizing intellectual property’ (2007–2008) 42 Ga L Rev 1; AG Mills ‘Perfecting security interests in IP: avoiding the traps’ (2008) Banking L J 746. Also relevant is the impact of the federal bankruptcy law: see eg PS Menell ‘Bankruptcy treatment of intellectual property assets: an economic analysis’ (2007) 22 Berkeley Tech L J 733; ST Schreiner, KB Jordan and NM Lerman ‘Perfecting security interests in IP: pitfalls and bankruptcy considerations’ (2013) 130 (10) Banking L J 912; In re Transportation Design & Technology, Inc 48 BR 635 (Bankr SD Cal 1985) City Bank and Trust Company v Otto Fabric, Inc 83 BR 780 (Bankr D Kan 1998); Chesapeake Fiber Packaging Corp v Sebro Packaging Corp 143 BR 360 (Bankr D Md 1992), aff'd 8 F3d 817 (4th Cir 1993)).

138. Compare In re Peregrine Entertainment, Ltd, 116 BR 194 (CD Cal 1990) with In re World Auxiliary Power Co 303 F3d 1120, 1128 (9th Cir 2002).

139. Danamraj, S ‘Priority disputes involving security interests in patents: case law and current proposals’ (1993–1994) 2 Tex Intel Prop L J 257 at 257Google Scholar (citing Capwell, J ‘Secured financing in intellectual property: perfection of security interests in copyrights to computer programs’ (1988) 39 Syracruse L Rev 1041 at 1043Google Scholar). See also Haemmerli, A ‘Insecurity interests: where intellectual property and commercial law collide’ (1996) 96 Col L Rev 1645 at 1722CrossRefGoogle Scholar; Choate, PL ‘Belts, suspenders, and the perfection of security interests in copyrights: the undressing of the contemporary creditor’ (1997-98) 31 Loy L A L Rev 1415 at 1419Google Scholar. Cf Mann, above n 46: secured financing of software, of both owned and acquired interests, actually happens.

140. See http://securedtransactionslawreformproject.org/. See also the Case for Reform, available at http://securedtransactionslawreformproject.org/the-case-for-reform/.

141. The revision process of Art 9 in the USA involved engagement with representatives from the IP industry (broadly construed): SO Weise ‘The financing of intellectual property under revised UCC Article 9’ (1999) 74 Chi-Kent L Rev 1077 at 1078.

142. These are the goals of the US Art 9 systems: see eg Weise, above n 141, at 1077; the UNCITRAL system: see UNCITRAL, above n 120, at [1]; and also the Secured Transactions Law Reform Project, above n 140.

143. Cf Weise, above n 141, at 1078: this task ‘generated more controversy than most provisions of Revised Article 9’.

144. RT Nimmer ‘Revised Article 9 and intellectual property asset financing’ (2001) 53 Maine L Rev 287 at 294.

145. See above n 85.

146. Especially as 3D printing may have a substantial impact on the nature of supply chains: B Depoorter ‘Intellectual property infringements & 3D printing: decentralized piracy’ (2014) 65 Hastings L J 1483 at 1484–1485.

147. This is also a problem for the UNCITRAL approach. The Supplement points out that should a state adopt the functional approach to security, it would need to ‘coordinate’ its law relating to security over IPRs if that area of law rested on a non-functional expression of security interests: UNCITRAL, above n 120, at [5]. So any right over an IPR that secures an obligation to pay the acquisition price of an IPR is a security interest (this is the functional approach) but, importantly, this functionalism extends to a license to use an IPR: ibid, at [9]. In terms of coverage, the Supplement takes another broad approach (at [14]): ‘The owner, licensor or licensee may encumber all or part of its rights, if they are transferable under law relating to intellectual property.’ However, it is not the case that all licence agreements create a security interest (see [23]); instead, the particular nature of the agreement, and, more fundamentally, the state IP law, will determine whether what occurs between the parties actually creates a security interest. For an example of the impact of the specific agreement: Northrop Grumman Mission Systems Europe Ltd v BAE Systems (Al Diriyah C41) Ltd [2015] EWCA Civ 844.

148. Weise, above n 141, at 1083 fn 21.

149. See eg Tosato, above n 6, at 95–96. Similarly, cf Risch, M ‘The securitization of patents’ (2013) 63 Duke L J 89 Google Scholar (patent portfolios should be treated like securities, and tradable as such); Solomon, D and Button, M ‘Intellectual property securitization’ (2015) 33 Cardozo Arts & Ent L J 125 Google Scholar. For an outline of SPVs, see eg Hudson, A The Law of Finance (London: Sweet & Maxwell, 2nd edn, 2013) ch 44Google Scholar.

150. Tosato, above n 6, at 95–96.

151. Solomon and Button, above n 150, at 44.

152. Another potential problem, presented as a benefit by Solomon and Button (ibid) is the off-balance-sheet nature of securitisation. Solomon and Button do note (at 48–64) the potential problems of securitisation, especially in light of the collapse of Enron and the 2008 global credit crisis.

153. Solomon and Button, above n 150, at 28 (referring to securitisation of copyright in the entertainment industry). See further eg JB Sylva ‘Bowie bonds sold for far more than a song: the securitization of intellectual property as a super-charged vehicle for high technology financing’ (1999) 15 Santa Clara Comp & High Tech L J 195.

154. Tosato, above n 6, at 96 admits as much.

155. Cf Gullifer, L ‘Quasi-security interests: functionalism and the incidents of security’ in Davies, I (ed) Issues in International Commercial Law (Aldershot: Ashgate, 2005) ch 1Google Scholar for an overview of the various sides of the debate.

156. Ibid, at 28–29. Gullifer was not referring to security over IPRs, but it is suggested the point remains valid.

157. See above n 8.

158. Companies Act 2006, s 893.

159. The Companies Act 2006 (Amendment of Part 25) Regulations 2013, SI 2013/600, Sch 2 para 3(2) updated the Companies Act 2006, s 893 to take into account the changes wrought by the Regulations. However, these Regulations were not concerned with the registration: see Beale et al, above n 9, at paras 9.21 fn 54, 10.02, 10.69 (noting that the intention to do so in the future remains). The key test will be satisfying the Secretary of State ‘that appropriate information-sharing arrangements have been made’: Department for Business, Innovation & Skills ‘Government response: consultation on registration of charges created by companies and limited liability partnerships’ (December 2010), available at http://tinyurl.com/qye687e at para 26. This, however, may be ‘unlikely to find favour with the bureaucracy’: Burrell and Handler, above n 75, at 602.

160. Tosato, above n 6, at 101–102.

161. See eg ibid, at 102.

162. von Lewinski, S International Copyright Law and Policy (Oxford: Oxford University Press, 2008) at para 5.56Google Scholar. Von Lewinski also suggests (at para 5.57) that ‘[r]egistration requirements regarding assignment and licences may raise doubts under certain circumstances’, but without relevant supporting authority (what is cited concerns the creation of rights rather than security interests per se). See also Ricketson, S and Ginsburg, J International Copyright and Neighbouring Rights: The Berne Convention and Beyond (Oxford: Oxford University Press, 2nd edn, 2006) at para 6.103Google Scholar: ‘formality’ under Art 5(2) merely concerns the bringing of a right into existence.

163. There is no substantive discussion of this issue in Ricketson and Ginsburg, above n 162, or von Lewinski, above n 162. Cf Goldstein, P and Hugenholtz, PB International Copyright: Principles, Law, and Practice (Oxford: Oxford University Press, 3rd edn, 2012) p 273 Google Scholar: a priority dispute between transferees of the same copyright interest ‘will inevitably be resolved on a country-by-country basis. From a transactional perspective, the problem with priorities arises not so much from the variety in national approaches as it does from the general absence of systematic methods for recording transfers and establishing priorities between competing claimants to the same interest.’

164. See eg von Lewinski, above n 162, at para 5.55; Goldstein and Hugenholtz, above n 163, p 224.

165. Ricketson and Ginsburg, above n 162, at para 6.105, and n 322 citing F Schönherr ‘On the interpretation of Article 5(2) of the Berne Convention: taking as an example the Greek antipiracy law of July 15, 1980’ [1981] Copyright 294 at 297 (noting that Member States' failure to object to author-protective contract formalities such as collecting society membership requirements is a ‘subsequent practice’ illustrating how Art 5(2) should be interpreted).

166. Ricketson and Ginsburg, above n 162, at para 6.107. Thus, as noted (at para 6.108) registers of orphan works (see further below n 173) are acceptable.

167. Ibid.

168. Ibid.

169. Cf Mann, above n 46, at 150 fn 56: as the USA adheres to the Berne Convention, ‘registration [of copyright] has become little more than an archaic formality, providing no important substantive benefits to the copyright holder (aside from the ability to grant a security interest under the Copyright Act)’.

170. Davies, above n 4, at 324; Murphy and Ward, above n 43, at 298.

171. Of course, a suitable register would have to operate with minimal delays. Cf Lipton, above n 11, at 290 fn 43: it can take anywhere between 4 and 9 months to register a security interest in the US copyright register; Davies, above n 4, at 324: in the English system a delay of up to 3 months is possible, requiring financiers to ‘take a leap of faith’.

172. Mooney, CW ‘The Cape Town Convention's improbable-but-possible progeny part one: an international secured transactions registry of general application’ (2014) 55 Va J Int L 1 Google Scholar. Mooney's suggestion is laudable, although he is, unfortunately, willing (at 12) to allow for discrete treatment for IPRs.

173. Cf Murphy and Ward, above n 43, at 359–362 (outlining three models of an IP register for security interests). It would also be important to integrate such a registry with registers on orphan works, in light of the transience of digital information. See eg M Favale et al Copyright, and the Regulation of Orphan Works: A Comparative Review of Seven Jurisdictions and a Rights Clearance Simulation (London: Intellectual Property Office, 2013), available at http://www.ipo.gov.uk/ipresearch-orphan-201307.pdf; The Copyright and Rights in Performances (Certain Permitted Uses of Orphan Works) Regulations, SI 2014/2861; The Copyright and Rights in Performances (Licensing of Orphan Works) Regulations, SI 2014/2863. For arguments against registers of IPRs, see eg A Bell and G Parchomovsky ‘Of property and information’ (2015) 116 Colum L Rev 237.

174. Boadle, R ‘A purchase money security interest in UK law?’ [2014] Lloyd's Mar & Com L Q 76 at 89Google Scholar.

175. See generally Meyer, K ‘A primer on purchase money security interests under revised Article 9’ (2001) 50 Kan L Rev 143 Google Scholar; Jackson, T and Kronman, A ‘Secured financing and priorities among creditors’ (1979) 88 Yale L J 1143 CrossRefGoogle Scholar. Boadle, above n 174, at 96 briefly considers the Australian Personal Property Securities Act 2009 (Cth) approach. For further analysis of the Australian system, see eg Burrell and Handler, above n 75.

176. Consequently, one difficulty common to PMSIs of tangible and intangible property is that a later financier has to demonstrate that they have given new value that was in fact used: HR Weinberg and WJ Woodward Jr ‘Easing transfer and security interest transactions in intellectual property: an agenda for reform’ (1990–1991) 79 Ky L J 61 at 111.

177. The party will file a UCC-1 form, ie a financing statement, at the relevant state office. The relevant provisions on filing are at UCC §9-401–§9-403.

178. Weinberg and Woodward, above n 176, at 112. This may have been the result of the drafters of Art 9 thinking that PMSIs in general intangibles would be unlikely: see Weinberg and Woodward, at 110 fn 207 (citing G Gilmore Security Interests in Personal Property vol 2 (Boston, MA: Little Brown, 1965) at §29.5; G Gilmore ‘The purchase money priority’ (1962–1963) 76 Harv L Rev 1333, 1372). UCC §9-102(a)(42) defines a general intangible as ‘any personal property, including things in action … and software’. Official Comment 5(d) expands on this: ‘“General intangible” is the residual category of personal property, including things in action, that is not included in the other defined types of collateral. Examples are various categories of intellectual property … As used in the definition of “general intangible,” “things in action” includes rights that arise under a license of intellectual property, including the right to exploit the intellectual property without liability for infringement. … “software” is a “general intangible” for purposes of this Article.’ It therefore appears that IPRs can be subject to an Art 9 security interest, though cf text following n 180.

179. For competing judicial approaches to the role of filing PMSIs over IPRs, see In re Avalon Software, Inc 209 BR 517 (Bankr D Ariz 1997) and In re World Auxiliary Power Co, above n 138.

180. UCC §9-107 (old).

181. UCC §9-103(a)(1).

182. UCC §9-102(a)(76): ‘“Software” means a computer program and any supporting information provided in connection with a transaction relating to the program. The term does not include a computer program that is included in the definition of goods.’

183. See eg L Brennan ‘Financing intellectual property under revised Article 9: national and international conflicts’ (2001) 23 Hastings Com & Ent L J 313 at 436–440.

184. UCC §9-103, Official Comment 5.

185. Weise, above n 141, at 1103.

186. Ibid, at 1104.

187. Mann, above n 46, at 175–176.

188. There may be potential difficulties with regard to proceeds, for which see eg Weinberg and Woodward, above n 176, at 114–115; Lipson, above n 128, at 1374: ‘The mobility of [digital information] … expands the reach of proceeds beyond anything contemplated to date.’ In re S & J Holdings Corp 39 UCC Rep Serve 668 at 669 (Bankr SD Fla 1984) decided that royalties from the use of collateral (video games machines) were deemed not to be proceeds (to which the secured party could follow) as they were the result of use (and not sale) of the collateral (following the logic of In Re A E I Corp 11 Bankr 97 at 102 (Bankr ED Pa 1981) (security interest in machinery and proceeds did not extent to rental payments from lease of the machinery)). In In re Transportation Design & Technology, Inc, above n 137, a patent was held not to be proceeds of a patent application. Recent developments such as the revision of Art 9 (discussed in Lipson, above n 128, at 1372–1378) raise further questions about the relationship between IPRs and proceeds. See further eg Lipson, above n 1.

189. UNCITRAL, above n 120, at [255]–[256].

190. This would appear to be the US Art 9 system.

191. This would appear to be the English system.

192. UNCITRAL, above n 120, at [257].

193. Ibid.

194. UNCITRAL, above n 119, at [111]. See Recommendations 176–186 for the unitary approach, and Recommendations 187–202 for the non-unitary approach.

195. Cf UNCITRAL, above n 120, at [280] recognising that problems may arise if states adopt one approach for tangible assets and the other approach for IPRs.

196. Ibid, at [257].

197. Ibid, at [272].

198. Ibid, at [258].

199. Ibid, at [261]: ‘In adapting the law recommended in the Guide to intellectual property rights, the expression “sale, lease or license” should also be adapted to fit an intellectual property context in a manner that would be consistent with law relating to intellectual property.’

200. Ibid, at [262].

201. Ibid, at [263]. This extent of this time period would be defined by the relevant implementing state.

202. Ibid, at [264]–[268].

203. Ibid, at 124 (would be Recommendation 186bis in the Guide).

204. See generally Thomas, ‘Goods with embedded software’, above n 24.

205. Norwich Pharmacal Co v Customs and Excise Commissioners [1974] AC 133.

206. Wilko Retail Ltd v Buyology Ltd [2014] EWHC 2221 (IPEC) at [27]–[29] (trade mark infringement). See also Jade Engineering (Coventry) Ltd v Antiference Window Systems Ltd [1996] FSR 461 (ChD) (design rights infringement).

207. Wobben Properties GmbH v Siemens plc [2014] EWHC 3173 (Pat). See also Smith Kline and French Laboratories Ltd v Global Pharmaceutics Ltd [1986] RPC 394 (CA).

208. Cf Lipson, above n 128, at 1360: ‘The relationship between intellectual property protection and negotiability is not well understood.’

209. Thomas, ‘Goods with embedded software’, above n 24, at 176–177 (if goods have embedded software, then IPR holders should be prohibited from following though to final innocent purchasers, and will be limited to a remedy as against the initial vendor which can be satisfied by damages); S Balganesh ‘Copyright and good faith purchasers’ (2016) 104 Cal L Rev 269 (arguing in favour of a voidable title rule in US copyright law). Cf MBM Loos and C Mak ‘Remedies for buyers in case of contracts for the supply of digital content’ Amsterdam Law School Legal Studies Research Paper no 2012-71 (2012), available at http://ssrn.com/abstract=2087626 (recommending greater clarity on the transfer of ownership rights over digital content). See also MA Lemley ‘IP in a world without scarcity’ Stanford Public Law Working Paper no 2413974 (24 March 2014), available at 10.2139/ssrn.2413974 (the reduced relevance of scarcity brought about by technological change may lead to reactions by IPR holders, such as attempts to control goods).

210. Copyright, Designs and Patents Act 1988, s 90(4). See also s 91(3).

211. Kettlewell v Watson (1882) LR 21 ChD 685 at 704 (Fry J); Manchester Trust v Furness [1895] 2 QB 539 (CA) at 545 (Lindley LJ); Worcester Works Finance Ltd v Cooden Engineering Co Ltd [1971] 3 WLR 661 (CA) at 667 (Lord Denning MR).

212. See also de Lacy, above n 112, pp 369–380 (demonstrating the extremely weak grounds for a rule of constructive notice concerning registered charges).

213. Copyright, Designs and Patents Act 1988, s 92(2).

214. Townend, above n 5, p 34.

215. See eg Capitol Records LLC v ReDigi, Inc 934 FSupp2d 640 (DC SD NY 2013). Compare [2012] Case C-128/11 UsedSoft GmbH v Oracle International Corp and [2015] Case C-419/13 Art & Allposters Int'l BV v Stichting Pictoright. See further Thomas, ‘Sale of goods and intellectual property’, above n 24, at 27–30; Mulligan, above n 58; Mann, above n 46, at 151–153. The ineffectiveness of first sale or exhaustion doctrines is also demonstrated in the non-digital arena: see eg Bowman v Monsanto Co 569 US; 133 SCt 1761 (2013) (farmer cannot reproduce seeds covered by a patent). See generally A Perzanowski and J Schultz ‘Reconciling personal & intellectual property’ (2015) 90 Notre Dame L Rev 1211; A Perzanowski and J Schultz ‘Legislating digital exhaustion’ (2015) 28 Berkeley Tech L J 1535; S Reis ‘Toward a “digital transfer doctrine?” The first sale doctrine in the digital age’ (2015) 109 Nw U L Rev 173; A Perzanowski and J Schultz ‘Digital exhaustion’ (2011) 58 UCLA L Rev 889. Cf JF Duffy and R Hynes ‘Statutory domain and the commercial law of intellectual property’ (2016) 102 Va L Rev 1, though Duffy and Hynes do not consider Capitol Records and its implications in this area.

216. Directive 2004/48/EC on Enforcement of Intellectual Property Rights. Implemented by virtue of The Intellectual Property (Enforcement) Regulations 2006, SI 2006/608. Intellectual Property (Enforcement etc) Regulations 2006/1028, Explanatory Note [1]: Directive 2004/48/EC was implemented in Scotland but not England and Wales, as Norwich Pharmacal, above n 205, was deemed sufficient to meet the requirements of the Directive. In [2105] Case C-580/13 Coty Germany GmbH v Stadtsparkasse Magdeburg, it was held that national banking secrecy laws could not override the obligation in Directive 2004/48, such that banks cannot unconditionally refuse to give information concerning IPR infringements to IPR holders.

217. Directive 2004/48/EC, Preamble (3).

218. Ibid, Preamble (18): ‘… also persons who have a direct interest and legal standing in so far as permitted by and in accordance with the applicable law’; Art 4(1)(b): ‘all other persons authorised to use those rights, in particular licensees’, are able to seek application for preventative measures.

219. Ibid, Preamble (14): ‘The measures provided for … need to be applied only in respect of acts carried out on a commercial scale. … Acts carried out on a commercial scale are those carried out for direct or indirect economic or commercial advantage; this would normally exclude acts carried out by end-consumers acting in good faith’ (emphasis added). See also Preamble (24).

220. Directive 2004/48/EC, Preamble (24).

221. Ibid, Art 7(1) (evidence); Art 9(1)(b) (entry into commerce).

222. Ibid, Art 10(1).

223. Ibid, Art 10(3); Cartier International AG v British Sky Broadcasting [2014] EWHC 3354 (Ch).

224. UNCITRAL, above n 120, at [47].

225. Ibid, at 52, Recommendation 243 (which would be Recommendation 28bis in the Guide).

226. This is not impossible: patent pledges may have this effect. See eg CD Assay ‘Patents as informational tools’ in JL Contreras and M Jacobs (eds) Patent Pledges: Global Perspectives on Patent Law's Private Ordering Frontier (New York: Edward Elgar, 2017 forthcoming), available at http://ssrn.com/abstract=2607612.

227. As for authorisation under the UCC, see eg S Thomas ‘The role of authorization in title conflicts involving retention of title clauses: some American lessons’ (2014) 43 Common L World Rev 29.

228. Weise, above n 141, at 1097.

229. Cf Lipson, above n 1, at 1123–1124: ‘True, most transactions in information technology assets are currently structured as licenses, not sales. But it is not clear that licensing will always be the only ordinary course disposition of a general intangible.’

230. Thomas, ‘Goods with embedded software’, above n 24.

231. Weise, above n 141, at 1099–1100.

232. Lipson, above n 1, at 1124 (arguing that a non-exclusive license may not be capable of being subject to a security interest).

233. Ibid, at 1126.

234. Ibid. See also Lipson, above n 128, at 1378–1388.

235. Duffy and Hynes, above n 215, esp at 61–64.

236. Weise, above n 141, at 1100.

237. Ibid, at 1101.

238. Ibid.

239. Ibid.

240. Ibid, at 1102–1103.

241. Ibid, at 1103 fn 104.

242. Above n 34.

243. Thomas ‘Goods with embedded software’, above n 24; Thomas ‘Sale of goods and intellectual property’, above n 24; Lipson, above n 128, at 1417.

244. Cf Lipson, above n 128, at 1388–1411. See also Mann, above n 46, at 151: while ‘[c]ommercial-transactions scholars tend to assume that a borrower always has the power to grant a security interest in its assets’, IP practitioners ‘strongly disfavour […] transfers by a licensee without the consent of the licensor, even if the transfer is limited to the licensee's rights under the license’. Mann cites, inter alia, Everex Systems, Inc v Cadtrak Corp (In re CFLC, Inc) 89 F3d 673 at 679 (9th Cir 1996): ‘any license a patent holder granted – even to the smallest firm in the product market most remote from its own – would be fraught with the danger that the licensee would assign it to the patent holder's most serious competitor, a party whom the patent holder itself might be absolutely unwilling to license’.

245. Weise, above n 141, at 1102.

246. Nimmer, above n 144, at 289.

247. Ibid: ‘Attitudes and approaches from the commercial world before intangible assets took center stage continue to influence how modem law treats information assets.’

248. Lipton, above n 11, at 306.

249. Davies, above n 4, at 309–312. For a wider ranging overview of debt financing, see eg Beale et al, above n 9, ch 2. For analysis of the current state of financing see eg AJ Walters ‘Statutory erosion of secured creditors’ rights: some insights from the United Kingdom' [2015] U Ill L Rev 543.

250. Davies, above n 4, at 314.

251. In re World Auxiliary Power Co, above n 138, at 1132.

252. SL Harris and CW Mooney ‘A property-based theory of security interests: taking debtors’ choices seriously' (1994) 80 Va L Rev 2021 at 2021–2022.

253. A Bell and G Parchomovsky ‘Reinventing copyright and patent’ (2014) 11 Mich L Rev 231.

254. Lemley, above n 209. Cf J Fairfield ‘Bitproperty’ (2015) 88 S Cal L Rev 805 (technological developments enabling low-cost, accurate, secure and traceable recording of digital transactions will lead to digital scarcity).

255. Davies, above n 43, at 583: repeated in Davies, above n 4, at 327; Davies, above n 43, at 69.

256. Cf Duffy and Hynes, above n 215, arguing for delineation between IP and commercial law.

257. See eg Haemmerli, above n 139, at 1646 (presenting an amusing hypothetical screenplay, whereby ‘The intellectual property lawyers exchange meaningful glances: “Not that UCC stuff ….” The commercial lawyers look annoyed, as though they have come to the wrong briefing: “Who wants to get into copyright law metaphysics in the middle of a deal?”’).

258. Ghosh, above n 15 (it depends on one's perspective on IP: if one states that IPR holders should be protected, then the IP law regime should be preferred); Lipson, above n 1, at 1106–1107 (noting how ‘one's practice orientation’, ie whether one is an IP lawyer or a commercial lawyer, will determine whether you will favour Art 9, or the IP solutions).

259. Mann, above n 46, at 154.

260. Lipson, above n 1, at 1141.

261. Ibid, at 1141–1142.

262. Ibid, at 1143–1148. At 1104–1105, Lipson correctly notes that IP rules ‘are organized around the creation and maintenance of title in intellectual property … [and] are not designed to be, and do not function principally as, transactional rules. They create property, but often tell us little about how to dispose of it’.

263. Ibid, at 1148.

264. Ibid, at 1149.

265. Ibid, at 1154.