In his monthly TBI column, consultant solicitor Julian Wilkins reveals how media firms can keep IP disputes out of the courts to best reach an amicable solution.
They say all publicity is good publicity, but not necessarily a court case. Regardless of fault, collateral damage including tarnished reputations, costs and lost time takes its toll. The court room, by its own rules, is the last resort in the justice food chain unless urgent action is required, such as a significant breach of IP rights or defamation.
Across all types of media, examples abound. Recently, a Californian federal court dismissed a five-year-old copyright suit claiming Taylor Swift copied from a 2001 R&B song for her chart-topping hit Shake It Off after the claimant agreed to stop their claim. Even Paddington Bear was in the Intellectual Property Enterprise Court regarding auditing rights and accounting for royalties – Pixdene Ltd v Paddington and Company Ltd  EWHC 2765 (IPEC). Whatever next, estranged royals in Netflix shows…
In the aforementioned cases, there may have been attempts to resolve matters without trial. Indeed, there are various Alternative Dispute Resolution (ADR) mechanisms (that’s not a euphemism for Peaky Blinders’ customer services) available to try to avert full fat litigation.
For one, many contracts have dispute resolution clauses stating that the parties initially negotiate. Where possible, this will involve colleagues not involved in the circumstances that led to the dispute – they are more at arm’s length and dispassionate.
Another approach is mediation, where the parties agree to appoint a third-party impartial and independent facilitator. The mediator does not impose a decision but assists the parties in finding a solution by using different techniques, such as reality checking and trying to get each party to look at the issues from another person’s perspective.
Further, mediation gives scope beyond the immediate issues, for instance if the parties have worked together for many years – say, producers and a studio. The resolution of the dispute may include more favourable working terms in the future.
Mediation is confidential and any settlement can be recorded in an agreement enforceable through the courts if there is backtracking on the deal. Both the US and the UK have been leading exponents on mediation, for instance via JAMS (Judicial Arbitration and Mediation Services) in the US and CEDR (Centre for Effective Dispute Resolution) in the UK.
A more involved process is arbitration, which is akin to a private court where the parties can determine the terms upon which an arbitration panel conducts the arbitration. The process is confidential and the arbitrators are independent and impartial. An arbitration award can be enforced in multiple jurisdictions, provided the country is a signatory to The 1958 Convention on the Recognition and Enforcement of Foreign Arbitral Award – useful, for instance, in an international copyright dispute.
Other forms of ADR include expert determination, whereby the parties appoint an independent person to assess the facts and issues. They then make a decision which is binding on the parties; likewise, early neutral evaluation is similar and can be binding on the parties, or otherwise act as a barometer to indicate each party’s chance of success if matters went to trial.
There are, of course, specialist organisations within our industry, such as FRAPA (The Format Recognition and Protection Association), which has a mediation service run in conjunction with World Intellectual Property Organisation’s (WIPO) arbitration and mediation services. You can go direct to WIPO on other IP disputes, but FRAPA has carved a niche in relation to format protection and dispute resolution.
And this stuff matters. The UK media regulator Ofcom, for example, stipulates that communications providers offering services to people, small businesses (up to 10 employees) and not-for-profit organisations (where up to 10 individuals work, not including volunteers) must be members of an ADR scheme.
Hopefully, disputes are few and far between but effective use of ADR methods could mean all parties can have their marmalade and eat it.
Julian is a consultant solicitor and notary public with Eldwick Law, and a founding member of mediation and arbitration practice Q Chambers