Books again ...

Intellectual Property and Private International Law has now emerged in its second edition.  Under the scholarly aegis of University of Nottingham-based Professors James J. Fawcett and Paul Torremans, this work has been aided and abetted by a stellar team of "thanks-to" supporters which includes, gratifyingly, several regular readers of this weblog.

In the thirteen years that have elapsed since the first edition, the world of IP-PIL has changed beyond all recognition as international agreements, substantive intellectual property law, national and regional judicial rulings and the rules of civil procedure have all changed in responses to their own often overlapping constituencies.  What, one might ask, has remained the same?  Apart from the title of the topic, the one real constant in the ever-changing sea of legal solutions is the nature of the problems faced by litigants and their advisers in securing, protecting and enforcing their market positions where one or more national border must be crossed in order to achieve the desired aim.

Since this book is part of the Oxford Private International Law Series (it's a big series, with 22 titles already in print), it seems prudent to take a look at what the publisher, Oxford University Press, has to say about it:

"Intellectual property has traditionally been regulated on a territorial basis [True -- but most of the current generation of IP lawyers aren't old enough to remember a time when issues like cross-border injunctions have not been on the agenda, and it is arguable that quaint curiosities such as the Madrid Agreement's 'central attack' doctrine are referable to a supra-territorial view of how IP rights should be regulated]. However, the protection and commercial exploitation of intellectual property rights such as patents, trade marks, designs and copyright occurring across borders are now seldom confined to one jurisdiction. This book considers how the introduction of a foreign element inevitably raises potential problems of private international law, ranging from establishing which court has jurisdiction and which is the applicable law to securing the recognition and enforcement of foreign judgments.

The Internet has brought a significant increase in the scale of this phenomenon and valuable new chapters have been added to this edition to reflect this [This is the book's selling point: a detailed and dispassionate application of private international law principles to the internet -- which is as much a moving target as the law itself]. Nationally protected trade marks are now used globally on websites and copyright material is distributed, communicated and copied in a world without borders [it doesn't have corners either, notes Merpel, struck by the connected nature of the little world we all inhabit]. Patents have already been licensed on a transnational basis for several decades. All this raises questions of jurisdiction and applicable law. The well-respected and expert author team address such questions as; which court will have jurisdiction to deal with the issues arising from intellectual property rights and their exploitation in an international context? And which national law will the court with jurisdiction apply? Private international law questions increasingly arise and the two disciplines that previously operated in different spheres are increasingly obliged to co-operate ...."

This Kat was profoundly impressed by this work, or at least by the bits he could easily understand -- since he is primarily an IP lawyer and reading private intellectual law is, for him, a bit like reading a foreign language. He is willing to bet that it won't be another 13 years before the next edition either, with exciting developments like the Court of Justice ruling in Case C-523/10 Wintersteiger ahead of us.

Bibliographic data: lxvii + 986 pages. Hardback. ISBN 978-0-19-955658-8. Current to June 2010. Rupture factor: severe.  Web page here.

While on the subject of book reviews, here's a book that can't easily be reviewed -- or even read -- since it's a big fat compendium of handy intellectual property laws at international, regional and national (UK) level. Yes, it's two whole years since the 9th edition of Butterworths Intellectual Property Law Handbook emerged, courtesy of LexisNexis, and now we have the tenth.  IPKat team member Jeremy is naturally far too modest to mention the name of this book's Consultant Editor, who is known to be something of an intellectual property enthusiast.  Merpel says, the best thing about the 10th edition -- apart from the newly-added content -- is the fact that it retails for £6 less than its predecessor.  £116 for over 1,900 pages of law isn't a bad deal these days, and the slender paper on which it is printed makes it relatively light to carry, even though "handbook" is perhaps a bit of poetic licence.  Two other things that made this reviewer's eyes light up when he espied the new edition for the first time on his desk at Olswang LLP were (i) the fact that the boringly plain cover of earlier editions has been replaced by a sort of polka-dot themed pattern and (ii) the appearance of the legend "10th edition" in big, clear type on the spine, which means that the risk of picking up an outdated edition and using the wrong version of a statute or set of regulations is thereby diminished.  Thank you, LexisNexis, for adding this small but vital piece of functionality.

Bibliographic details: xvii + 1,914 pages. Paperback. ISBN 978-1-4057-6338-7. Rupture factor: moderate. Current to July 2011.  Web page here.

One size fits all? Of IP rights and gefilte fish

The Structure Of Intellectual Property Law: Can One Size Fit All? Edited by Annette Kur (Max Planck Institute for Intellectual Property and Competition Law, Munich) and Vytautas Mizaras (University of Vilnius, Lithuania), this is the first in a series of annual themed volumes which Edward Elgar Publishing will be bringing out, featuring well-researched papers originating with ATRIP -- the Association for the Advancement of Teaching and Research in Intellectual Property.  As the publishers explain,

"... This well-researched and highly topical book analyses whether the ever-increasing degree of sophistication in intellectual property law necessarily leads to fragmentation and inconsistency, or whether the common principles informing the system are sustainable enough to offer a solid and resilient framework for legal development.

The expert contributors explore the legal tools that are available to adjust IP protection to different needs and circumstances and how much flexibility exists to employ these tools. In providing answers to these and other similar questions, the book helps to resolve the fundamental question of whether one size can really fit all in the domestic and international context.

Uncovering the general matrix of IP, The Structure of Intellectual Property Law will appeal to researchers in law, economics and business, students in intellectual property, competition law and economics, as well as practitioners and policymakers".

It would be invidious to pick out must-read chapters in this excellent book, but every reviewer is entitled to identify his favourites. Alexander Peukert's chapter, "Individual, multiple and collective ownership of intellectual property rights -- which impact on exclusivity?", if you can get past the clumsy and not entirely comprehensible title, makes some acute observations and asks some discomforting questions concerning IP, not omitting traditional knowledge from his analysis. Martin Senftleben's call for horizontal fair use defences ("Overprotection and protection overlaps in intellectual property law -- the need for horizonal fair use defences") also stirred the IPKat into one of his come-on-let's-legislate moods.

There is of course something wrong with this book. Although the authors cite a wealth of case law, statutes, treaties and so forth, there is no table of materials cited. Usually when the IPKat says this, it's more by way of gentle regret - but on this occasion he was genuinely inconvenienced. He actually wanted to see how -- or whether -- different contributors made reference to the same materials and also, for example, wanted to discover whether the ever-excellent Ansgar Ohly ("Free access, including freedom to imitate, as a legal principle-- a forgotten concept?") had cited any of Sir Robin Jacob's judicial utterances in the RoHo cushions litigation or L'Oréal v Bellure, but could not do so without a page-by-page hunt for them [Says Merpel: the IPKat won't tell you, but I will: Ansgar indeed mentioned both cases].

Overall, this book reminds this Kat of a Jewish culinary staple, the gefilte fish.  In its traditional form, you catch your fish and, having taken out its tasty bits, you mince them up together with onions and seasoning, then stuff them back into the skin of the original fish and cook it.  Here in this book, within the original skin of intellectual property right, the various authors have scooped out the subject's tasty bits, chopped them up with some logic and seasoned them with some sharp perspectives, then popped them back within the all-embracing framework of intellectual property. The result? A delicious concoction that you can even serve with decoration in the form of the sprig of parsley which mysteriously and unaccountably garnishes the book's front cover.  Well done, says the IPKat, this is an excellent venture; ATRIP has served its readers well [Ah, says Merpel, now I understand, with all this talk of serving and food, why it is students enroll for 'courses'].

Bibliographic data: xiii + 361 pages. Hardback. ISBN 978 1 84844 876 6.  Price £115 (but if you buy it from the publisher online, it's only £103.50. Rupture factor: small to moderate. Web page here.

IP Rights in a Fair World Trade System: a Review

Intellectual Property Rights In A Fair World Trade System: Proposals for Reform of TRIPS, edited by Annette Kur, is the book at the top of the IPKat's pile today, so he has been taking a good look at it. Annette, as readers of this blog will know, is to the Max Planck Institute for Intellectual Property and Competition Law in Munich what Lionel Messi is to Barcelona Football Club: a striking asset who attracts admiration from her supporters and respect from those who would oppose her.  In this book, aided by another formidable intellectual property scholar, Sweden's Marianne Levin, she has put together a collection of critical appraisals of the point of intersection at which IP rights -- which are designed in an ideal world to facilitate trade -- meet trade, which in an ideal world is designed to reward creation and investment in IP. A perfect marriage is one in which the partners must accept the principles of "give and take", but when IP is partnered with trade there is always a risk of "take and take", where one side holds more power and fails to recognise its responsibilities.

So what does the publisher say about this book:

"This important new book constitutes a serious examination of both the positive potential, as well as the deficiencies, of the TRIPS agreement. In the light of their analysis, the editors and their colleagues make a powerful case for wide ranging reforms.

Intellectual Property (IP) law – particularly in relation to international trade regimes – is increasingly finding itself challenged by rapid developments in the technological and global economic landscapes. In its attempt to maintain a responsive legislative system that is interacting successfully with global trade rules, IP is having to respond to an increasing number of actors on an international level. [But that's the strange thing, notes the Kat: we recognise that IP law lags behind event, yet its capacity to deliver new products, services, investment channels and the like seems to carry on quite unabated, regardless whether the law is current or not] This book examines the problems associated with this undertaking as well as suggesting possible revisions to the TRIPS agreement that would make it more relevant to the environment in which today’s IP mechanisms are operating. The overall aim is to find an adequate response to the ‘IP balance dilemma’. The theme is pursued throughout various topics, including a look at what this means in relation to the economy in a country like China, and also considering how IP is increasingly having to reconcile itself with human rights issues.

This book will appeal to academics, policy makers and post-graduate students in IP and international trade law, as well as related fields, such as development and human rights [Merpel says, what a pleasant change to see a book on IP which for once doesn't say that it is required reading for legal practitioners and patent attorneys -- though funnily enough there's plenty of real law in it which they'd probably enjoy] ".

The IPKat enjoyed the book, and particularly liked the chapter by Jens Schovsbo ("Fire and water make steam -- redefining the role of competition law in TRIPS"), not just because of its title but because, if TRIPS is to be truly trade-related -- as most of it isn't -- the role played by competition rules in channeling investment as well as in preventing market abuses is one which is played more effectively within the context of TRIPS than outside it. The author recognises the difficulties of identifying the problem areas as well as of dealing with them. Perhaps if TRIPS can make a better job of synthesizing IP and competition rules, the European Commission might one day do the same [this, says Merpel, sounds like the subject of another book ...].


Bibliographical data: xiii + 614 pages, hardback. ISBN 978 1 84980 009 9. Price £95 (but from the publisher's website £85.50). Also available as an e-book (ISBN 978 1 84980 958 0). Book's web page here. Rupture factor: moderate.

Something else to read: International Copyright (2nd edn)

Back in 2000, the first edition of Prof Paul Goldstein’s (Stanford) famous work International Copyright: Principles, Law and Practice was ground-breaking for providing a complete analysis of copyright worldwide. The text was well-structured, knowledgeable, accessible, and covered not only national laws, but international treaties and their practical application.

In the previous decade enormous changes have taken place to the law of copyright, such as the development of the internet and digital technology, which have (not surprisingly) necessitated a thorough revision of the work.This Kat notes that there are three main differences between the two editions. First, Prof Goldstein has brought Prof P Bernt Hugenholtz (Amsterdam) on board as a co-author in order for this edition to have a more expansive treatment of copyright in the European Union and its member states. Second, this edition contains updates on the case law and legislation in the principle jurisdictions of the United States, France Germany and the United Kingdom. Comparisons with other jurisdictions, such as Australia, Canada and The Netherlands are included when they make a useful contribution to the existing discussion. Third, this edition adopts a new format of twelve chapters instead of five together with an extensive bibliography in order to make the work even more accessible to advanced students and professional readers alike.

In its marketing blurb, publisher Oxford University Press states that: 

International Copyright: Principles, Law and Practice, Second Edition surveys and analyzes the principal legal doctrines affecting copyright law and practice around the world. It provides a step-by-step methodology for advising clients involved in exploiting creative works in or from foreign countries, while also serving as a comprehensive treatise on international copyright for scholars and advanced students alike. Written by two of the most esteemed experts of copyright law in the United States and Europe, this volume is a unique synthesis of copyright law and practice, taking into account the Berne Convention, the TRIPs Agreement, the ongoing harmonization of copyright in the European Union, and the impact of the Internet. National copyright rules on protectable subject matter, ownership, term, and rights are covered in detail and compared from country to country, as are topics on moral rights and neighboring rights. Separate sections cover such important topics as territoriality, national treatment, and choice of law, as well as the treaties and trade arrangements that underlie substantive copyright norms.  

International Copyright is an indispensable reference work for professionals involved with international intellectual property transactions or litigation. It is essential reading for scholars and for intellectual property practitioners worldwide, yet is also accessible for advanced students of copyright law.

This Kat believes that this book will be tremendously useful as a reference work for anyone with international dimension to their copyright practice, whether it be foreign clients seeking copyright protection under national laws or local clients entering into copyright contracts with foreign entities. The new structure, whilst retaining much of the substance of the first edition, is very effective. Part II on ‘Substantive Copyright Law’ contains the usual headings one would expect with a copyright work, such as subject matter and neighbouring rights, authorship and ownership, term of protection, economic rights, moral rights, exemptions and enforcement. Accordingly, a reader can easily locate their particular issue in the detailed table of contents and find a detailed and well-written comparative answer in the main text. The copies of the international treaties in the Appendix are also helpful. This work makes a welcome addition to this Kat’s library and she looks forward to referring to it in her future copyright practice.

Merpel notes that on its website OUP suggests that the readership for this work is ‘IP practitioners who work with patents, in-house counsel, and members of the executive suite’. Practitioners who work solely in patents will (obviously) be disappointed by the content of this work, but Merpel hopes that, through encountering this fascinating exploration of copyright on the global stage, they can be persuaded to broaden their area of expertise!

Bibliographic data: paperback, xxii + 565 pages. ISBN 978-0-19-973710-9. Rupture factor: minimal. Price: £70 from OUP or £66.50 from Amazon.

Something to read, Part I

As a friend and fellow-blogger, Peter Groves can expect a kind review from the IPKat.  On the other hand, the selfsame Kat came quite close to publishing an IP dictionary of his own with the same publisher (Edward Elgar Publishing) -- but pulled out of the project after he became convinced that there was no need for a printed volume of definitions in an era in which it was quicker and easier to enter a term in a search engine than to put down one's comforting mug of tea and reach for the bookshelf.  Anyway, a copy of the book in question is before the Kat at this very minute and he has been curiously turning the pages.

But first let's look at the publicity material which attended its launch:

"From 1-click and the ActionAid Chip to zwart maken, Peter Groves’ Dictionary of Intellectual Property Law' (Edward Elgar, 28 February 2011, £70) provides IP professionals and other interested parties with over 1,000 definitions covering most of the expressions that they might encounter. ...

... [T]o say that there is widespread ignorance about intellectual property is a massive understatement. What is said and written on the subject is more urban myth than solid legal understanding. Ordinary people – those who aren’t IP professionals – often have a hard time telling patents from trademarks from copyright. Many lawyers don’t know the difference, either. There’s no dictionary of intellectual property law to tell them what the words and expressions mean… until now. Peter Groves, a solicitor with 30 years’ experience of intellectual property, several books and many articles to his credit, and hundreds of hours of lecturing under his belt, has spent much of the last few years putting one together. 

Intellectual property has a vast, perplexing and diverse vocabulary, and this enriching Dictionary provides a starting point for understanding new concepts and crafting precise definitions to meet the needs of a particular case. Not only are new words and phrases being coined as technology changes and the law follows, but also the international scope of intellectual property means that IP lawyers will encounter foreign words and phrases. 

With over 1,000 expressions defined clearly and entertainingly, this book should be the first reference point to understanding intellectual property terminology. It will be particularly helpful to practitioners when they encounter expressions they have not seen before which they need to understand the true meaning and definition of. Students finding unfamiliar terminology and concepts will also appreciate the instant explanation available from this essential resource. ...".

Naturally there are omissions. 'Nerd' fails to gain an entry, notwithstanding the consideration of this word by Lords Justices Jacob and Pill in the patent appeal of Rockwater v Technip (here).  This is a pity, since one noble judge has been heard to express the notion that the definition of 'nrrd' is "the sort of person who looks up the word 'nerd' in a dictionary".  Nor, despite its recent appearance in the Patents County Court, does 'numpty' feature.  The 'moron in a hurry' is there, of course, as is that design law chameleon 'the informed user'  (only in IP is there likely to be serious speculation as to who might be the 'informed user' of a toilet bowl).

This reviewer found only one important error.  The entry under IPKat describes him has "the doyenne of intellectual property blawgs".  Doyen, if you don't mind, says the Kat -- Merpel's the doyenne!

Bibliographic data: hardback,  . ix + 336 pages. ISBN 978-1-84980-777-7. Rupture factor is not defined. Price: £70 £105.50-- but you can buy it for just £63  £94 from the Edward Elgar website here. (the publishers must have liked the review so much that they hiked the price!).


Published last year (also from Edward Elgar Publishing) is Beyond Intellectual Property: Matching Information Protection to Innovation, by IPKat team member Jeremy's old colleague William Kingston (School of Business, Trinity College, Dublin, Ireland).  Having been quite merciful to Peter Groves' Dictionary on account of long and pleasant acquaintance, this Kat wondered whether he should be equally kind to the King: after all, while they have shared a number of affable conversations and pleasant events over the year, the Kat is a firm believer in the virtues of a patent system which the King would be quite willing to demolish in favour of something that works better. According to the publisher's promotional prose,

"Beyond Intellectual Property explores the many means by which information is protected. Based on thorough empirical research in the US and Europe as well as practical experience of economic innovation, it goes far beyond the traditional realm of intellectual property (IP). It also identifies the need for urgent reform of present arrangements and suggests practical ways of achieving this.

New instruments for protecting investment in information have been historically important for initiating long-wave economic cycles. William Kingston argues that although IP has been one such method, it is increasingly proving ineffective because its laws have been progressively shaped by the interests that benefit from them, rather than by visions of the public good. He demonstrates that repair will require such visions, which would also underwrite radically new forms of information protection.

This insightful book defines, describes and distinguishes between information, knowledge and meaning, and explains why information now needs changed forms of legal protection if it is to be of genuine economic value. As such, it will be of great interest to economic policy-makers, students of IP and innovation, patent agents and attorneys".

Professor Kingston's position that IP law has been "progressively shaped by the interests that benefit from them, rather than by visions of the public good" is one with which we can endlessly debate. If you take the utopian position that everyone benefits from those laws, the statement is true but meaningless -- yet if you don't, you have to define both what constitutes the interests in question and the concept of the public good.  This is no idle debating point either.  If you take trade mark law, for instance (and this book tackles information as well as innovation), it is correct to say that the law has not been progressively shaped by the interests of the consumer, but does the consumer benefit in informational terms from the same things that enable the mark's proprietor to benefit in commercial terms?  And has not IP law been more shaped by pressures of competition/antitrust law in the past few decades than by any considerations of self-interest?

Love it or loathe it, this book is well worth a read.  The author has been around the block a few times and knows how to state his positions and how to defend them.  If your definition of an interactive book is one you can respond to and, if you're a dyed-in-the-wool IP fan, have the occasional shout at, this is the book for you.

Bibliographic data:  hardback,. viii + 247 pages. ISBN 978-1-84844-992-3. Rupture factor: small. Price £65 (from the publisher's website £58.50).

Book reviews

Apart from the light-bulb symbolism
on the cover, this book has much
to commend it to the busy reader

The IPKat has been perusing the second edition of Essentials of Intellectual Property, by Alexander I. Poltorak and Paul J. Lerner (both of General Patent Corporation).  Given the versatility and indeed the enthusiasm of the pair, it is unsurprising that the book's cover bears the subtitle 'Law, Economics and Strategy', these being but three of the many disciplines which the authors illuminate for the business reader (they can do algebra too, but 'Law, Economics, Strategy and Algebra' might be a bit too off-putting for the target readership).

Since this book has emerged nearly a decade after the first edition, it has been treated to a major update. Considering that the years since 2002 have seen such momentous activity -- the death or obsolescence of many classic business models, the rise of trollism, the combined opportunities and threats of the internet, the Doha dilution of pharma patent expectations, direction-changing Supreme Court rulings like eBay v MercExchange as well as shifts in legal and commercial perspectives resulting from Bilski and the current raft of litigation over false patent marking, to name but a few -- it would have been impossible to avoid a big rethink.

But whatever the changes, the things that remain the same have to be rammed into the reader's consciousness and it is the virtue of this book that it does just that.  Go where the money is, be prepared to share in order to grow, check how much protection you need in order to fulfill your objectives, watch out for your own liability as well as that of others -- these are among the messages that the author transmit.  For the record, this new edition includes

• Latest changes to patent law and IP best practices;
• Two all-new chapters, one on recent patent reform legislation and a second on precedent-setting lawsuits;
• Basics of patents, trade marks, copyrights, trade dress and trade secrets, specifically written for busy executives
• Methodologies of patent valuation;
• DOs and DON’Ts of patent enforcement;
• Samples of useful documents, eg a non-disclosure agreement, invention assignment form, invention disclosure form and IP audit questionnaire.

It's not a law textbook -- but it is a fun read and a very informative one. In the olden days this Kat would have taken it to read cover-to-cover on a long flight, but nowadays it takes so long to get through security that he could probably read most of it then.  The algebra is near the end, so you can pretend it isn't there ...

Bibliographic data.  Published by John Wiley & Sons, Inc. Paperback. xxviii + 292 pages. Price: US$ 45. ISBN 978 0 470 88850 6. Available also via Amazon.com in Kindle format and via Barnes & Noble as a NOOKbook. Rupture factor: no problems.

From Bloom to Bloomsbury -- it's IP in Ireland

Not a second edition this time but a third, and also not a moment too soon, is Intellectual Property Law in Ireland, crafted by a talented trio of the IPKat's friends -- distinguished academic Bob Clark, plus that amiable pair of practitioners from FRKelly, Shane Smyth & Niamh Hall.

Only six years after its predecessor, this edition has had to run very fast to keep up with events.  The rapid unfolding of developments in the European Union and its Court of Justice, the Irish version of the "three stripes" saga and some bonny battles over fashion design have provided some of the reasons for this need. Anyway, according to the publisher's blurb, 

"This is your single-source expert guide to intellectual property law. fully updated to the key changes that have taken place in this area of law since the publication of the 2nd Ed in 2005, together with all relevant case claw. 

This unique book deals with intellectual property law in its entirety, providing a single, practical and all-embracing information source covering the main aspects of intellectual property law. The expert coverage includes copyright, trade marks, patents and design law".

The IPKat feels that the publishers could have done a bit better than this.  They could have pointed out that there is an increasingly significant body of reported Irish IP law these days. They could have added that, while much of the past tense of Irish is made up of British precedents, and an even larger proportion of its future tense is European, Ireland is very much its own country with its own style and tempo of dispute resolution, its own approach to administration and official procedures, its own interpretative nuances, its own professions and its own domestic market.  The authors have worked hard to provide a reference work which is readable, accessible and -- for the reader who frets over whether European norms of protection and enforcement are adequately implemented -- increasingly reassuring.

Bibliographic data:  Hardback.clvii + 1080 pages. Price  €180/£150. ISBN 978 1 847 66366 5. Book's web page here. Rupture factor: severe (particularly for leprechauns ...)

More trade mark practice laid bare

This Kat has been reviewing Amanda Michaels' (and Andrew Norris') book "A practical approach to Trade Mark Law". Already in its fourth edition the book offers 417 pages of UK trade mark law for the reader's delectation. In earlier editions called "A Practical Guide" the book is now part of OUP's 'A Practical Approach' series, which explains the change of title. The book's author Amanda Michaels is a barrister, who is, inter alia, known for her trade mark expertise. She is also an Appointed Person hearing appeals from the UKIPO. Contributing author Andrew Norris is also a barrister as well as an IP tutor - and all this knowledge and practical experience is reflected in the clear layout of the book and its non-fussy writing style.

In its 9 chapters the book covers the major trade mark law issues in a logical order: information about the trade mark system and the functions of trade marks in Chapter 1 is followed by a discussion of registrability in Chapter 2 and relative grounds of refusal in Chapter 3. Chapter 4 covers the procedure before the UKIPO in some detail as well as the procedure before OHIM and it also includes a brief overview of the Paris Convention, TRIPS and the Madrid Protocol. The book does not however discuss the Madrid System in detail. Chapter 5 sets out revocation and invalidity procedures before the UK IPO and OHIM, Chapter 6 informs the reader about the assignment and licensing of trade marks. Chapter 7 explains the UK provisions relating to trade mark infringement and the relevant defences. Chapter 8 is a definite highlight of the book with its precise and logical explanation of passing off, covering everything from the "classic form of passing off" as defined in Jif Lemon to Spalding v Gamage, as well as perennial issues such as "foreign","residual" and "shared" goodwill, celebrity endorsement and providing an understandable(!) explanation of "reverse passing off" on just half a page. Equally succinct is the discussion of "innocence, fraud or a decision to live dangerously" - again set out on just about one page of the book but feeding the reader all the relevant "sound bites". The last chapter (Chapter 9) then turns to "remedies and procedures for trade mark infringement and passing off", including the criminal provision of the Trade Marks Act and the related court procedures: this chapter provides a good overview of the main issues without going into too much detail. The information on the Company Names Tribunal is equally short but alerts you to the main points.

This being a book for practitioners, the authors have intentionally kept the book compact and digestible. Case law is included until early 2010 (including Comparative Advertising/L'Oreal Bellure and everyone's favourite: "AdWords"- albeit not the very latest cases for obvious reasons); and while the book reports about the relevant case law handed down by the ECJ, GC and the UK courts and distills the most important points, it rarely (and I would assume intentionally) discusses or criticises these decisions in much detail. And of course, there are other books readers can revert to for a more in-depth discussion and review of the case law. The book also incorporates the latest round of renumbering of Articles, such as those of the CTMR.

So what is missing or could be bettered? Given its practical approach the authors could consider including "checklists" concerning matters such as trade mark strategies, the question of likelihood of confusion, what to include in an assignment or licence document, etc. Perhaps some more information could be provided on co-existence agreements (what should be covered, is it always a good idea to have one) and the related issue of granting consent. The book also includes rather extensive appendices: the Trade Marks Act 1991, Directive 2008/95/EC, Council Regulation (EC) 207/2009, and the Trade Mark Rules 2008 are all printed in their entirety. This Kat is not quite certain that these texts add much value to the book, in particular since she herself likes to have the law text next to the reference book rather than having to thumb back and forth. Others, however, may be delighted to have all relevant information in one handy book: a matter of personal taste.

Now, is it the book for you? This book works on several levels and for readers with different backgrounds: whether you are trainee trade mark attorney who is trying to find his/her way, a part-qualified trade mark attorney or a qualified trade mark practitioner - you will find the book useful. As one of this Kat's friends has put it, the book has an understandable "non-pompous" writing style so that you can pick it up at different points in your career and be comfortable with it. Having "road tested" this book for quite some time, this Kat believes that for trade mark practitioners this is the kind of book you will use if you come across a problem in your day-to-day practice and need a quick refresher to remind you of the most important points. Sometimes further reading will be required to get to the nitty gritty details but the carefully researched footnotes will make this an easy endeavour. For students and trainees it will serve as a very solid and surprisingly comprehensive reference (and revision) book which - at a prize of under £45 - will give you a sound grounding in and understanding of UK trade mark law and practice. It might also work as basis for students' revision notes for the (current) ITMA exams. Indeed, its handy size makes it ideal for revising during your daily commute and it is affordable enough for students to be able purchase it without having to think twice. If you are a trade mark practitioner and/or trainer, or a patent attorney/lawyer (who perhaps only deals with trade mark matters on occasion) then this book is certainly a book worth having on your shelf in the office. The book may also be of interest to foreign trade mark professionals that have UK connections.

Bibliographic information: publication date 2010, 4th edition, 464 pages, paperback, ISBN 978-0-19-957968-6, Oxford University Press. More details here.

Rapture factor: relatively high - but this is a book that wants to be used.

German trade mark case law laid bare - again

This Kat has been reviewing German trade mark scholar and practitioner Dr Ulrich Hildebrandt's book Marken und andere Kennzeichen. Already in its second edition the book offers 782 pages of (predominantly) German trade mark law for the reader's delectation. (See here for the IPKat's short review of the 1st edition.)

This book is not only of a similar size to Kerly's Law of Trade Marks and Trade Names, it is also similar when it comes to the breadth of information covered. On its 782 pages Marken und andere Kennzeichen (in English: "trade marks and other trade signs") offers in-depth information about German trade mark law, including the law on business names, work titles (Werktitelschutz, a German law quirk), domain names, indications of geographical origin as well as helpful overviews of the relevant provisions of neighbouring areas of the law, such as competition law and delict, the German equivalent of tort, comparative advertising. The book consists of 8 parts and 36 individual chapters and is very clearly structured so that the reader can "jump" into the individual chapters and read up on particular matters. It is very much a practitioner's book and geared towards use in every day trade mark practice, so that students may find it a little less engaging and too detailed for their studies. Having said, if you are a student and plan to specialise in this field of the law, the book might give you some idea what you will be facing in every day practice.

Marken und andere Kennzeichen includes the German Bundesgerichtshof's precedents in trade mark matters since 1994 as well as a very comprehensive selection of decisions from the ECJ (or is it CJEU these days?!) and the General Court. Dr Hildebrandt is very much aware of the influence of the ECJ's case law and so the relevant chapters include summaries of the ECJ's line of precedents in the respective field. He also shows the discrepancies between the ECJ's and GC case law and the German Federal Supreme Court and gives helpful tips as to how to proceed in practice. The author also ventures into providing some outlook into how the law may develop further, always making it clear when something is his a personal opinion.

A concise table of contents, a useful index and a comprehensive table of cases and many examples makes this book accessible and easy to work with and its writing style is surprisingly engaging. Dr Hildebrandt has included helpful "checklists" concerning the conception of marks, trade mark strategies, regarding trade sign practice, the question of likelihood of confusion and dealings with customs authorities. It also alerts you to the DPMA's usual practice when it comes to deadlines. Of particular interest for non-German readers will be the chapter on domain name disputes in Germany, which have to be conducted in front of the courts, and the chapter on work title protection and company name protection and the information on disturbance liabality. This second edition of the book covers more recent developments, such as the amendments to the law for improving intellectual property rights (Gesetz zur Verbesserung der Durchsetzung von Rechten des geistigen Eigentums) and "sexy" topics, such as the (German) case law on AdWords and domain name disputes.

Being first and foremost a handbook of German trade mark law, the information on Community trade marks and International mark is nonetheless accomplished albeit a little too short for my taste - admittedly I had to look hard to find something to criticise. While the information provided does not guide the reader through these types of trade mark proceedings in every last detail, chapter 28 "proceedings before OHIM" (Verfahren vor dem Harmonisierungsamt) covers all the important points to look out for in every day practice, including questions as such how to pay the official fees and procedures before the Board of Appeal. Like the rest of the book, this chapter includes comprehensive footnotes with references to case law and tips for further reading.

So, is the book for you? If you are a German trade mark practitioner, represent German clients or if you are a (German) lawyer who has to deal with (German) trade mark matters only on occasion then this book is certainly a book worth having on your shelf in the office (or your desk really). It is well written and concise despite the amount of information covered. One caveat however and you will have guessed this by now - you should be able to read German to a very high standard….

Bibliographic information: publication date 2010 (that is what it says in my copy) 2nd edition, 282 pages, hardback, ISBN 978-3-452-27152-5, Bücher Carl Heymanns Verlag, 128 Euros.
Rupture factor: negligible.

Further details can be found here.

“Intellectual Property and the Safeguarding of Traditional Cultures": a review

Feeling cultural, or even a bit traditional?  A new World Intellectual Property Organization (WIPO) publication “Intellectual Property and the Safeguarding of Traditional Cultures: Legal Issues and Practical Options for Museums, Libraries and Archives” was launched late last year.  The press release announcing it drew this comment from the IPKat, but he didn't have the chance to read and carefully review it.  The Kat therefore thanks a kind and enthusiastic reader, Ann-Gaelle Cox, for reviewing it for the benefit of us all.  Explains Ann-Gaelle:

"This recent WIPO publication provides a comprehensive overview of the various intellectual property issues arising out of the creation and treatment of traditional cultural expressions (“TCEs”) – typically creative works emanating from indigenous peoples and communities (“tradition-bearers”), such as Australian Aboriginal artists. The protection of such works poses particular challenges for cultural institutions and indigenous communities alike, the principal problem being that the existence and ownership of IP rights in such works are far from clear.
The publication is structured as follows: first, an overview of the various legal and practical issues, followed by an analysis – from an international perspective - of relevant IP rights (in particular copyright), as applied to areas of specific concern to cultural institutions such as museums. It concludes with a number of examples of good practice from institutions and communities around the world. 

Why Are TCEs An Issue? 

In general, TCEs are not “created” in the traditional IP sense: typically, they arise through custom and practice, often as a result of community – rather than individual – contributions. Also, they tend to evolve, sometimes over a long period of time. Because it is difficult, if not impossible, to ascertain exactly what was created, when and by whom, TCEs do not neatly fit the traditional IP creation–ownership matrix. 

Thus cultural institutions frequently find themselves at the centre of a complex puzzle of overlapping rights. Museums need to showcase TCEs as part of their usual cultural heritage activities, but they run the risk of offending tradition-bearers if they do not involve them proactively. While recent technological developments (such as digitisation) provide exciting opportunities for museums, they also create new challenges in terms of IP rights management.
Nevertheless, in spite of this complex environment, cultural institutions around the world are developing impressive new practices and techniques for dealing with TCEs, while taking into account ethical and cultural sensitivities. 

Legal Background 

While it can be said that IP rights are relatively well-defined, TCEs are, by their very nature, open-ended and perhaps impossible to define. Typical examples include a folk tale, a ritualistic dance, or an incantation. As the publication illustrates, for various reasons, IP law provides little or no protection for TCEs per se. Yet tradition-bearers usually see themselves as rights-owners or “custodians” of TCEs. In reality, they are often “legally disenfranchised” from their creations.
Currently, no international legal framework exists to deal with TCEs and IP rights, although various conventions (in addition to some national IP laws) seek to protect TCEs (eg. the 2007 United Nations Declaration on the Rights of Indigenous Peoples). 

The debate is not limited to legal issues. Cultural and ethical considerations bear equal, if not greater, weight. For instance, when it comes to managing disputes involving TCEs, litigation is a poor tool when compared to Alternative Dispute Resolution. One reason is that litigation is largely confrontational; more importantly, it tends to focus on the establishment and protection of legal rights, to the detriment of customary law and practice, both of which can be important factors where TCEs are concerned. 

Copyright 

Although copyright is arguably the most relevant IP right in the TCE context, its application is limited – indeed, in many cases, a TCE will not be protected by copyright. Thus TCEs run the risk of being treated as “public domain”, or considered works of unknown authorship or orphan works. Some argue that a new sui generis right should be created to protect TCEs. 

One of the principal limitations of copyright law as far as TCEs are concerned is the requirement for originality. In many jurisdictions, the threshold for originality is rather low, such that a secondary or derivative work will often attract copyright, whereas the original TCE itself is deprived of protection. An example of this would be a film based on an oral legend. Other significant limitations are fixation (a requirement in some jurisdictions), and the idea/expression dichotomy (copyright protects the expression of an idea, not the idea itself). Yet TCEs often reflect ideas, meanings, beliefs, etc. more than anything else; they are not limited to mere expression. 

Authorship-ownership questions also raise complex issues. Generally speaking, TCEs are not the product of one author – rather, they are the result of an ongoing creative process, to which members of a wider community contribute. The inability to ascertain one or more authors (and therefore, owners) has significant drawbacks under copyright law. Alternatives, such as treating TCEs as orphan works, may - depending on the jurisdiction – mean that they are subject to a compulsory licensing regime, or that they can be freely used (assuming a diligent search for the author is fruitless). 

Further, the usual copyright exceptions and limitations are arguably of limited value in the TCE context. For example, the notion of “fair use” or “fair dealing” may simply not be appropriate, especially where TCEs are in some way sensitive or sacred. 

Moral rights will sometimes be relevant, and may enable tradition-bearers to impose limitations and conditions on the use of TCEs, or to object to certain treatment. For instance, moral rights may be used to control the digitisation of TCEs by cultural institutions (eg. the creation of thumbnails – digital copies in miniature format). 

It is important to note that the needs and demands of cultural institutions in relation to TCEs are increasingly complex. As well as exhibiting TCEs, museums carry out preservation, restoration and archiving activities. In particular, digitisation is a challenge, especially when TCEs in digital format are then made available via the Internet. Mass dissemination inevitably increases the risk that tradition-bearers will be offended (if, for instance, prior consent is not obtained), and that users may misuse such TCEs. 

Other Forms of IP Protection 

The publication also considers the application of trade marks, geographical indications and domain names to TCEs, albeit in less detail. As regards trade marks for instance, problems may arise when TCEs are made into logos. Similarly, registering (as a trade mark) the name of TCE is likely to be an issue. 

Good Practice 

The publication concludes with a round-up of current good practices relating to the management of TCEs, by both cultural institutions and traditional communities. A WIPO database of existing IP-related protocols, policies and practices has been compiled for further reference and is accessible online. Examples of good practice include the principle of “prior informed consent” (eg. when researchers collect TCEs), the handling of digital archives (eg. the British Library’s policy statement regarding its archive of sound recordings), and conditions of access to online documentation (eg. the Musée du Quai Branly’s website). As far as traditional communities are concerned, steps are being taken to protect and control TCEs pre-emptively, for instance through protocols, standard agreements, consent forms, undertakings, etc. 

What Next? 

This publication is one of a number of current WIPO projects. Following on from the related WIPO Intergovernmental Committee (“ICG”) set up in 2000, several WIPO working documents are in progress. The ICG plans to submit new legislative texts in this area in 2011".

Intellectual Property and the Safeguarding of Traditional Cultures – Legal Issues and Practical Options for Museums, Libraries and Archives, WIPO (Molly Torsen and Jane Anderson), 2010, can be downloaded here.

Standards and strategies: two books in review

Patents and Industry Standards, by Jae Hun Park (Korean Intellectual Property Office, Korea), is a relatively slender book on a subject which is immense and simply keeps expanding. According to the increasingly adventurous IP publisher Edward Elgar Publishing,

"This insightful book reviews the inherent conflict between patent rights and industry standards and through analysis of both US and European case law proposes measures to improve current systems and foster greater innovation.

Jae Hun Park searches for the appropriate balance between the rights of patent owners and the need for industry standards within the scope of patent law. He considers the current solutions provided by legal systems and using cost–benefit analysis evaluates, from a legal and economic perspective, whether patent systems can be improved. [Plot spoiler:] Jae Hun Park proposes reform to the patent system that would introduce a ‘dynamic liability rule regime’, rather than ‘property rules’.  The ‘dynamic liability rule regime’ adopts property rules at the stage when there are still competing standards, and liability rules at the stage when there are no competing standards. This would, he argues, resolve the conflict between patents and standards and mitigate the patent hold-up problem.

This is a must-read book for scholars interested in technology patents, innovation and competition law and policy, as well as those individuals working in standard setting organisations. It will also be of great interest to patent offices, patent attorneys and competition lawyers".

This member of the IPKat team has been doing quite a bit of reading and thinking about the conflict between patent rights and industry standards, within the rather different context of the impact of standards setting bodies on the balance between proprietary technology and the public domain. He is in awe of the amount of reading that the author has done; his ability to extract the pips from some of his economics reading and keep to nothing more intimidating than Venn diagrams was also greatly appreciated.  If he has a reservation, it is that he feels that the author has worked hard to find a solution to something that the reviewer is not convinced is actually a problem.  The variety of industry standards and the speed at which they have evolved and continue to transform themselves suggests that we watch and see whether genuine and insoluble problems do indeed exist before we change our relatively tolerant, ad-hoc, after-the-event approach to them.

Bibliographic information: publication date 2010. xiii + 238 pages. Hardback. ISBN 978 1 84980 011 2. Price £65 (with publisher's online discount £58.50). Also available as an ebook, ISBN 978 1 84980 548 3. Web page here. Rupture factor: slight.

Intellectual Property and Competitive Strategies in the 21st Century (2nd edition) by Shahid Alikhan, R. A. Mashelkar, comes highly praised by publishers Wolters Kluwer, in whose Law & Business series this is published.  The authors are Shahid Alikhan, who is described in all modesty as "a highly distinguished elder statesman in the field of intellectual property". His career appears to have been that of an IP diplomat, having served as Deputy General of the World Intellectual Property Organization.  His fellow author, Raghunath Mashelkar, is billed as "one of the world's outstanding chemical engineering scientists", a Fellow of the Royal Society and the holder of 26 honorary doctorates.

According to the publishers:

"It is scarcely five years since the first edition of this book, a milestone in the strategy-oriented approach to intellectual property at the global level, appeared and was quickly and widely welcomed as virtually an intellectual property agenda for the 21st century. This second edition includes a judicious update of the original data and analysis in light of the significant movement forward that has taken place over the past few years in many of the critical areas that shape the competitive strategies in the use of IP Rights. The authors have lost none of their conviction of the necessity to enhance awareness of the techno-economic effects of intellectual property rights protection on enterprise competitiveness and national growth and development.

The book provides a panoramic but detailed view of the world’s intellectual property system that embraces socioeconomic, cultural and technological development in its scope, clarifying the pitfalls and challenges that the system presents even as it promises to improve the quality of life on our planet. The authors both internationally respected and honoured for their work in elucidating the economic necessity of an intellectual property system that can inspire universal confidence, emphasize the imperative of international competiveness in knowledge-based technology.... 

... for its richly detailed treatment of trends and current reality in the field, this new, updated edition of Intellectual Property and Competitive Strategies in the 21st Century will continue to be read and put to good use by business people, international lawyers, government officials, and interested academics in all parts of the world".

With so much praise provided by the publisher, this book needs no further praise from the IPKat. Nor will it receive any. He opened it with some trepidation, having somehow incredibly missed the first edition when it exploded on an unsuspecting world.  Nor, since its publication, has he heard anyone even mention it. Could this be some conspiracy, perhaps, to conceal its presence from him?

In truth, this is a modest little book, not so much as an agenda for the 21st century as a simple introduction for beginners, a book written (it appears) by authors whose familiarity with competitive strategies is derived from reading what others have written on it. Feted as a milestone, it is more of a molehill: it is in many places a collection of muddled generalities, of generally unexceptionable sentiments and of unassailable truisms. Nor is it clear as to who is expected to read it. Are the authors talking of strategies for international agencies, for special interest groups and lobbyists, for businesses or for individuals?  The publishers have done this book and its authors no favours by puffing its importance beyond all credibility.  Had it been entitled something like Some General Reflections on the Role of Intellectual Property, it would have deserved more respectful treatment.

Bibliographic details: published 2009. Hardback. xiii + 221 pages. ISBN: 9789041126443. Price: $119.  Book's web page here. Rupture factor: slight.

The requirement for an invention

The IPKat has been taking a look at a new title on an old subject --The Requirement for an Invention in Patent Law, by respected Oxford academic Justine Pila. Justine Pila, an Official Fellow of St Catherine's College, Oxford, is also University Lecturer in Intellectual Property and a great enthusiast for historical, doctrinal and theoretical dimensions to the subject, as this new title shows.

According to the book's web-blurb

"A central theme of the book is that the requirement for an invention, properly construed, sets the boundaries of the patent system in two ways. The first is by defining the categories of subject matter capable of supporting a patent, and the second is by restricting the protection conferred by a patent to individual subject matter conceived qua invention [the Kat wonders whether a good case can be made for trying this the other way round, arguing that it's the acceptance of certain categories of subject matter that shapes the requirement for an invention ...]. In serving these functions, the requirement for an invention helps to fulfil the public benefit objectives of the patent system by mediating the balance struck by patents between individual patentees and the public.

This book offers an analysis of legal conceptions of the invention in UK patent law and their development from before the first patent legislation of 1623 through the patent system's recent phase of Europeanisation [This is a remarkable conceptual and functional evolution. If we didn't know what the system looks like today, it would be impossible to predict it from its earliest sources]. It includes a detailed study of the contemporary (EPC) requirement for an invention and its construction by the European Patent Office, and an analysis of the legal and policy issues which that construction raises. It also places the UK and EPC law in its interpretive context, including its international statutory context, and offers a detailed account of international law-making in the field of patents" [The Kat thinks international patent law-making would make a great multi-party board game. The only problem is working out who the winners are ...].

This book unashamedly appeals to academics and patent law makers -- but that's no excuse for not reading. The practitioner will find a surprising amount of case law, discussed and deployed effectively in its context. And while the undergraduate IP student may find it hard to squeeze a thorough read of it into the crowded schedule of coursework and revision commitments, the IP research candidate will be able to stand on the author's shoulders, as it were, and view the horizon of PhD topics from an altogether higher standpoint.

Dr Pila is to be congratulated for her diligent research and lucid writing. Although this Kat has lived through the past 30 years or so of patent reform, at national, regional and international level, and reckoned he had a fairly good grasp of its evolution over that period, he had not fully appreciated how much went on behind the scenes, particularly in the conferences leading up to 1 June 1978 -- Day One of the new order of the universe when the European Patent Office opened its doors to business.

Bibliographic data: xliv + 351 pages. ISBN 978-0-19-929694-1. Hardback, price £60. Rupture factor: low. Web page here.

Book Review: "Patent Law for Computer Scientists"

How much information does a patent application have to disclose for it to be patentable? Usually this question is about whether an invention is sufficiently 'enabled', i.e. whether it provides enough information for a hypothetical skilled person to reproduce the invention without having to invent something along the way. In the complex area of patentability, however, this can also be about whether there is enough material in the patent specification for the claimed invention to have enough of a technical contribution over the prior art to justify an inventive step. Computer-implemented inventions (CIIs) are particularly prone to this problem, as anyone who has seen a typical patent specification for such an invention will already know. Is a block diagram, possibly with a nice cloud shape representing the internet, enough? What if the diagram represents a new way of buying something over the internet? Does it make a difference if there is something more complicated going on? If so, how much detail should the specification go into to stand the best chance of the application being granted in some form? These, and many other, questions are raised and addressed in "Patent Law for Computer Scientists", a book written by four very experienced EPO examiners Daniel Closa, Alex Gardiner, Falk Giesma and Jörg Machek. With over 70 years of collective experience, and with backgrounds in physics, engineering and computer science, they have become apparently quite concerned at the enormous number of patent applications they have had to deal with, and mostly refuse, over the past couple of decades. With this book, they are offering to give something back to would-be applicants by providing some help on how to give their inventions the best chance of success at the EPO.

The book kicks off with some background on the subject, which takes the reader from the basics of what a patent is about through some enlightening figures about how many 'software patents' there really are out there (about 17,000 patents with some IT flavour are granted by the EPO each year, about a quarter of the total), to some examples of where patent applications in the software field have become public spectacles, including the infamous Amazon series of applications. There is also a useful discussion of the general differences between how applications are dealt with in the USA, Japan and Europe. Unsurprisingly, the EPO tends to be the most strict, the USPTO the least strict, and the JPO seems to lie somewhere between the two.

The bulk of the rest of the book is then taken up with various example cases of made-up inventions, which have clearly been derived by the authors from their experience of many real-life cases. These case studies illustrate the many areas in which CIIs are usually applied and, most importantly, where they most often run into trouble at the EPO. The examples range from a method of selling over a network (which has considerable similarities to the type of invention from the well-known Hitachi decision of T 258/03), to methods of implementing digital rights management, multi-player games and e-learning systems. In each example, the authors describe an invention at various levels of abstraction, gradually adding more and more technical details until the claimed invention resembles something that might reasonably be seriously considered at the EPO for inventive step and not simply dismissed without the need for a search.

The examples in their various fields build up to cover many, if not all, of the conceivable types of inventions that a patent attorney might face technical problems with at the EPO, and together give the reader a very detailed picture of how to go about claiming an invention in the 'right' way as far as the EPO is concerned. In most cases this is unfortunately unlikely to be of much direct help to an applicant because, by the time an application faces the types of objections mentioned, it is far too late to do anything about it. This is where the reader may realise that the main use of this book is not really as a 'how to' guide to getting applications with no hope through the EPO system successfully, but as something to help an applicant prepare for getting a patent specification prepared properly at the outset.  As a result, the IPKat is a little confused about exactly who the book is properly aimed at, as it doesn't really seem to be only for computer scientists.  Using the EPO-style interpretation of the word 'for', it seems to be also very suitable for European patent attorneys with an interest in the field of computer-implemented inventions, and particularly well suited for US attorneys who might like to think beyond the requirements of the US system when preparing their applications for being filed internationally. For any of these people, as well as the occasional pro-patent computer scientist, the IPKat would highly recommend it.

Politics of IP

Is politics a dirty word? Not when it's part of a book title. And for those who enjoy thinking/worrying about the political dimensions to IP, this book is just for them: it's Politics of Intellectual Property: Contestation Over the Ownership, Use, and Control of Knowledge and Information, edited by Sebastian Haunss (University of Konstanz, Germany) and Kenneth C. Shadlen (London School of Economics and Political Science).

What does this collection of essays offer? In short, "empirical analyses of conflicts over the ownership, control, and use of knowledge and information in developed and developing countries". As the publishers explain,

"Sebastian Haunss and Kenneth C. Shadlen, along with a collection of eminent contributors, focus on how business organizations, farmers, social movements, legal communities, state officials, transnational enterprises, and international organizations shape IP policies in areas such as health, information-communication technologies, indigenous knowledge, genetic resources, and many others. The innovative and original chapters examine conflicts over the rules governing various dimensions of IP, including patents, copyrights, traditional knowledge, and biosafety regulations.

Written from a political perspective, this book is a must-read for political scientists, sociologists and anthropologists who study IP and conflicts over property. It is also an essential read for stakeholders in institutions, NGOs and industry interested in knowledge governance and IP politics".

The IPKat is pleased with the timely appearance of this book. There's a great deal of IP-kicking going on at the moment, much of it coming from economists -- whose discipline is inherently uncomfortable with the notion of the monopoly -- and plenty of it coming from "political scientists, sociologists and anthropologists who study IP and conflicts over property" too. This book provides a valuable one-stop-shop for anyone who wants to get a better appreciation of the grounds on which IP is understood, analysed, criticised and tested out by those who are not always as favourably disposed towards IP as the Kats may be but whose critical comments are (at least in theory) shaped by their scholarship, not by their self-interest.

The contents are tilted more towards patents than towards other IP rights (trade marks have rarely hogged the political limelight, and these essays were compiled a little too early to catch the current political debate over copyright), and they visit destinations as far afield as Kerala, Thailand, Australia and Latin America. This reviewer especially liked Lars Bretthauer's essay, "Intellectual Property Rights in the Digital Movie Industry: Contemporary Political Conflicts in Germany", but all the chapters offer much food for thought.

Bibliographical details: published 2009. ix + 249 pages. Hardback. ISBN 978 1 84844 303 7. Price £59.95 (with publisher's online discount £53.96). Rupture factor: low. Web page here.

A book of substantial gravity ...

Let no-one assert that the IPKat's reading preferences are so blinkered that he's only interested in books that deal purely with intellectual property. He also sometimes takes a look at books that only partly deal with intellectual property. One such title is The WTO, Intellectual Property, E-Commerce And The Internet, edited by Rohan Kariyawasam (Senior Lecturer in Commercial Law, Cardiff Law School, Cardiff University, Wales). This is the sort of publication you buy if (i) you can't afford your own library but (ii) you have a pressing need to keep a large selection of multidisclinary WTO/IT/Competition/IP literature at your fingertips.

Concerning this book the publishers (the increasingly excellent Edward Elgar Publishing) say:

"In the face of an increasing threat from separate bilateral trade negotiations the World Trade Organization (WTO), more than any other international institution, is set to have a significant impact on the trade in technology in the decade ahead [Whether bilateral IP treaties are a threat to WTO's activities or actually complement it is a good subject for debate]. Alert to this potential, Rohan Kariyawasam brings together articles on international economic law and policy that touch on issues as diverse as telecommunications, e-commerce, information technology and technology transfer ['Diverse' depends on your perspective. 'Diffuse', perhaps? Or 'diverting' ...?]. This two-volume set navigates an innovative discussion of these sectors, their effect on international trade and the role of the WTO in promoting the worldwide trade of electronic goods and services. The papers will have relevance for regulators, lawyers advising both in private practice and in-house, academics, students and those in the NGO sector with an interest in trade and technology [not to mention weight-lifters]".

The selection of chapters is guaranteed to provide not just a multi-dimensional view of the WTO's real and perceived roles, and the aspirations which many people held for it, but also an historical view, with chapters going back to the mid-to-late 1990s (the WTO's mediaeval period, one might say). The cast of contributors is stellar, and more than a few of the "usual suspects" will be found between the covers: Keith Maskus, Eleanor Fox, Carlos Correa (can readers guess his perspective on ‘Implications of Intellectual Property Rights for the Access to and Use of Information Technologies in Developing Countries’?) and Peter Drahos are among them. Four chapters are provided by the editor himself, and they are not out of place. Well done, says the IPKat!

Bibliographic data: published 2009. Two hardback volumes. ISBN 978 1 84376 619 3. Price £295 (with online discount from the publisher's website £265.50). Rupture factor: severe. Book's web page here.

Aplin and Davis: a worthy purchase

In the olden days when he was but a little kitten, the IPKat never had much use for Case Books. For the most part, they struck him as an excuse for not reading cases as reported in the Law Reports. Also, for some reason that he could never fathom, the case books on his undergraduate reading lists were never the ones that were designed for use with the recommended textbooks. The sole exception was the first edition of Tony Weir's Casebook on Tort, an edgy, querulous compendium of questions, observations and literary allusions which was not so much in-your-face as up-your-nose.

Nowadays, the compilation of Case Books has been elevated to an art-form, as their authors -- starting from the point of view of what the intellectually curious student needs rather than what the author wants to say or, sometimes sadly, what the publisher thinks it can sell -- provide something approaching a one-stop-shop for the diligent and thoughtful reader. Intellectual Property Law: Text, Cases, and Materials by Tanya Aplin and Jennifer Davis is one such book. According to the web-blurb from publishers Oxford University Press:

"* Focusing on domestic intellectual property law, while placing it firmly in its international context allows students to gain a broad and thorough understanding of IP as a global subject;

* Combines well-chosen excerpts from case law and secondary materials with stimulating commentary;

* Carefully written and developed to map closely onto intellectual property law courses;
* Provides a selection of relevant further reading;
* Supported by a specially designed Online Resource Centre which provides updates of recent developments in the law and links to relevant websites;
* This book provides a complete resource for undergraduate and postgraduate students of intellectual property law. It is designed to be the first of its kind, in combining extracts from major cases and secondary materials with critical commentary from experienced teachers in the field".

Fortunately for the book's intended users, the text is rather less telegraphic -- and it really delivers on its promises. The intelligent use of extracts of articles, books and other secondary materials not only provides an effective functional framework within which to portray the primary materials, but also helps the reader get a taste of the sheer internationality of IP law and its place next to adjacent streams of economic and philosophical thought. The spread of topics is generous too: subjects such as remedies, which examiners are sometimes reluctant to examine, are given their rightful space.

In short, this is not only the book the IPKat would have liked to have had as a student; it's the book he would have been proud to write, if the time, opportunity, energy and inspiration had conspired to combine.

Bibliographic information: xlviii + 861 pages. ISBN 978-0-19-927157-3. Paperback,

Price: £37.99. Updates here; weblinks here; book's web page here. Rupture factor: substantial.

A fine performance

To his acute embarrassment, the IPKat has only just, and rather belatedly, got round to reviewing the fourth edition of Performers' Rights by Richard Arnold (now Mr Justice Arnold, of the Patents Court for England and Wales). Despite only a four-year gap since the publication of the third edition, this authoritative and comprehensive review of the subject has many new issues to tackle and this task is undertaken with the author's obvious enthusiasm for the subject matter.

A particular joy, purrs the Kat, is the way in which the book not only covers with care every detail of "Part II" of the UK Copyright, Designs and Patents Act 1988 (called, with disarming simplicity, 'Rights in Performances') but also ranges across other related subjects. These include other types of protection from which performers may profit: passing off, privacy, defamation for example. Also discussed are some of the problems arising from performers' contracts. Although he doesn't much like things that bark, the Kat endorses the book's emphasis of the importance of the rule in Barker v Stickney (that an author cannot enforce a right to receive royalties against a third party assignee of a copyright which has been assigned by the author to a publisher and which the publisher then assigns to a third party) and shares the author's surprise that the rule is not better known.

There are a couple of aspects of the book that will not meet with universal approval. The IPKat is well known for his dislike of the reproduction of statutory extracts in an era in which trees are so precious and statutory materials are readily available at no charge on the web. In this case the statutory appendix count is 170 pages, or about 30% of the total. This may well however be the preference of the publisher, who finds it easier to justify a higher price when the book is, er, bigger.

The book also includes six pages of the author's detailed and radical proposals for reform of the present law. As it happens, the Kat disagrees with several of these proposals but their inclusion makes for a more engaging and lively book and is therefore to be welcomed. A further minor niggle is that some complex issues, dealt with carefully in one place in the book, are not always fully cross-referenced. For example, Chapter 5 opens with a good discussion as to whether certain UK exceptions are consistent with European law, but there is no cross-reference to this debate when the specific exceptions concerned (paras 15 and 18 of Schedule 2 CDPA) are discussed later in the same chapter. Someone in a hurry, looking for a specific answer to a specific question, might be caught out by this.

Delivering judgment, the Kat rules that this book is an excellent addition to any practitioner's or academic library. It was also stunningly up-to-date, including references to cases decided almost as the book was going to press. Given that at least two of those cases remain subject to ongoing appeal proceedings (Fisher v Brooker, the "Whiter Shade of Pale" case, is awaiting judgement in the House of Lords and Football Association Premier League Limited and others v QC Leisure, the case concerning smartcards for foreign satellite transmissions, is pending before the European Court of Justice), another edition very soon will doubtless be justified. It would be a shame if we are deprived of this by Richard Arnold's promotion to the bench.

Finally, a challenge for IPKat readers: in the book's useful survey of the social and economic position of performers, which provides the background to the evolution of the legal rights of performers, it is asserted that "the first English actor to achieve social prominence was Henry Irving, knighted in 1895." Do readers agree? If tempted, the Kat might make the case for David Garrick, who died a century or so earlier, after suffering a fit or stroke while the guest of Lord Spencer at Althorp, was the first actor to be buried in Poet's Corner at Westminster Abbey and whose grand house on the River Thames at Hampton still survives - although Garrick might be disqualified on the grounds that he was feted as a theatre manager as much as he was as an actor. Any other candidates?

Bibliographic details: Performers' Rights, Richard Arnold, 4th Edition (published 31 December 2008), hardback £175.00. Sweet & Maxwell, ISBN 978-1-84703-787-9. Rupture factor: moderate-to-low. Getting-nicked-off-the-desk by-colleagues factor: dangerously high. Website here.