Some recent publications -- and a special offer for IPKat readers

Hart books: not too
"deer" for IPKat readers

The IPKat is one of a number of people who has a soft spot for Hart Publishing (motto: "Our aim is a simple one: to publish good academic books and journals about law which will enhance the study and practice of law in all its aspects"). Anyway, why be generous with the praise when we can talk about the prices? Hart has just told the IPKat the good news that his (the IPKat's, that is) readers are entitled to a whopping 20% discount on each of the four new titles launched this year. They are, in no particular disorder,

The Common Law of Intellectual Property: Essays in Honour of Professor David Vaver, edited by Catherine W Ng, Lionel Bently and Giuseppina D'Agostino. August 2010. ISBN 9781841139708; hardback; 528pp; £75. Web page here 

'Expert Privilege' in Civil Evidence, by Paul England. December 2010. ISBN  9781841133034; hardback; £45. Web page here 

Oliver on Free Movement of Goods in the European Union (Fifth edition), editor Peter J Oliver: Contributors: Stefan Enchelmaier, Malcolm Jarvis, Angus Johnston, Sven Norberg, Peter J Oliver, Christopher Stothers and Stephen Weatherill. September 2010. ISBN 9781841138107; hardback; 628pp; £95. Web page here

Intellectual Property Law and Policy Volume 11, edited by Hugh C Hansen. November 2010. ISBN 9781841139968; hardback; 862pp; £125. Web page here 

International Trade Mark and Signs Protection: a Handbook, edited by Paul Lange. June 2010. ISBN 9781841139005; hardback; £300. Web page here 

To claim your 20% discount, be sure to quote reference IPKAT11 when placing your order. If you are ordering online, do please quote the reference in the special instructions field. The discount will not show up on your order confirmation but will be applied when your order is processed. If you have any problems or questions, feel free to email Hart here or you can even use the phone: +44 (0)1865 517530.

Something to read, something to refer to?

Is there room for morality in IP, or has it been displaced by economics?  The November 2010 issue of the Journal of Intellectual Property Law and Practice (JIPLP) is now available in full to its online subscribers. The full list of contents can be viewed here, whether you are a subscriber or not. The November Editorial, "IP and the moral maze", decries the erosion of principles of morality from the criteria by which intellectual property rights are judged, while the influence of economic analysis on IP has grown. You can read this Editorial in full here.

Brandstrike is offering a free Guide to Trademark Registration in European Dependent Territories.  This useful item, which comes out in November, covers British, French, Danish and Dutch dependent territories in Europe, the Caribbean and the Pacific and Atlantic oceans. Among other things it addresses (i) which dependent territories are automatically covered by a national (UK, France, Denmark, Benelux), CTM and Madrid Protocol registration, (ii) when Madrid Protocol or Community trade mark registration fail to meet dependent territory registration requirements. Each territory is listed with registration requirements, including timescales. All information has been verified with local attorneys in the territories. If you'd like a copy, email Damian Croker here and just ask him for it.

Is there room for adverts in a book?  The IPKat has just taken possession of a handsome, crisp new copy of the second edition of The Innovation Handbook: how to profit from your ideas, intellectual property and market knowledge.  Under the supervision of Consultant Editor Adam Jolly, a business writer and editor who is no stranger to publisher Kogan Page's IP/business list, this book is nothing if not accessible -- which makes it an ideal present for a lay client with a good idea since the £29.95 (or US$60) it costs a private practitioner is a small price to pay for the time it'll save him trying to explain to his client what can be done, and how.  Says the blurb:

"The Innovation Handbook is designed as a practical guide to the effective management of ideas and knowledge for leaders of organizations who want to move ahead of their competitors and offer new sources of value to their customers. Drawing on a wide range of experience and expertise in strategy, technology, brands, intellectual property, finance, marketing and management, it will discuss how best to combine an open search for potential winners with a process that captures their full value".

The well-spaced easy-to-read text is interspersed with a good many advertisements, an unusual feature among books in the IP -- as is its front cover endorsement by a number of backers.  It's probably worth advertising in a book like this, since it's more likely to get read than a stodgy reference-type work and will have a far longer shelf-life than a typical issue of a periodical journal.  You can find more details of the book here.

Global IP law: two recent publications

Covered in embarrassment, the IPKat has just unearthed a treasure trove of books which he has received for review, but which for one reason or other have been delayed on the shelf for rather longer than he likes. He's now taking the opportunity to have a good look at them and he's happy to report on what he sees.

First up is Global Challenge of Intellectual Property Rights, edited by Robert Bird (Assistant Professor of Business Law, University of Connecticut, US) and Subhash C. Jain (Professor of International Marketing, Director, Center for International Business Education and Research, CIBER), an author whose credentials are so impressive that he looks over-qualified for almost any job short of ruling the economy of the free world.

So what's this book about? According to the publisher's web-blurb:

"The importance of intellectual property rights is now well established as a vital component in the success of firms and nations. The diverse contributors to this volume, drawn from the fields of law, business and economics, clarify and analyze the problems and promise of IP policy from a global perspective. They discuss both developed and emerging nations and advance the understanding of this increasingly important topic [if IP gets much more important, it'll go 'pop'].

The articles address issues from an interdisciplinary focus with an emphasis on current topical issues. Topics addressed include intellectual rights protection in emerging nations such as China, an exploration of a specific cross-national intellectual property perspective, strategies for protecting intellectual property rights, and a guide to understanding emerging and non-western legal systems. A mix of theoretical and practical observations helps the reader navigate the increasingly international topic of intellectual property as well as offers strategies for optimal utilization of intellectual property assets. The volume serves well both as a solution-oriented book and as a tool for facilitating further discussion and analysis in the classroom.

Scholars and students in law, business and economics, as well as business practitioners interested in a global perspective on IP policy, will enjoy this book.

The IPKat, having overcome his perpetual prejudice against the overused, hackneyed light-bulb motif as a symbol of intellectual property, would be hard-pressed to call this a book to enjoy, unless enjoyment comes from leaving the reader in intellectual suspense: it's a book to stimulate, to inform, to offer a variety of perspectives from which to view IP and methodologies with which to analyse it -- but it will leave the reader with the strong impression that IP, despite its history and pedigree, is very much an instance of "work in progress" rather than the finished product. Each era, each technology, each set of social and economic imperatives will interact with basic IP concepts in a never-ending series of changes, which provoke fresh changes in turn. It's a story which, so far as we can tell, has plenty of action but no ending.

Bibliographic details: published by Edward Elgar, 2008. xix + 293 pp. Hardback, ISBN 978 1 84720 360 1. Regular price £90.00 (with online discount, if you buy direct from the publisher, £81.00). Web page here. Rupture factor: low. This book is also available as an ebook (ISBN 978 1 84844 488 1).


Next off the to-be-reviewed shelf is Global Intellectual Property Law, by the IPKat's friends Graham Dutfield (Professor of International Governance and Co-Director, Centre for International Governance, University of Leeds) and Uma Suthersanen (Reader in Intellectual Property Law and Policy, School of Law, Queen Mary, University of London). This reviewer has worked with both authors over the years and can testify to their enthusiasm, willingness to ask awkward questions and commitment to sweeping away the cobwebs of conventional habits of thought.

What does the publisher's web-blurb say about this title?

"Globalisation of trade means that intangible informational resources are now produced, bartered and consumed anywhere and everywhere defying jurisdictional borders. Intellectual property has moved into the mainstream of national economic and developmental planning; in the recent past it has also emerged as the central impetus in multilateral trade relations. The authors of this original and progressive textbook trace the evolving remits of intellectual property, which are rapidly expanding to embrace new subject matter and increase the scope of protection. This creates conflicts with current trade, development, cultural, ethical, human rights and economic mores.

This book reflects on intellectual property as it stands at the crossroads of these values. It considers the challenges presented by such developments as the commodification of persona, the commons, and life itself. Most significantly perhaps, the book examines the impact of intellectual property on the international stage, especially in respect of trade, development, economics and biological and cultural diversity. It is sure to become an invaluable reference work for scholars and students of intellectual property, international law, public policy, politics, government, human rights and development, as well as legal practitioners".

The book's website comes with some glowing commendations from sources around the world. Of these, the IPKat's favourite comes from the Australian Intellectual Property Law Bulletin:

‘. . . the book is enlightening for practitioners who are often required to take into account global considerations when advising clients. . . It would be of particular interest to policy-makers in the intellectual property field.’

All the Kat can say to this is that he'd love to know where he can also get his hands on clients who are happy to pay to have their global considerations taken into account. He wouldn't mind a few of them himself.

This volume covers much of the same ground as Global Intellectual Property Law, but in a very different way. Lacking the same wide range of backgrounds and interests that have shaped the writings edited by Bird & Jain, it gains by being able to offer a more consistent and intimate approach and gives the impression of having been shaped as much by the authors' perceptions of their students' abilities and interests as by the desire to shake the reader out of long-held and possibly wrong-headed assumptions about the effect of IP law globally.

Bibliographic details: published by Edward Elgar, 2008. ix + 370 pp. Hardback. ISBN 978 1 84376 942 2. Price £ 85.00 (with online discount, £ 76.50, if you buy directly from the publisher). This book is also available as an ebook 978 1 84844 386 0. Book's web page here. Rupture factor: low. You can get a PDF of the first chapter here.

So which do you buy if you can only afford one? That's a difficult question, since the books do not exactly replicate one another. From his own perspective, if the IPKat were preparing a lecture and wanted to consider all his options in the cold light of day, he'd probably want his copy of Bird & Jain at hand. However, if he were going off for a drink or two and a good argument with his students after the lecture, he thinks the Duffield and Suthersanen would be his choice.

New books

The IPKat has come into possession of the sixth edition of the CIPA Guide to the Patents Act, edited by Stephen Jones (Baker & McKenzie) and Paul Cole (Lucas & Co) with Alan White as consultant editor, published at the end of March.

The latest edition of the Black Book follows its tried-and-tested formula of reproduction of statutory provisons, followed by detailed discussion of relevant case law. The result, in the words of Lord Justice Jacob, who wrote the foreword, is 'both useful and intelligent' (though may leave you in need of a stronger prescription for your glasses). The book includes changes in the light of the Patents Act 2004, the EPC 2000 and the Patents Rules 2007, as well as discussion of cases decided since the last edition in 2001 (think Kirin Amgen, Aerotel-Macrossan etc).

Bibliographic details: hardback, ccxiii + 1486 pages. ISBN: 9780421957404. Price £300. Rupture factor: substantial Publisher's web page here

At the risk of a little self-promotion, the IPKat draws his reader's attention to a new book edited by IPKat team-member Ilanah. Trade Mark Law and Sharing Names considers situations where trade mark owners share their trade marks with other undertakings, either by choice, or because they are forced to do so. It asks what the implications of these situations are for the idea that a trade mark identifies the origin of one undertaking's goods or services, taking in a discussion of, amongst other things, the own name defence, the economics of trade marks, the scope of infringement, coexistence and licensing on the way.

Bibliographic details: hardback, xx + 209 pages. ISBN: 978 1 84720 279 6. Price £53.96 (online). Rupture factor: non-existent; Publisher's web page here.

Recent CIPA publications

Known to many as a professional organisation that represents the many and varied interests of patent attorneys, the Chartered Institute of Patent Attorneys (CIPA) is also something of a publisher. The IPKat has just been admiring two of its most recent efforts:

Advice for passing the European Qualifying Examination, by Derek Jackson, Paul Denerley and Nicholas Fox, has been sent free to CIPA members and CIPA Journal subscribers, but costs £10 a copy for mere mortals (plus postage and packaging for those who lurk outside the jurisdiction). If you think that £10 might seem a lot to pay for just 16 pages, remember: it's the quality that counts -- and the text is a good deal longer than Magna Carta, the Gettysburg Address, or the Ten Commandments (the written version, not the film ...).  Merpel adds, the more you pay, the more likely you'll be to read it properly. Anyway, according to the publishers, it's

"A study guide for both students and their tutors. It begins with a brief but very useful list of background reading and then takes each EQE paper in turn and analyses these in a concise but comprehensive plan of attack. All the well known dos and don’ts are there but these essential caveats are no mere repetition: they form the bedrock of the authors’ eminently practical approach to tackling the entire suite of papers. Candidates wanting to maximise their chances of success need to adopt these strong basic guidelines and they are all comprehensively covered here. The text is clear, readable, and above all practical in its approach".

The IPKat found it quite un-put-downable, not least because he cherishes the thought that all the things that candidates have problems with when they're trying to qualify -- clearly flagged by the authors here -- are the same things they are likely to have problems with in later life too. You can order this work here.

A Guide to the EPC 2000: a practitioner's guide to the New Law, a solo effort this time by Nicholas Fox, has now come out in its second edition. The front cover adds the words "Second edition" in a small box at the bottom of the page, but otherwise it looks the same as the first. Hint to CIPA: if the wording on the spine also reads "2nd edition", perverse readers like the IPKat who never throw away their old books if they think they might come in handy for legal research will find it easier to pull the right one off the shelf. 

Having got that minor quibble out of the way, the IPKat has plenty of praise for this book.  The publishers seem to like it too:

"This convenient guide ... aims to help practitioners find their way around the new law [The Kats wonder how long it's going to be regarded as "new".  It seems to have been around for quite a while now]. It contains an extensively annotated and cross-referenced copy of the revised Convention and Implementing Regulations [this is the really good bit, unless you prefer doing it yourself with replaceable adhesive notelets], as well as the Rules Relating to Fees, the Protocol on Jurisdiction and the London Agreement. Articles and their most relevant rules are printed together to enable them to be read in context [this works pretty well too]. Practical commentaries highlight the major changes, illustrating how the articles and rules interact in practice".

This book is a real convenience. Clear print and clearly expressed comments and explanations are commodities one finds too rarely these days, and it's reassuring to find that clarity of expression is alive and well against people who earn a living drafting claims ...  At £30 for non-members, £25 for members, it's good value for money. You can order this book here [The IPKat understands that it's available in French and German too].

Overkill or opportunity? Four IP titles from OUP

Oxford University Press is now publishing no fewer than four titles on intellectual property law. Is this commercial suicide or genuine prudence? The IPKat thinks it's the latter. If you run a bakery and make your money selling cakes, it makes sense to offer a selection of different products -- even though to an economist they may appear to be substitutable for one another -- because the taste of one customer may not be that of another. Likewise, clothes shops must offer a degree of choice that matches the physical needs as well as the fashion preferences of its patrons.

This message is equally important for publishers. The relationship of a reader with a book is more intimate than that of a consumer with his cakes or a customer buying clothes. This is because, while the joys of a cake are fleeting, and clothes wear out or become otherwise unfit for service, the law book imparts something of its content, and of its author's thoughts, that may remain with the reader forever. Old cakes are jettisoned if uneaten; unfashionable clothes are taken to the jumble sale or charity shop, or turned into rags for polishing shoes or cars -- but books are so often lovingly cherished and stored for years before they are even opened, then preserved and stored after they have been read. The point is this: a book and its reader must have an enriching relationship, and what is congenial to one reader is anathema to another. That it is why it is so wise of OUP to offer such a wide selection of current IP titles: love one, loathe another, but OUP will service your every need.

The four books listed below are not in any sense being reviewed by the IPKat, who is a little too close to the authors, the publisher and the market to be able to sustain with credibility any appearance of objectivity. They are simply listed for the reader's consideration. If any one of them should turn out to be of use to any of his readers, so much the better. If not, there is always another book, another author and another approach.


Intellectual Property Law (third Edition) by Jennifer Davis (Newton Trust Lecturer in Intellectual Property Law, Faculty of Law, University of Cambridge, and Fellow, Wolfson College, Cambridge) belongs to the publisher's Core Text Series. Aimed at a student readership, it is a particularly handy read for the student first approaching the course. Regrettably a lightbulb makes its appearance on the front cover but, once you've negotiated that cliche, things get better and better. The text is user-friendly, suggesting that the author has spent a good deal of time refining her techniques when explaining complex concepts in digestible form. There are also lots of cases and suggestions for further reading. According to OUP, this work "includes a chapter on industrial designs, a key aspect of intellectual property law that is often overlooked in student texts". It seems to the IPKat that so many students either mangle design law or ignore it in their exam papers that there might be a market for a cheaper IP book that leaves industrial designs out altogether -- and perhaps patents too, for much the same reason. Bibliographic details: price £19.99 (paperback), ISBN 13 978-0-19-928845-8, xlviii + 367 pages. Rupture factor: nil. Webpage here.


Contemporary Intellectual Property: Law and Policy, by the University of Edinburgh team of Hector MacQueen, Charlotte Waelde and Graeme Laurie, was originally slated for publication by Blackstone before OUP swallowed its list. The first thing that will strike any but the most inattentive reader is the physical appearance of the text: the breaking up of monolithic paragraphs into short, clear propositions, enhanced by the generous use of blue ink, makes the book very easy to read -- and even easier for the student to find second-time-around the page he remembered seeing something at a distance of some period earlier. For those who believe that books are a cooperative venture rather than the domain of their authors, there's lots of white space for the addition of marginalia, graffiti etc. Bibliographic data: price: £29.99 (paperback), lxi + 960 pages. ISBN 13 978-0-19-926339-4. Rupture factor: quite serious - this book is heavier than it looks. Webpage here.


Intellectual Property Law by the late Jon Holyoak and Nottingham University IP professor Paul Torremans, is now in its fifth edition. This member of the IPKat team liked to recommend earlier editions of this text for those of his students who found the classic Cornish & Llewelyn too intellectually challenging or user-hostile, but to his disappointment he discovered that those who struggled with Cornish & Llewelyn found that this work made similar demands on them. Both books are probably better appreciated by those who have already studied IP law and want something that will take them a little further -- which is why copies of these titles are not an unusual sight on the shelves of legal practitioners. Bibliographic data: price £27.99 (paperback). liv + 608 pages. ISBN 13 978-0-19-921785-4. Rupture factor: low to moderate. Webpage here.


Intellectual Property by Michael Spence is definitely a serious book. No gimmicks, tricks, bells and whistles but a very earnest description and explanation of the fundamental principles of IP law written by a scholar with a deep interest in the conceptual framework that underpins the system. Anyone who writes introductory texts is faced with a huge challenge: one has to effect the introduction of reader to subject through the deployment of generalised principles rather than detailed and qualified propositions: the choice of principle and the manner in which it is expressed is therefore critical to the success of the project. As a writer who chooses his words carefully, Dr Spence has managed to wield a broad brush and paint a pretty sharp miniature -- which is no mean feat. In giving IP law a context, the reader will sense that the author is more concerned to address the ethical than the economic dimensions of IP, which is somewhat contrary to the current fashion but no less welcome for that. Bibliographic data: price £19.99 (paperback), 384 pages. ISBN 13 978-0-19-876501-1. Rupture factor: zero. Webpage here.

Recent publications

Here are two recent publications from Oxford University Press that have recently come to the IPKat's attention:

The first is International Copyright Law and Policy, by the internationally-respected German scholar Silke von Lewinski. Professor von Lewinski has an international dimension to her own academic persona, being Head of Department at the Max Planck Institute for Intellectual Property Law, Munich and Adjunct Professor, Franklin Pierce Law Center, Concord.

What the publisher says:

"This book deals comprehensively with the major treaties and conventions covering the law of international copyright and neighbouring rights. It explains the complex legal, economic and political background to the treaties and their contents, and how they interrelate. There is also practical commercial discussion of how copyright and neighbouring rights are treated in international trade measures such as GATT, WTO, NAFTA, and bilateral and unilateral treaties, with a section devoted to how unilateral trade measures are applied by the USA in particular. There is also some discussion of how international copyright law and neighbouring rights may develop in the future.

The book is intended to be a definitive account of the law of international copyright and neighbouring rights, but it is also intended to be accessible to non-specialist practitioners. It is fully cross-referenced to a forthcoming companion volume, European Copyright Law and Policy (expected to publish in 2008), offering readers a comprehensive approach to the subject. The author has been consulted on copyright policy on numerous occasions by various governmental and non-governmental organisations within and outside the EC, and therefore is ideally placed to give an inside view on how policy is formed".

What the IPKat says:

"Words like 'definitive' and 'comprehensive' are proud boasts that are easier to claim than to justify, and the author's subject is a vast one. However, if one starts from the present and works backwards, rather than going back to the beginning in the 19th century and working forwards with an evolutionary approach, the project becomes instantly more manageable because a measure of judicious hindsight provides the tool that distinguishes the relevant from the irrelevant, the major issues from the sidelines. It is difficult now to appreciate the intensity of debate over issues such as how to treat the cross-border footprint of broadcasts and what to do with so-called 'multimedia' products, when the dust of history has settled on them.

The best bit of this book is its effort to provide a basis for the reader to grasp the drift from 'classical' international copyright law to the policy-rich and politically loaded territory of GATT, NAFTA and the World Trade Trade Organization's TRIPs Agreement. Both this and the development of a body of regional or local international copyright law within the European Union are the result of copyright's success--as viewed by its traditional beneficiaries, the rights holders--in acquiring market shares and generating revenues. The need for balance between rights holders, competitors and consumers has increasingly become the focus of international copyright now that early objectives such as the establishment of reciprocal recognition and norms of minimum protection have largely been achieved.

The author is to be congratulated on her endeavours, which provide a thoughtful and well-referenced springboard for all further studies in this field".

Bibliographic details: price £75.00 (Hardback). lx + 618 pages. ISBN-13 978-0-19-920720-6. Further details from OUP's website here. Rupture factor: quite substantial - this book is heavier than it looks.


Intellectual Property, Trade and Development: Strategies to Optimize Economic Development in a TRIPS-Plus Era, edited by Daniel Gervais, was published at the tail-end of 2007. The editor, a professor at the University of Ottawa, is one of the best-known and prolific scholars in the field of TRIPs-related law. The fact that this book is published by OUP seems highly appropriate, given that OUP also publishes Trade Related Aspects of Intellectual Property Rights: a Commentary on the TRIPs Agreement by that other prolific TRIPs commentator Carlos Correa, who provides this book's analysis of the impact of TRIPs and TRIPs-Plus on Latin America.

What the publisher says:

"There is a fast-growing need in many countries, in particular in the developing world, to come to a greater understanding of the links between intellectual property, trade rules and economic and social development and to find new ways of implementing intellectual property rules and optimizing their effects. This book provides a comprehensive analysis of the latest legal, economic, political and social research and advanced current thinking on the relationship between intellectual property and trade and development.

The first part of the book will cover the theoretical basis of the connections between intellectual property, trade and development. It will then go on to provide the reader with options as to how intellectual property rules can be incorporated in the local legal framework and how the positive impact of intellectual property standards can be maximized while minimizing welfare costs. This will include implementation strategies for TRIPS and TRIPS Plus norms, and also the use of measures outside the traditional scope of intellectual property norms. These measures will range from education to the establishment or enhancement of a solid industrial and research base, to fighting pandemics such as HIV/AIDS. Possible economic strategies and proposals are also offered on the protection of traditional knowledge and indigenous resources".

What the IPKat says:

"It is a multi-authored collection of chapters that address the same old problems that have bedevilled intellectual property in the post-colonial era that followed the Second World War. These problems are not difficult to identify: they are essentially these: (i) how to get developing countries to help IP owners from developed countries to enforce their rights; (ii) how to help developing countries get something positive out of their IP systems instead of cultural and scientific dependence, balance of payments deficits and workforces with permanent skill deficits; (iii) how to enable healthcare innovation, communications technologies and other IP-derived benefits to be enjoyed by the vast number of humans unable to pay for them; (iv) how to help developing countries identify things that they too can protect and exploit commercially as IP.

It seems to the IPKat that, while the questions have not changed, the manner and the technique of discussion certainly have. There are now "discourses" and "narratives" where once there were discussions and debates; terms such as "technology transfer" sound old and rusty, with a somewhat patronising air.

What is important, however, is not the terminology with which the problems are analysed but the quality and the sensitivity of the analysis itself. In this, Professor Gervais is to be congratulated for assembling a team that includes some of the most advanced and humanity-oriented authors of this generation. Contributors include such household names as Graeme Dinwoodie, Rochelle Cooper Dreyfuss and Jerome Reichman. The only thing missing is a powerful articulation of laisser-faire and new liberal philosophies that might provide a dramatic counterpoint to the large degree of consensus reflected in this excellent volume".

Bibliographic details: Price £85.00 (Hardback), xlviii + 564 pages. ISBN 13 978-0-19-921675-8. Rupture factor: moderate. Further details from OUP website here.

Recent publications

It seems like ages since the previous issue of CPA's quarterly IP Review was published, not least because the stately passage of time between its quarterly releases is packed with so many events, activities, publications and developments that its readers will inevitably have focused their attention elsewhere.

Right: the caption reads "Looking forward", but it's cunningly looking backward instead -- this is the cover of the previous edition since the current one wasn't online when this review was composed.

And it's not as if it is so long that anyone can keep it going for a full thirteen weeks before its successor appears. Alas, the pleasures of the IP Review are brief -- even at 50 pages -- and fleeting. But they are pleasures nonetheless. High quality paper, handsome illustrations, well-used space: these all conspire to lead the reader to anticipate reading about some Spice Girl's nuptials rather than, say, a deep analysis of the rules for the receipt of faxes out of office hours by the Patent Office of the People's Democratic Republic of Pedantia.

So what's in this issue? Lots of bright, little, newsy things -- the sort of IP you'd want to read if you were in the dentist's reception room and needed a series of short, snappy distractions. Mini-interviews, micro-reviews, nano-news all served up with bright, strong headlines and the slight feeling that the staff used to work for Heat! And that's why the IPKat likes it.


Rather more solemn than the IP Review is the June 2008 issue of Sweet & Maxwell's monthly European Intellectual Property Review. The IPKat's friend, dashing Polish scholar-blogger-practitioner Tomasz Rychlicki, has contributed an article, "GLPv3: New Software Licence and New Axiology of Intellectual Property Law": this deals with the evolution of GNU and FOSS software licence initiatives from their early history to their current emanations in the highly developed information society we have today.


Another computer software-related piece, this time by Paul Sugden of Monash University, considers the international prosecution of the "Drink or Die" software cracking and warez gang - an episode in which this part of the IPKat blogging team played a small consultancy role.


Also of note is the essay by OHIM's Jörg Weberndörfer on the integration of the operations of the Office, which administers the Community trade mark system, with the Madrid system for international trade mark registration -- and there's a neat case comment from Nottingham-based scholar Estelle Derclaye on Flashing Badge v Groves (noted here by the IPKat).

Recent publications

The Technology Update produced by law firm Olswang for the Second Quarter, 2008, is now available online here. The contents of this issue (22 pages) include

* Outsourcing - a team sport, by Head of Technology Nigel Swycher;
* Software patents: IPO revises practice and High Court makes another pro-patentee decision.
* Open source: the dawn of the Age of GPL Enforcement? A perspective from Heather Meeker (Greenberg Traurig LLP);
* End-user software licences: is your drafting enforceable?

If you want to be added to the email circulation list for subsequent Updates, email Jeremy here.


The May 2008 issue of Trademark World is the one that its publishers will be taking to Berlin for this year's International Trademark Association meeting next week. As ever, it has a bright-and-breezy blend of content which includes ...

* Two articles on border/customs control. The first is by Jasna Jusic and Kujtesa Nezaj, both from the Balkan team of SD Petosevic, on border measures in Montenegro and Kosovo -- two little regions that are little known in terms of law and enforcement but which, on account of their proximity to larger and richer European markets, will become increasingly important to IP owners and enforcement agencies. The second, focusing on the EU, is composed by the Simmons & Simmons team of Peter Meyer, Willem Leppink and Jenny Barker;

* An analysis by the Eversheds pair of Antony Gold and Birgit Schluckebier of the recent England and Wales near-decision on sponsored results in Wilson v Yahoo! (noted here by the IPKat);

* "Panacea or Bitter Pill?", this being a shorter and sweeter version of IPKat blogger Jeremy's address to the Pharmaceutical Trade Marks Group on the slightly strained legal relationship between trade marks and international non-proprietary names in Dublin at the beginning of April.

Full contents here.

Another chapter or two

The IPKat is ever aware of the need to adopt a position of modesty and indeed humility when relating his own achievements, but he feels obliged from time to time to draw attention to the activities of his various contributors. This being the case, he is pleased to inform you that team blogger Jeremy has just had chapters published on two vastly different topics in two very different books. These are:


Teaching of Intellectual Property: Principles and Methods, a collection of essays compiled by and on behalf of the World Intellectual Property Organization (WIPO). The named editors are Yo Takagi, Larry Allman and Mpazi Sinjela, all of whom are involved in WIPO teaching and training programmes. Jeremy's chapter is "Teaching Trademark Law". Sadly, there was quite a long time-lag between the writing stage and the publication (Jeremy was still IP Consultant to Slaughter and May when he wrote his bit, well over a year ago), which leads him to observe that, as a sound commercial principle, if your subject-matter is a moving target -- as is pratically everything to do with intellectual property law -- it's better to have a publisher lined up beforehand and then prepare the book, rather than have the book ripe and ready for its readers and find yourself casting around for a publisher. Anyway, the book has plenty of good advice about how to teach (or not to teach) IP subjects. Fortunately, as every IP student knows, there's no IP in a good idea about how to teach -- unless it has been patented in the United States, that is.

Bibliographic details: publisher Cambridge University Press, February 2008, xxvii + 330pp. Paperback 978 0 521 71646 8. Price £95 (with online discount, £76). Rupture factor: nil. Online details here.


Intellectual Property and International Trade: TRIPs Agreement, edited by Abdulqawi A. Yusuf and Carlos M. Correa, is the second edition of a work that seeks to analyse the provisions of the Agreement on Trade-related Aspects of Intellectual Property Rights not just in terms of their basic meaning but in terms of their economic, political and commercial context. Jeremy's chapter ,"Protecting Values in Industrial Designs", covers the TRIPs provisions dealing with design rights -- in practice one of the least significant areas of TRIPs/IP law on account of the paucity and lack of specificity of the relevant TRIPs Articles.

Bibliographic details: published April 2008. ISBNs 9041124292 and 19789041124296v. Hardcover, 496 pp. £150. Rupture factor: moderate. Details from publisher's website here.

Recent publications

The April 2008 issue of London-based law firm Olswang's Internet & E-Commerce Update came out at the tail-end of last week.

Right: an ingenious invention for keeping in touch when the internet is down. The EPO was not available for comment

Among its many and varied contents, IPKat team member Jeremy (who has an IP consultancy with the firm) suggests:

* New marketing regime comes into force in May. New legislation on misleading B2B and B2C marketing comes into force in May. The new regime is broader than existing rules on misleading marketing, and carries criminal penalties. Online businesses should review their marketing practices to ensure they do not fall foul of the new rules.

* Children's online safety: Government and industry urged to step up content monitoring: a government-commissioned report has recommended a range of new measures to control children's exposure to harmful internet content, including the possibility of increased content monitoring and swifter "take down" by website operators. Meanwhile, a bill before the UK parliament proposes that e-tailers and payment providers should take reasonable steps to control online purchases of age restricted goods, and data protection authorities are also turning their attention to the issue of online child protection.

* End-user software licences: is your drafting enforceable? A survey by the National Consumer Council has revealed that many software licences breach consumer protection legislation – making them potentially unenforceable against consumers and vulnerable to enforcement action by the OFT.

You can read it online here or download it in pdf format here


The April 2008 Reports of Patent Cases have hit the news-stands, sort of ... This month's issue contains full text reports on three cases:


* SEI v Ordnance Technologies (see IPKat here),


* RxWorks Ltd v Hunter (see IPKat here) and


* Astron Clinica v Comptroller-General (see IPKat and 26 comments here), plus the UK IPO's practice note from February 2008 on the patentability (or not) of computer programs.


The RPC now has its own home page here

Recent publications

From the beginning of 2008, Oxford University Press took over the publication of the Reports of Patent Cases--a series that goes back to 1883 and which is mandated by statute--from Sweet & Maxwell (publication of the RPCs is put out to tender; the series is published for the UK IPO). Mary Vitoria QC remains the editor. There are two main changes, so far as the IPKat can see. One is that the RPCs now have a neat web page of their own. The other, to the annoyance of the postal services, is that it now comes out once a month instead of fortnightly. For those who like statistics, the first six cases reported this year are evenly split at 3-3 between patent and trade mark decisions. Paper subs start at £360.


Meanwhile at LexisNexis, the black shiny Intellectual Property and Technology Cases continue apace. The IPKat visited the website printed inside each issue, here, but came away from it several minutes later without having been able to find its price. He wonders what would be the minimum number of clicks from that page to a page containing IP&T subscription details, assuming that the person looking for information on IP&T doesn't already know where to find it.


The Kat receives occasional copies of Product & Image Security, which styles itself as "official journal of Product & Image Security Foundation". There's not a lot of legal analysis, since its prime readership is people who trust technology more than lawyers. If you like to have your products lasered, electro-tagged, holographed, DNA'd or painted luminous yellow until you choose to market them, this is the publication for you. It's £75/140 euro a year, but the Kat suspects that it's so advertising-driven that a determined haggler could probably negotiate a good personal rate without denting profit margins too much. Details here.


Now, this isn't a periodical -- but it's a real curiosity. Music 2.0 is a collection essays by Gerd Leonhard (co-author of The Future of Music). Gerd is a blogger and a visionary, though those of make our livings from copyright-based business models may not always (or ever, says Merpel ...) like his messages. These essays are drawn from Gerd's blogsposts and they are as opinionated and provocative as he is. You can order this book, or download it and pay whatever you want for the pdf, here. Whether you read it or not, it asks a lot of difficult questions should under no circumstances be ignored.

New edition of Laws of the Internet

The IPKat is delighted to see that the third edition of Gringras: the Laws of the Internet has just been published under the auspices of a brand-new team. This is the first Gringras to be published by Tottel and, like any legal work nowadays that aspires to be taken seriously, it is multi-authored. Alasdair Balfour tackles the competition law aspects, Stephen Hignett the tax bits and barrister Phillip Johnson the elements relating to trade marks, domain names and passing-off -- all this under the watchful eye of the work's principal author, Olswang's Elle Todd (pictured, right, looking authorial -- or is it authoritative?).

So what do you get for your money? The book starts with an easy-to-read introduction to the internet itself and to much of the terminology that drives it. There then follows a disclaimer that this book really is about English law. It doesn't have the token chapter on highlights of US law that British publishers are so fond of, which means that Tottel must be confident that the book will sell even without it, but the reader will encounter the Digital Millennium Copyright Act, the Communications Decency Act and various other US legal sources where necessary. European Union law is not neglected either -- though there is not a lot of it on this particular topic right now.

The text, written in a clear, direct and unambiguous style, resonates with the monosyllabism of the principal author's names: you won't find long sentences meandering into a conclusionary "perhaps". The idea is that an intelligent reader who is not a legal scholar can navigate it effectively.


Left: "No", says Merpel, "I was looking for something on hot links, not hot lynx ..."


Any reader who gets bored with the subject-matter (and who can sustain an interest in the dry technicalities of data protection?) can switch to the myriad boxed scenarios that populate the text: the occurrences they describe are those with which the reader can far more easily identify.

For a reviewer who tends to see internet law as a sort of adventure playground for computer-savvy IP lawyers, this book has a strongly corrective effect. The work first focuses on the formation and enforcement of contracts made through the medium of the internet, then on its delictual dimension (negligent misstatement, defamation and product liability typical good examples). It is only halfway into the book that it picks up the IP theme, which it deserts 130 pages later for the dubious delights of criminal law, data protection, tax, competition and internet regulation.

Biographical details: hardback, xxxix + 531 pages (no wasteful appendices; index starts at p.503). ISBNs 1845922433 and 9781845922436. Price £128. Publisher's price "only" £128. More details and publisher's order form here. Rupture factor: moderate. Cover colour: purply mauvish.

Recent periodicals

The December/January issue of Euromoney's 10-times-a-year Managing Intellectual Property is looking just great (you can see all the contents of the current issue here). The cover story features "The brand reality of Second Life", a review by staff reporter Emma Barraclough on the delicate and uncertain position regarding the use and abuse of trade marks and related IP in an environment in which, despite its ephemeral nature, there is much to be gained and lost. There's also an extremely handy survey by Taylor Wessing's Roland Mallinson of the extent, if any, to which the national laws of various jurisdictions can render landlords liable for the infringing activities of their tenants. Countries surveyed include China, Korea, the Philippines and the UK as well as a small sprinkling of European nations.


The December 2007 issue of the World Intellectual Property Organization's (WIPO's) bimonthly WIPO Magazine (no.6 of 2007) also looks at Second Life. Unlike MIP's account, WIPO's is written for a more general readership than the fraternity of IP "heavies", which makes it more accessible to the reader who is happier doing business than resolving legal problems. By a curious coincidence, the content of the most recent MIP is mirrored again by an article on making landlords liable for tenants' infringements in China -- this being written by Baker & McKenzie partner Joseph Simone. You can access the current issues of the WIPO Magazine and its archives online here.


The December 2007/January 2008 issue of Copyright World, by an even bigger coincidence, leads with a cover story on ... virtual reality and real infringement, "Copyright in Second Life", by the Covington & Burling team of Kristina Rosette and Mark Young.
This piece focuses a good deal on the significance of the TOS (terms of service) under which Second Life's owners Linden Labs seek to find a happy medium between overregulating behaviour in their virtual environment and losing control of it completely. Also worth a read is the somewhat depressing survey of some recent US case law on the legality of linking by Margaret Esquenet and Danny Awedh (Finnegan, Henderson, Farabow, Garrett & Dunner). Says the IPKat, what we need now is a sort of legal SatNav to guide us through a morass of conflicting or unclear case law in flow-chart format. Any takers? You can see what else is in this issue here.


Trademark World's December 2007/January 2008 issue (see here for contents) doesn't deal with Second Life or making landlords liable. Its cover story comes from Nellie Jackson (Bristows) on the moral highground and how it makes an impact on OHIM (and UK Registry) decisions on trade mark and design registrability. This article was written and published too early to take note of one of the rulings that the IPKat is currently pondering over: Alvito Holdings Ltd's application, Case R 1461/2006-4 (one of two applications to register a sign containing the words "Not made in China": examiner refuses on public policy grounds; Board of Appeal finds mark unregistrable as being descriptive ...)

Latest EIPR

The December 2007 issue of the Sweet & Maxwell monthly IP flagship journal European Intellectual Property Review is now in circulation. It contains a pleasant spread of features, covering

* trade marks - with Finnish academic Jukka Palm considering the continuing problems caused in trying to determine whether goods are to be regarded as similar or not;

* plant varieties protection, with Australian academic Christoph Antons examining the Indian experience of sui generis protection for plant varieties and traditional agricultural knowledge;

* copyright: French academic Christophe Geiger reviews "dangerous mutations" in the once-worshipped and now oft-desecrated Three Step Test for laws limiting or providing exceptions to copyright under the Berne Convention;

* patents, wwith Dr Amanda Odell-West offering some constructive thoughts regarding exceptions to patentability for some types of medical treatment.

Three from EE

Emerging Issues In Intellectual Property: Trade, Technology and Market Freedom is a handsome collection of Essays in Honour of Herchel Smith which has been edited by Guido Westkamp (Queen Mary Intellectual Property Research Institute, London). Guido tells the IPKat that he personally chose the colour scheme for the front colour, but the truth is that the contents are even more striking. Unfortunately the English-speaking world doesn't go in very much for Festschriften, preferring to read biographies of people who are little more than children (examples here and here) to the paying of scholarly respect to a man who gave the world the opportunities for recreational sex that seem to fill most mass-circulation publications these days.

IPKat team blogger Jeremy has an interest in this volume, having penned "The Confusing Case of Mr Smith – Herchel Smith as Litigant", a slightly whimsical concoction that gives a brief account of the man and the surname with which he was indissolubly associated. Lots of other Queen Mary Intellectual Property Research Institute luminaries feature in this volume -- pretty much an A-Z, with Daphne Zographos (now lecturing in IP at Reading University) being the "Z" and giving an account of the battle between legal rights and human sensitivities that has raged round the use of the term "Washington Redskins".

Bibliographic details: publisher Edward Elgar, October 2007, 432 pp. Hardback 978 1 84542 775 7. £95 (but with online discount it's just £76). Rupture factor small (if all you do is lift the book) or large (if you read it and find its contents side-splittingly funny ...). Full details of this work here


The Kat is happy to welcome one of his favourite sequels -- New Directions In Copyright Law, Volume 5, edited by Fiona Macmillan, School of Law, Birkbeck, University of London. As with the earlier volumes, this New Directions positively sizzles with interesting and imaginative topics. Three cheers for Uma Suthersanen's "Copyright Law: A Stakeholders’ Palimpsest" (left), the most brazen attempt this year to reinstate 'palimpsest' as an item of vocabulary in the minds of those who find it difficult to comprehend any word that doesn't begin "i-" or "e-". Mind how you use the word, warns the IPKat: you and your readers may be at cross purposes. Take a look, too, at "Fertile Ground: Law, Innovation and Creative Technologies". No, this isn't another oblique reference to Herchel Smith's activities in the laboratory, but rather a good chapter from Kathy Bowrey.

Bibliographic details: published by Edward Elgar 2007. 240pp Hardback. ISBN 978 1 84542 264 6. Price £59.95 ( with online discount, £53.96). Full contents and ordering details here. Rupture factor: no problem.


Finally, take a bow, Intellectual Property and TRIPs Compliance In China: Chinese and European Perspectives, edited by Paul Torremans (School of Law, University of Nottingham, and Faculty of Law, University of Ghent), Hailing Shan (School of International Law, East China University of Politics and Law, Shanghai) and Johan Erauw (Faculty of Law, University of Ghent).

Right: like the panda, the patentee must adapt to a harsh terrain and struggle for survival, though both in China and beyond there is great hope that he will thrive. Both pandas and patentees have great symbolic value in their respective physical and economic environments ...

Says the web-blurb:

"Examining substantive IP law in detail, the contributors conclude that the changes have been far-reaching and TRIPs compliance has been achieved. They also argue that China’s IP laws are now addressing the new challenges of the digital revolution and the global economy. Of equal importance is enforcement, and in this respect the book reveals that change started later and that further work remains to be done. The book highlights the important efforts that are underway and the undeniable progress that is being made. All these issues are placed in an international context, where the development agenda is becoming more important and where the discussion on the renegotiation of the TRIPs has started.

The contributors include leading members of the Chinese judiciary, as well as academics, politicians and practitioners from China, Europe and Canada. The approach taken to the subject combines academic rigorousness with political realism and the practical needs of operating an effective law enforcement and judicial system in a vast and rapidly developing country".

The IPKat has never been persuaded that books on Chinese IP law, and China/TRIPs, are particularly informative. The issues are complex; political and economic sensitivities so often cause those who are not Chinese to tread simultaneously both too lightly and too heavily across the field of study, while the Chinese are frequently reluctant to engage in what is billed as debate but turns into a sort of licensed assault. And above all, linguistic issues demand a degree of attention that can give book production and publication an almost historical flavour. For a small, managable and relatively current introduction to the open wounds and concealed remedies that characterise the China/TRIPs faultline, this volume is probably as good as it gets. Congratulations to the team of editors and contributors for having done as much as they have; without their efforts, even this much would not have been achieved.

Bibliographic details: published by Edward Elgar, 2007. 288pp. Hardback ISBN 978 1 84542 875 4. ~Price £65 (with online discount £58). This book is also available as an ebook, ISBN 978 1 84720 721 0. Full details of contents and how to order here.