04 May 2018

Rethinking IP law and jurisdiction

In this month's Bookshelf, The Global Legal Post's Editor-At-Large, Dr David Cowan, picks two books analysing Intellectual Property Law.

Two new Intellectual Property law books from Edward Elgar offer new ways of thinking around the foundations of IP broadly, and offering more specifically the jurisdictional strategies available in Europe. Professor Ghidini's book helps us to rethink more inclusively IP in our competitive economy, while Professor Larsen builds a step-by-step guide. 

Rethinking Intellectual Property: Balancing Conflicts of Interest in the Constitutional Paradigm

By Gustavo Ghidini, Professor, University of Milan and University LUISS Guido Carli, Rome, Italy

Published by Edward Elgar, 2018

In capitalism, intellectual property rights have gone hand in hand with the market economy, rooted in the freedoms of economic enterprise and competition, and, freedom of expression. Striking a balance between creators and users is paramount. Professor Gustavo Ghidini has undertaken a rethinking of Intellectual Property with a reflective conceptualisation of the modern principles of the law at both a national and an international level. He starts from Intellectual property law as a discipline built on constitutional foundations, underpinned by these twin freedoms of freedom of expression and enterprise. Freedom of economic enterprise involves innovation and creativity, and widens consumer choice and thereby, albeit indirectly, promotes welfare. The flip side is the fundamental freedom of expression and control of one’s own ideas and creations.

Reshaping IP law
In this thoughtful evaluation of such dynamics, Professor Ghidini offers up a reconstruction of the core features of each intellectual property paradigm, namely patents, copyright, and trademarks. In his first chapter, he investigates conflicts of interests relating to intellectual property, and outlines the guiding principles for their resolution within its constitutional framework. He then moves on to examine the reshaping of patent protection, and the way that the exercise of patent rights goes hand-in-hand with the competitive dynamics of technological innovation. In chapter 3, he analyses the copyright paradigm from an industrial perspective, focusing particular attention on the online distribution of material. Chapter 4 moves on to examine trademark protection, and the protection of entrepreneurial identity and brand value. The final chapter addresses the complex intersection between intellectual property law and competition law.

Should winner take all?
On the question of balance, Professor Ghidini outlines measures for reform to allow intellectual property to become socially beneficial for all. He offers the intriguing proposal to replace the “winner takes all” approach to patents, with its first to the finish line reward for getting patents in first. He suggests more of a share in the spoils, to put it in sporting terms, and argues it is worth considering a system of awarding the equivalent of a silver, and perhaps even a bronze, medal. The problem is the one who gets in first gets the whole prize, depriving those parties which have invested considerable time, money and effort into the same work of some reward, simply because they have taken perhaps a little time longer to get to the finishing line. Critics will no doubt be wary of his redefinition of an important aspect of competition in the economy, which lies at the heart of his rethinking of the discipline, recreating a more inclusive and not exclusive process of invention and creation. 

Throughout this study, Professor Ghidini keeps the historical context close to hand, and each chapter has a literature review that is both thorough and insightful. For anyone seeking a deeper understanding of the conceptual foundations of intellectual property law there is much to learn here, while for those open to re-examining their understanding of the field there is much to stimulate.

Intellectual Property Jurisdiction Strategies: Where to Litigate Unitary Rights vs National Rights in the EU

By Torsten Bjørn Larsen, Associate Professor, Aalborg University, Denmark

Published by Edward Elgar, 2018

This timely and practical guide compares the jurisdictional advantages of litigating a national IP right with those of the corresponding European unitary IP right.  Professor Larsen explains this is the first book to focus on jurisdiction strategies in intellectual property litigation. He aims to offer an approach to developing new directions, and to provide practitioners with a new base on which to decide whether to litigate on a national or unitary right, thus providing valuable knowledge in cross-border IP litigation.

Defining advantages
The book is in four parts. Part I introduces the study, and goes on in Part II to examine the jurisdiction framework and outlines the jurisdiction rules available to the plaintiff. Part III assesses the nature of jurisdiction rules, outlining the principles, and the rules of the defendant’s domicile, establishment, plaintiff’s domicile, multiple defendants, forum delicti, central division, and finally jurisdiction. Part IV provides a conclusion and Professor Larsen answers in general that his study finds that a national IP right is advantageous to the plaintiff acting as the infringer, since more jurisdictional advantages are available to them, whereas a European unitary right is advantageous to the plaintiff acting as the right-holder, since more jurisdictional advantages are available to them.

Professor Larsen provides comprehensive coverage of the relevant intellectual property and private international law, with analysis of the latest case law of national courts and the European Court of Justice, including Case C-523/10 Wintersteiger, and, Case C-360/12 Coty Prestige. He presents a state-of-the-art overview of the relevant legal framework, including the Unified Patent Court Jurisdiction and the new European Union Trademark Regulation. The book provides a helpful table of his findings, giving a snapshot of the advantage by means of a matrix.

A question of style
Aimed at practitioners throughout the EU, it will also help advanced students and academics looking for an up-to-date reference for research into intellectual property law and policy. The author confesses the style of the book may appear mechanical and staccato to the reader, and this is certainly the case. However, it should not deter those working on IP strategy from making good use of the authors’ findings and will find helpful visual presentations of much of the material.

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