Oxford Intellectual Property Research Centre

Forthcoming Events


October 2014

IP Speaker Series
The war of the booksellers: natural law, equity and literary property in Eighteen-Century Scotland
Speaker: Professor Hector MacQueen, Scottish Law Commission
St Peter's College The Dorfman Room at 17:15

November 2014

Intellectual Property Discussion Group
Contract, Coordination, and Public Goods: The Example of News
Speaker: Jonathan Silberstein-Loeb, New York University, USA.
Oxford Law Faculty Senior Common Room at 11:30
IP Speaker Series
The role of surveys in Trade Mark and Passing Off cases
Speaker: Jeremy Dickerson, Burges Salmon
St Peter's College The Dorfman Room at 17:15
Oxford Intellectual Property Research Centre
German Copyright Law Reform
Speaker: Professor Ansgar Ohly, University of Oxford and University of Munich
St Hilda's College Brodie Room at 17:00
IP Speaker Series
The right of communication to the public in the CJEU case law: moving criteria and underlying rationale
Speaker: Professor Alain Strowel, Saint-Louis Brussels, Munich IP Law Center, Avocat at the Brussels Bar
St Peter's College The Dorfman Room at 17:15
Intellectual Property Discussion Group
Student Day
Speaker: Graduate Research Students (IP), University of Oxford
Oxford Law Faculty Senior Common Room at 11:30
IP Speaker Series
Copyright and creators
Speaker: Professor Martin Senftleben, VU University of Amsterdam
St Peter's College The Dorfman Room at 17:15
IP Speaker Series
Debating copyright formalities
Speaker: Dr Dev Gangjee, University of Oxford
St Peter's College The Dorfman Room at 17:15

December 2014

Intellectual Property Discussion Group
Major Changes to Canada's IP Regime: Protecting and Enforcing Copyright and Trademarks Internationally
Speaker: Rob McDonald QC, Dentons Canada LLP.
Oxford Law Faculty Senior Common Room at 11:30

News

OIPRC signs Memorandum of Understanding with the Center for Intellectual Property Studies (CEIPI), Strasbourg

The Oxford Intellectual Property Research Centre has signed a Memorandum of Understanding with the Center for Intellectual Property Studies (CEIPI) at the University of Strasbourg formalising a commitment to collaborate on a number of projects, including conferences and faculty and student exchanges […]

Obituary - Peter Allan Hayward 1932-2014

Peter Hayward, MA (Cantab), MA (Oxon), Barrister-at-Law died suddenly on 19th April 2014 […]

Death of Peter Hayward

It is with deep regret that we have to announce the death of Peter Hayward, Emeritus Fellow of St Peter’s College, who was Fellow and Tutor in Jurisprudence at St Peter’s from 1968 to 1999 […]

Oxford International Intellectual Property Moot 2014

The annual Oxford International Intellectual Property Moot was held at the Faculty of Law and Pembroke College from 20 to 22 March 2014 […]

Alumni Profile

Giuseppina (Pina) D'Agostino

Hon BA (York), LLB (Osgoode), MSt and DPhil (Oxford), Barrister & Solicitor, of the Bar of Ontario. Pina completed her graduate studies with distinction at the University of Oxford, studying with Professor David Vaver (2001-2004). Her book Copyright, Contract, Creators: New Media, New Rules (Cheltenham: Edward Elgar 2010) draws on this work which examined freelance authors and evolving publishing practices from a comparative, international and theoretical perspective. While at Oxford, she was a Lecturer in Law at St Peter’s College, senior editor of the OUCLJ and co-founded the Oxford International Intellectual Property Moot. Her research interests are wide-ranging as evidenced in The Common Law of Intellectual Property: Essays in Honour of Professor David Vaver (edited with Catherine Ng and Lionel Bently) (Oxford: Hart Publishing 2010). She joined the Osgoode Hall Law School faculty in 2006 and brings creativity and passion to her role as Founder and Director of IP Osgoode, Osgoode’s Intellectual Property Law and Technology Program (iposgoode.ca). She continues to work with Professor David Vaver at Osgoode and as the Deputy Editor of the Intellectual Property Journal (IPJ).

Publications

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2015

E Hudson, Drafting Copyright Exceptions: An Empirical Study (Cambridge University Press 2015) (forthcoming)

2014

V Mayer-Schönberger and Lena Wong, 'Fan or Foe? Fan Fiction, Authorship, and the Fight for Control' (2014) 54 IDEA: The IP Law Review 1

D Gangjee, Research Handbook on Intellectual Property and Geographical Indications (Edward Elgar, Cheltenham 2014) (forthcoming)

D Gangjee, 'Spanish Champagne: An Unfair Competition Approach to GI Protection' in R.C. Dreyfuss & J. C. Ginsburg (eds), Intellectual Property at the Edge: The Contested Contours of IP (CUP, Cambridge 2014) (forthcoming)

G Dinwoodie, 'Third Annual Emmanuel College International Intellectual Property Lecture: Ensuring Consumers "Get What They Want": The Role of Trademark Law ' (2014) Cambridge Law Journal (forthcoming)

G Dinwoodie and Mark Janis (eds), Trademark and Unfair Competition Law: Doctrinal Debates (Edward Elgar Publishing 2014)

G Dinwoodie and Mark Janis (eds), Trademark and Unfair Competition Law: Themes and Theories (Edward Elgar Publishing 2014)

G Dinwoodie and Mark Janis, Trademarks and Unfair Competition: Law and Policy (4th edition, Aspen Law Publishing 2014)

2013

European Max Planck Group on Conflict of Laws etc, Conflict of Laws in Intellectual Property: The CLIP Principles and Commentary (Oxford University Press 2013)

G Dinwoodie, 'Dilution as Unfair Competition: European Echoes' in Rochelle Cooper Dreyfuss and Jane C. Ginsburg (eds), Intellectual Property at the Edge: The Contested Contours of IP (Cambridge University Press 2013) (forthcoming) [...]

This response to Barton Beebe explores whether contemporary experience in Europe supports the central arguments advanced by Beebe in The Supressed Misappropriation Origins of Trademark Antidilution Law. The development of E.U. law is largely consistent with the idea that dilution law is in part an effort to install a misappropriation regime, at least insofar as the objects of protection are trademarks with a reputation (increasingly, a smaller caveat as the scope of potential trademark subject matter expands and the reputation threshold falls). This has important local consequences: if dilution law is in truth is a law against misappropriation, the Court of Justice of the European Union has greater scope to contribute to the creation of a nascent European law of unfair competition. But examining recent European case law also suggests that understanding misappropriation as part of a broader system of unfair competition may moderate the formalist critique of misappropriation as wholly indeterminate and unlimited. Understood in its unfair competition milieu, a misappropriation-based concept of dilution retains some potential for measured delineation of the edges of protection.


E Hudson, 'Implementing Fair Use in Copyright Law: Lessons from Australia' (2013) 25 Intellectual Property Journal 201

W Cornish and G Dinwoodie, 'Intellectual Property' in Andrew Burrows (ed), English Private Law (3d ed) (Oxford University Press 2013) (forthcoming)

R Burrell and E Hudson, 'Property Concepts in European Law: The Case for Abandonment' in H Howe and J Griffiths (eds), Concepts of Property in Intellectual Property Law (Cambridge University Press 2013)

D Gangjee, 'Property in Brands: The Commodification of Conversation' in H. Howe and J. Griffiths (eds), Property Concepts in Intellectual Property Law (CUP, Cambridge 2013)

J Prassl and M Freedland, 'Resolving Ownership Invention Disputes: Limitations of the Contract of Employment' in M Pittard (ed), Business Innovation – A Legal Balancing Act (Elgar 2013)

R Burrell, M Handler, E Hudson and K Weatherall, 'Submission in response to Discussion Paper No. 79' (2013) ALRC Inquiry into Copyright and the Digital Economy

G Dinwoodie, 'The Europeanisation of Trade Mark Law' in Ansgar Ohly & Justine Pila (eds), The Europeanisation of Intellectual Property Law (Oxford Univ. Press 2013) (forthcoming) [...]

This Chapter analyses one harmonisation project within European intellectual property law, namely, the recent development of trade mark law within the European Union (EU). It highlights several characteristics of trade mark harmonisation within the European Union. First, harmonisation of national trade mark laws in the Union has been “tight”. In this regard, for reasons that make sense in the European political and legal theatre, it is different from the international model of so-called “minimum rights” harmonisation that drove convergence of trade mark norms for the preceding century. Second, the Trade Mark Directive (with the aid of the Court of Justice and national courts) has effected almost total harmonisation of substantive trade mark law, belying the claims of limited harmonisation that are found in the recital to that Directive. Third, the Court of Justice has exhibited a tendency to limit any room for member state manoeuvre, for example, finding that even optional provisions of the Directive must be given a single European meaning. The Court has paid little attention to concerns of subsidiarity. Finally, additional pressure to find single European solutions results from the existence of a Trade Mark Regulation that creates a counterpart unitary regional right (the Community Trade Mark, or CTM) and attendant EU institutions to administer and enforce that right. This parallel EU-level regime tends to reinforce the idea that trade mark law has been wholly Europeanised, and exerts pressure on the content of Directive-driven national law because the demands of vertical coherence have trumped the potential benefits of regulatory competition between national and regional regimes. In short, there has over the past twenty years been an extensive and deep Europeanisation of trade mark law. But this in turn raises ongoing questions about how best to develop harmonised European principles, because harmonisation is a dynamic lawmaking process and not a static legislative instrument. In this Chapter, I consider how the process of harmonisation has affected the development of optimal principles of trade mark law, an analysis that is necessarily informed by substantive preferences. It is only by measuring harmonisation by reference to some form of substantive metric that a full assessment of the harmonisation process can be made. I suggest that it important to recognise the important role of national courts in the development of EU trade mark law (in part because of the nature of the field of law), and that paying attention to national legal traditions would assist the Court of Justice in improving the quality of European trade mark law.


D P Nolan and J Davies, 'Torts and Equitable Wrongs' in A Burrows (ed), English Private Law (3rd edn) (OUP 2013)

D Gangjee, 'Trade Mark Dilution in India' in D. Bereskin (ed), Trademark Dilution and Free-Riding: An Analysis of International Law (Thomson Reuters 2013)

2012

G Dinwoodie and R. C. Dreyfuss, A Neofederalist Vision of TRIPS: The Resilience of the International Intellectual Property Regime (Oxford Univ. Press 2012) [...]

The TRIPS Agreement (Agreement on Trade-Related Aspects of Intellectual Property Rights), signed on April 15, 1994, introduced intellectual property protection into the World Trade Organization's multilateral trading system, and it remains the most comprehensive international agreement on intellectual property to date. A Neofederalist Vision of TRIPS by Graeme B. Dinwoodie and Rochelle C. Dreyfuss examines its interpretation, its impact on the creative environment, and its effect on national and international lawmaking. It propounds a vision of TRIPS as creating a neofederalist regime, one that will ensure the resilience of the international intellectual property system in time of rapid change. In this vision, WTO members retain considerable flexibility to tailor intellectual property law to their national priorities and to experiment with changes necessary to meet new technological and social challenges, but agree to operate within an international framework. This framework, while less powerful than the central administration of a federal government, comprises a series of substantive and procedural commitments that promote the coordination of both the present intellectual property system as well as future international intellectual property lawmaking. Part I demonstrates the centrality of state autonomy throughout the history of international negotiations over intellectual property. Part II, which looks at the present, analyzes the decisions of the WTO in intellectual property cases. It concludes that the WTO has been inattentive to the benefits of promoting cultural diversity, the values inherent in intellectual property, the rich fabric of its law and lore, the necessary balance between producers and users of knowledge goods, and the relationship between the law and the technological environment in which it must operate. Looking to the future, Part III develops a framework for integrating the increasingly fragmented international system and proposes the recognition of an international intellectual property acquis, a set of longstanding principles that have informed, and should continue to inform intellectual property lawmaking. The acquis would include both express and latent components of the international regime, put access-regarding guarantees such as user rights on a par with proprietary interests and enshrine the fundamental importance of national autonomy in the international system.


ISBN: ISBN13: 978019530461

D Gangjee, 'Copyright: India' in P E Geller (ed), International Copyright Law and Practice (Lexis: Matthew Bender- 2012) [...]

[Annual contribution] Formerly by S. Ramiah


D Gangjee, 'Cultural Heritage and Geographical Indications ' (2012) 4 WIPO Journal 92

D Gangjee, 'Overlaps between Trade Marks and Geographical Indications' in N. Wilkoff and S. Basheer (eds), Overlapping Intellectual Property Rights (OUP, Oxford 2012)

D Gangjee, Relocating the Law of Geographical Indications (CUP, Cambridge 2012)

R Burrell, M Handler, E Hudson and K Weatherall, 'Submission in response to Issues Paper No. 42' (2012) ALRC Inquiry into Copyright and the Digital Economy

C Greenhalgh, 'The social benefits and costs of trademarks and brands' in Andrew Kenyon, Megan Richardson and Ng-Loy Wee Loon (eds), New Law of Reputation and Brands in the Asia Pacific Region (Cambridge University Press 2012)

C Greenhalgh and M Rogers, 'Trade marks and performance in services and manufacturing firms: evidence of Schumpeterian competition through innovation' (2012) 45 Australian Economic Review

2011

C Greenhalgh and M Rogers, 'Competition, Innovation and IP' (UK Intellectual Property Office 2011) [...]

as Supporting Paper H to the Hargreaves Review of IP and Growth


E Hudson and R Burrell, 'Copyright, Abandonment and Orphaned Works: What Does it Mean to Take the Proprietary Nature of Intellectual Property Rights Seriously?' (2011) 35 Melbourne University Law Review 971 [...]

For many years there was doubt as to whether personal property could be abandoned. In more recent times, however, the existence of a doctrine of abandonment has been solidifying in relation to chattels. In this article the authors suggest that copyright works can also be abandoned. This conclusion has significant implications for cultural institutions and other users struggling to deal with so-called ‘orphaned works’. More generally, the authors suggest that recognising that abandonment of copyright is possible has repercussions for how we think about intellectual property rights and, in particular, should cause us to look more closely at other doctrines within the law of personal property that might limit intellectual property’s reach.


ISBN: 0025-8938

D Gangjee, 'Demerara Sugar: A Bitter Pill to Swallow? ' (2011) 24 Intellectual Property Journal 1

G Dinwoodie, 'Remarks --“One Size Fits All”: Consolidation and Difference in Intellectual Property Law ' in A. Kur and V. Mizaras (eds), The Structure of Intellectual Property Law: Can One Size Fit All? (Edward Elgar 2011) [...]

These remarks to the 2008 ATRIP Annual Conference addressed the question of whether “one size fits all” in intellectual property law. Are there sufficient commonalities among the component parts of the field that we could realistically construct a unitary body of intellectual property law? I first set out the different inquiries that might be subsumed by the question of whether “one size fits all” in intellectual property law, focusing on the possibility of a single form of intellectual property, common treatment of different subject matter within regimes, and uniform intellectual property laws across borders. Focusing on this last aspect of the question, I note that the backwards-looking aspect of the classical international system, which tended to favor national autonomy and keep internationally-mandated levels of protection low, has been somewhat disrupted of late. Although it remains the case that one size does not fit all, there is much to be gained by seeking greater commonality. But if the focus of the current international system requires greater commonality – greater attention to a one size fits all approach on certain issues -- it does so both with respect to the rights conferred on IP right holders and with respect to the new rights that might potentially be conferred on users.


C Greenhalgh, M Rogers, P Schautschick and V Sena, 'Trade Mark Cluttering: a Report for the UK Intellectual Property Office' (UK Intellectual Property Office 2011)

C Greenhalgh, M Rogers, P Schautschick and V Sena, 'Trade Mark Incentives' (UK Intellectual Property Office 2011)

2010

D Gangjee and Robert Burrell, 'Because Youre Worth It: LOreal and the Prohibition on Free Riding ' (2010) 71 Modern Law Review 282

G Dinwoodie and R. Dreyfuss, 'Enhancing Global Innovation Policy: The Role of WIPO and its Conventions in Interpreting the TRIPS Agreement' in Carlos Correa (ed), Research Handbook on Intellectual Property and Trade (Edward Elgar 2010)

C Greenhalgh and M Rogers, Innovation, Intellectual Property and Economic Growth (Princeton University Press 2010)

C Greenhalgh and others, 'Intellectual Property Enforcement in Smaller UK Firms' (UK Intellectual Property Office 2010) [...]

a report for the Strategic Advisory Board for Intellectual Property Policy (SABIP), UK Intellectual Property Office October 2010 http://www.ipo.gov.uk/ipresearch-ipenforcement-201010.pdf


C Greenhalgh, R Pitkethly and M Rogers, 'Intellectual property enforcement in smaller UK firms: Findings from a survey in 2009-10’' (2010) Vol.2 The WIPO Journal

D Gangjee, 'Non-Conventional Trade Marks in India' (2010) 22 National Law School of India Review 67

G Dinwoodie, 'Opinion:Trade Mark Harmonisation: National Courts and the European Court of Justice' (2010) 41 International Review of Industrial Property and Copyright Law 1

G Dinwoodie, 'Refining Notions of Idea and Expression Through Linguistic Analysis ' in Bently, Davis and Ginsburg (eds), Copyright and Piracy: An Interdisciplinary Critique (Cambridge Univ. Press 2010) [...]

This chapter comments on a paper by the linguist Alan Durant, who demonstrates that our understanding of the distinction between idea and expression in the context of literary works is far from perfect and could be enriched by drawing on a number of insights from other fields, and in particular from linguistic theory. In this brief response, I consider whether and how a fuller understanding of those features might be accommodated in the adjudication of legal disputes about copyright infringement.


G Dinwoodie, 'The Common Law and Trade Marks in an Age of Statutes' in Bently, Ng & D’Agostino (eds), The Common Law of Intellectual Property: Essays in Honour of Professor David Vaver (Hart Publishing 2010) [...]

In 1879, the United States Supreme Court recognized that trade marks are a creature of the common law. Likewise, the English courts had long recognized causes of action that effectively protected marks prior to the enactment of statutes delineating the scope of trademark protection. The characterization of trade mark law as a field of common law may, however, now seem an essentially historical statement. In the United States, the early twentieth century saw the adoption of a series of federal trademark registration statutes, and in 1946 Congress enacted even more comprehensive trademark legislation, namely the Lanham Act. Since then, Congress, has episodically - but with increasing frequency - revised the trademark statute. In light of such increased statutorification of trade mark law, what is the continued role of the common law in developing appropriate protection for trade marks? In this chapter, I recount the development of the common law of trade marks, highlighting the background developments outside trademark law that influenced the allocation of trademark lawmaking authority over the course of the twentieth century. The historical importance of these external influences suggests that trademark law will not be immune to changes in contemporary judicial philosophy that have made some scholars fearful about the room for further common law development. However, a brief review of recent Congressional activity and Supreme Court opinions in the field suggests that, despite substantial legislative intervention, both Congress and the Supreme Court appear content that the development of trademark and unfair competition law in the United States remain a partnership between the two institutions, and thus heavily dependent on common law lawmaking by the courts.


ISBN: 9781841139708

G Dinwoodie, R. Dreyfuss and A. Kur, 'The Law Applicable to Secondary Liability in Intellectual Property Cases' (2010) 42 New York University Journal of International Law and Politics 201 [...]

In recent years, intellectual property law has paid increasing attention to issues of private international law. The American Law Institute promulgated Intellectual Property: Principles Governing Jurisdiction, Choice of Law, and Judgments in Transnational Dispute in 2008. In Europe, the Max Planck Institutes’ Conflict of Laws in Intellectual Property Conflicts of Law effort is expected in 2010. However, neither of these projects has dealt explicitly with choice of law on contributory liability (or any other form of secondary liability that makes one party liable for the harm caused by another). Yet, actions premised on secondary liability are rapidly becoming the favored route for efficient enforcement on a worldwide basis. Examples include cases that attempt to impose liability on manufacturers of copying technologies for infringements caused by those who use their equipment; on purveyors of peer-to-peer file sharing software for the activities of those who download material without rightholders’ permissions; on internet service providers for subscribers’s infringing postings; and on other intermediaries, such as auction sites. In principle, secondary liability actions can occur in all areas of intellectual property law. However, for purposes of this paper, we concentrate on trademark cases, such as the litigation involving the responsibility of the online auction house, e-Bay, for the sale of counterfeit goods on its website. The problems posed in that area are particularly complex. After offering a stylized fact pattern to illustrate the problems, we consider the different ways in which courts might deal with questions arising in cases where secondary liability claims are asserted. We suggest that the traditional approach to choice of law in trademark cases generates unacceptable uncertainties for intermediaries and that a genuine engagement with conflicts scholarship would help mediate among the diverse interests and policy concerns. In the end, however, we conclude that private international law solutions may not resolve all the complications of multinational secondary liability cases. Thus, we are moved to propose, as an alternative solution, an autonomous (substantive) principle applicable in these cases. We conclude with some thoughts about how the different approaches engage with existing models for the resolution of trans-border intellectual property disputes and with the international intellectual property regime more generally.


ISBN: 0028-7873

G Dinwoodie and Mark D. Janis, Trade Dress and Design Law (Aspen Publishers 2010) [...]

The first student text to offer an integrated treatment of the forms of intellectual property protection available for trade dress and designs.


ISBN: 9780735568327

D Gangjee and Robert Burrell, 'Trade Marks and Freedom of Expression: A Call for Caution ' (2010) 41 International Review of Intellectual Property and Competition Law 544

G Dinwoodie and Mark D. Janis, Trademarks and Unfair Competition: Law and Policy (3d ed, Aspen Publishers 2010)

D Gangjee and David Higgins, 'Trick or Treat? The Misrepresentation of American Beef Exports to Britain in the Late Nineteenth Century ' (2010) 11 Enterprise and Society 203

2009

B Lauriat, 'Charles Reade's Roles in the Drama of Victorian Dramatic Copyright ' (2009) 33 Columbia Journal of Law & the Arts 1 [...]

The following article describes the eccentric dramatist, novelist, journalist, and barrister Charles Reade’s direct involvement in shaping the UK law of copyright - particularly copyright in dramatic works. In addition to publishing his writings on the subject, he was active in bringing and supporting suits that led directly to changes in the law protecting dramatic works, as well as the formation of the Royal Commission on Copyright in 1875. His own questionable dealings with the works of others, however, provide a counterpoint to his zealous arguments in favor of protection, as exemplified by the story of his dramatization of Ralph the Heir, a novel written by Royal Commission member Anthony Trollope.


G Dinwoodie and R. Dreyfuss, 'Designing a Global Intellectual Property System Responsive to Change: The WTO, WIPO and Beyond' (2009) 46 Houston Law Review 1187 [...]

In recent years, it has become clear that the TRIPS regime is in trouble. Although lawmaking in the World Trade Organization (WTO) has essentially stalled, there is a continuing need to recalibrate the rules applicable to knowledge production. In theory, the problems facing WTO members could be resolved through new lawmaking within that institution. For a variety of reasons, however, this has not materialized. The WTO’s adjudicatory system has compensated somewhat for the lack of activity in the Ministerial Conference and the General Council. But for a number of reasons, it is not a substitute for a well-functioning “legislative body.” Indeed, some of the activity in this field has shifted back from the WTO to the World Intellectual Property Organisation (WIPO). Although this regulatory competition might currently be leading to a suboptimal global regime, the move to WIPO is intriguing. It suggests an institutional design that could make the international intellectual property system more responsive to changing needs. Indeed, the TRIPS Agreement contemplates a formal tie between the WTO and WIPO. Unfortunately, however, the nature of the lawmaking relationship between these two organizations has yet to be fully elucidated. TRIPS incorporates provisions of two WIPO instruments (the Paris and Berne Conventions), and references others. Still, it is not evident whether (or how) the WTO should be taking account of WIPO’s view of these commitments. Nor is it clear how (or when) new developments within these conventions should affect WTO obligations. This essay takes up the institutional design question of how to create an intellectual property system responsive to changing circumstances by examining how the WTO can best make use of WIPO’s experience and expertise in intellectual property matters. After considering the intellectual property cases decided to date by the WTO dispute settlement body and determining the ways in which they have relied on the text and negotiating histories of, and other materials relevant to, WIPO conventions to elucidate TRIPS obligations, we suggest some revisions to interpretive approaches pursued thus far by dispute settlement panels. We point out methodologies that would leaven and cabin the trade perspective, and thus allow the WTO to capitalize on WIPO’s experience and on WIPO developments that cope with the dynamic nature of intellectual property and the changing landscape of knowledge production. Our analysis is also meant for broader application, for developing a design that permits productive input from all the international institutions that have interests touching on intellectual property norm development.


G Dinwoodie, 'Developing a Private International Intellectual Property Law: The Demise of Territoriality? ' (2009) 51 Wiiliam & Mary Law Review 711 [...]

Although intellectual property law is a relatively recent legal innovation, it has from an early stage in its development possessed an international dimension. As far back as the late nineteenth century, this resulted in the adoption of a group of multinational treaties that remain the foundation of what can be called the public international law of intellectual property. Efforts to develop a private international law of intellectual property are much more recent, and are ongoing in a number of different institutional settings. Yet, the need for attention to this field remains acute. This Article explores the content of a private international law of intellectual property. It does not seek to articulate a comprehensive scheme. Rather, this exploration is intended to facilitate consideration of the core principle of territoriality that informs so much of the existing regime. The Article sketches the basic principles of private international law that apply in transborder intellectual property disputes, examining treaty provisions and developments at the national and regional level. Some of the leading questions are highlighted by discussion of six recent transborder intellectual property disputes. These disputes help to illustrate aspects of cross-border exploitation of intellectual property that need to be taken into account both in critiquing current approaches and in formulating alternatives. The Article then turns to focus on the concept of territoriality. Territoriality is a principle that has always received excessive doctrinal purchase in intellectual property law. Moreover, the normative force of the principle has declined as units of social and commercial organization have come to correspond less neatly with national borders, and as private ordering has weakened the capacity (and perhaps the claim) of the nation-state exclusively to determine the behavior of its citizenry. Finally, many of the same values (for example, diversity of legal regimes, tailoring of intellectual property to local needs, and protecting rights on an international basis) that the public international intellectual property system sought to further through its promulgation of the principle of territoriality can now best (and perhaps only) be achieved by reconfiguring the principle. This Article approaches the task of reconfiguration in two ways. First, it explores some of the different ways in which the principle of territoriality might conceptually inform a private international law of intellectual property. Contemporary multi-territorial intellectual property disputes are characterized by an excess of shared but weaker prescriptive and adjudicatory authority. The Article suggests a restrained concept of territoriality that reflects that reality, drawing in particular from the treatment of extra-territoriality in trademark law. The Article also approaches the question less conceptually and proposes liberalization of a specific principle of private international intellectual property law: limits on consolidated adjudication of infringement claims under domestic and foreign intellectual property laws.


ISBN: 0043-5589

G Dinwoodie, 'Lewis & Clark College of Law Ninth Distinguished IP Lecture: Developing Defenses in Trademark Law' (2009) 13 Lewis & Clark Law Review 99 [...]

Trademark law contains important limits that place a range of third party conduct beyond the control of the trademark owner. However, I suggest that trademark law would be better served if several of its limits were explicitly conceptualized as defenses to an action for infringement, that is, as rules permitting unauthorized uses of marks even where such uses implicate the affirmative concerns of trademark law and thus support a prima facie cause of action by the trademark owner. To explore why this distinction between limits and defenses matters, I discuss the different nature of the proscription imposed by copyright and trademark law. And I draw lessons both from case law deriving limits from interpretation of the proscription of trademark law as well as from the development of statutory defenses to dilution. Conceiving of limits as defenses would help ensure that the (often unstated) values underlying socially desirable third party uses are not too readily disregarded if they happen to conflict with confusion-avoidance concerns that are historically powerful drivers of trademark protection. Such an approach would also ameliorate the uncertainties caused by the acceptance of extended (and increasingly amorphous) notions of actionable harm in trademark law. And it would facilitate a more transparent debate about the different forms that limits on trademark rights might take. Some defenses will operate as mechanisms by which to balance competing policy concerns on a case-by-case basis, while others (reflecting more fundamental normative commitments, or driven by more proceduralist concerns) might allow certain values categorically to trump the basic policy concerns supporting liability for trademark infringement. Full development of these defenses will involve courts adopting a conscious understanding of the different jurisprudential nature of defenses and will be made easier by acceptance of the Lanham Act as a delegating statute.


ISBN: 1557-6582

D Gangjee, 'The Business End of Collective and Certification Marks' in I Simon (ed), Trade Mark Law and Sharing Names: Exploring Use of the Same Mark by Multiple Undertakings (Edward Elgar, Cheltenham 2009)

2008

D Gangjee, '(Re)Locating Geographical Indications: A Response to Bronwyn Parry' in L. Bently, J. Davis and J. Ginsburg (eds), Trade Marks and Brands: An Interdisciplinary Critique (CUP, Cambridge 2008)

G Dinwoodie, 'Copyright and Free Expression: Engine or Obstacle' in Raquel Xalbarder (ed), Copyright and Freedom of Expression: Proceedings of the ALAI Study Days (Huygens Editorial 2008)

D Gangjee, 'Geographical Indications and Human Rights' in Paul Torremans (ed), Intellectual Property and Human Rights (Kluwer, The Hague 2008)

C Greenhalgh and M Rogers, 'Intellectual property activity by service sector and manufacturing firms in the UK, 1996-2000' in H. Scarbrough (ed), The Evolution of Business Knowledge (Oxford University Press 2008)

G Dinwoodie, W. Hennessey, S. Perlmutter and G. Austin, International Intellectual Property: Law and Policy (2nd ed., LexisNexis Publishing 2008)

D Gangjee, 'The Polymorphism of Trade Mark Dilution in India ' (2008) 17 Journal of Transnational Law and Contemporary Problems 611

G Dinwoodie and M. Janis (eds), Trademark Law and Theory: A Handbook of Contemporary Research (Edward Elgar Press 2008)

G Dinwoodie, 'What Linguistics Can Do For Trademark Law' in Bently, Davis & Ginsburg (eds), Trade Marks and Brands: An Interdisciplinary Critique (Cambridge Univ. Press 2008) [...]

This contribution to an inter-disciplinary book on Trademarks and Brands responds to the work of Alan Durant, a linguist who (in his chapter of the book) provides legal scholars with both a rich understanding of how linguists view terms that are part of the basic argot of trademark law and a potentially vital explanation of the different social functions that word marks might serve. The Response explains why linguistics should matter to trademark law, but also why trademark law might on occasion ignore the precise reality of consumer understanding as might be provided by linguistics. I suggest that, while trademark law should not become beholden to linguistics, the lessons of Durant?s linguistic analysis are to some extent already accommodated in the practice of trademark law, and could be important guides in the further development of a number of legal principles. In particular, I explain how trademark law does in large part take into consideration Durant?s observation that legal analysis would comport more with the reality of how words function if it focused on marks as they are used. The Chapter also argues that Durant?s exploration of the concepts of ?distinctiveness? and ?descriptiveness?, as understood by lawyers and linguists, respectively, should reinforce important lessons for legal scholars about the complex policy prescriptions embodied in those concepts. Finally, I argue that particular insights developed by Durant from the field of linguistics may prove valuable in illuminating several points of contention in contemporary trademark law. In particular, Durant stresses that determining whether a defendant?s use has evoked the source-identifying aspect of plaintiff?s mark, as opposed to the descriptive properties of that term, can only be done by analyzing the ?discourse ?setting? in which interpretations are constructed.? Thus, although the type of use should be relevant to assessing infringement, any analysis of use type must be highly contextualized. This insight should inform the choice of doctrinal vehicles by which trademark law establishes limits on the scope of protection.


2007

J. Reichman, G Dinwoodie and P. Samuelson, 'A Reverse Notice and Takedown Regime To Enable Fair Uses of Technically Protected Copyrighted Works' (2007) 22 Berkeley Technology Law Journal 981 [...]

The WIPO Copyright Treaty (WCT) recognized the need to maintain a balance between the rights of authors and the larger public interest in updating copyright law in light of advances in information and communications technologies. But the translation of this balance into the domestic laws of the United States and European Union has not been fully successful. In the DMCA, Congress achieved a reasonable balance of competing interests in its creation of safe harbors for internet service providers. However, contrary to its apparent intention, Congress failed to achieve a similar balance of interests when establishing new rules forbidding circumvention of technical protection measures (TPMs) used by copyright owners to control access to and use of their works. The EU Copyright Directive spoke of a commitment to ensuring that certain public interest uses can be made of technically protected works but contains limits that seemingly undermine this commitment. As a result, national implementations of the Copyright Directive have not adequately facilitated public interest uses of technically protected content.
We believe that practical judicial and administrative measures can and should be devised to implement the spirit of the WCT in both the U.S. and EU without reopening the contentious debates that engulfed the process leading up to enactment of the DMCA and the EU Copyright Directive. To this end, we propose adoption of a ?reverse notice and takedown? procedure to help achieve some of the balance in anti-circumvention rules that the WCT endorsed, but which implementing legislation has thus far failed to deliver. Under this regime, users would be able to give copyright owners notice of their desire to make public interest uses of technically protected copyrighted works, and rights holders would have the responsibility to take down the TPMs or otherwise enable these lawful uses.
A reverse notice and takedown regime would achieve for the anti-circumvention rules a comparable symmetry with the balance embedded in the ISP safe harbor rules. It would also effectuate the nascent, but not fully realized, legislative intent to permit public interest uses of technically protected digital content, while at the same time protecting copyright owners against circumvention of TPMs that would facilitate or lead to massive infringements. In the U.S., the most likely way to achieve this goal is through judicial interpretation of the anti-circumvention rules through case by case adjudication. In the EU, by contrast, member states could implement a reverse notice and takedown regime in the course of fulfilling their obligations under Article 6(4) of the Copyright Directive, which requires them to ensure that users of technically protected works can exercise certain public interest exceptions. Nations that have yet to implement the WCT may find our proposed reverse notice and takedown regime provides a far more balanced way to comply with the treaty than the approach being promoted by U.S. trade negotiators.


C Greenhalgh, M Rogers and C Helmers, 'An analysis of the association between the use of intellectual property by UK SMEs and subsequent performance' (UK Intellectual Property Office 2007)

C Greenhalgh, M Rogers and C Helmers, 'An analysis of the characteristics of small and medium enterprises that use intellectual property' (UK Intellectual Property Office 2007)

G Dinwoodie and M. Janis, 'Confusion Over Use: Contextualism in Trademark Law' (2007) 92 Iowa Law Review 1597 [...]

This paper tackles an intellectual property theory that many scholars regard as fundamental to future policy debates over the scope of trademark protection: the trademark use theory. We argue that trademark use theory is flawed and should be rejected. The adoption of trademark use theory has immediate practical implications for disputes about the use of trademarks in online advertising, merchandising, and product design, and has long-term consequences for other trademark generally. We critique the theory both descriptively and prescriptively. We argue that trademark use theory over-extends the search costs rationale for the trademark system, and that it unhelpfully elevates formalism over contextual analysis in trademark law rulemaking. The theory seeks determinate trademark rules in order to encourage a climate of certainty for innovators, but the concepts on which it is founded are likely to degenerate. We show that trademark use theorists ignores the multivalence of trademark law, and that adopting trademark use doctrines would result in less transparent trademark decisionmaking. Instead, we propose that trademark law retain its traditional preference for contextual analysis. We show in particular how a contextual analysis would offer an approach to trademark disputes involving online advertising that better captures the potential of trademark law to police new information markets. Our analysis contemplates individualized assessments according to common law standards, but opens up policy space for the development of limited statutory safe harbors for intermediaries such as search engines.


G Dinwoodie, 'Copyright Lawmaking Authority: An (Inter)nationalist Perspective on the Treaty Clause (symposium)' (2007) 30 Columbia Journal of Law & the Arts 355 [...]

This contribution to a symposium on Copyright and The Constitution considers whether the Treaty Clause provides an alternative source of copyright lawmaking authority with respect to enactments impermissible under the Copyright Clause. Existing literature suggests three paradigmatic positions on the question. First, some scholars view the Treaty Clause as conferring a power whose content is wholly subservient to the limits of the Copyright Clause. A second group of scholars sees the Treaty Clause as offering an alternative lawmaking authority, but one that is substantially limited by the internal limits of the Treaty Clause. Finally, some commentators and litigants have read the Treaty Clause as an expansive autonomous lawmaking power that is largely unconstrained by internal limits and wholly unconstrained by the external limits found in the Copyright Clause. This paper adopts none of the three paradigmatic positions. I argue that those seeking to make the Treaty Clause subservient to the Copyright Clause both overstate the constitutional weight of the Copyright Clause and underestimate the autonomous role of the Treaty Clause in the American governmental structure. By the same token, however, the argument that the Treaty Clause should operate wholly unaffected by the limits in the Copyright Clause rests on a vision of the Treaty Clause that fails to acknowledge the multitude of ways through which international law and policy influences and informs domestic American copyright law. Support for autonomous lawmaking authority under the Treaty Clause must be tempered by the contemporary political reality that international processes may simply be an inappropriate end-run around the limits of Copyright Clause authority rather than occasional operation of an independent and different political process. And because of the entanglement between domestic and international lawmaking that now characterizes the copyright lawmaking process, reliance upon the traditional internal limits of the Treaty Clause will prove largely unavailing. The only way to make the restrictions on the Treaty Clause real is to develop a jurisprudence of judicial policing that reflects both the policy values that support the autonomy of the Treaty Clause and the realities of the contemporary copyright lawmaking process. Thus, I suggest that courts faced with reviewing copyright laws reliant upon the Treaty Clause for their constitutional legitimacy examine a matrix of at least three variables: (1) the strength of the international obligation with which domestic actors seek to comply; (2) the political process by which international norms are adopted and expressed in U.S. law; and (3) the limits in the Copyright Clause that the challenged law allegedly violates.


E Hudson and AT Kenyon, 'Digital Access: The Impact of Copyright on Digitisation Practices in Australian Museums, Galleries, Libraries and Archives' (2007) 30 University of New South Wales Law Journal 12 [...]

Empirical research into the digitisation of collections in Australian museums, galleries, libraries and archives suggests that copyright law affects what material is digitised and how it is made accessible. This article analyses digitisation within cultural institutions in light of the Digital Agenda reforms of 2000 and the Copyright Amendment Act 2006 (Cth). Copyright law can have a significant impact on digitisation practices, particularly with regard to digitising audiovisual material and orphan works, and in relation to digital access: that is, the public availability of digital content. Research suggests that, for the Copyright Act 1968 (Cth) ('Copyright Act') to work on its own terms, some small-scale reforms are required. However, the research also underscores larger questions about the sustainability of existing copyright law and practice. Provisions in the Copyright Amendment Act 2006 (Cth) may improve the situation, depending on the operation of the new 'flexible dealing' exception for the sector in s 200AB. This suggests the need for continued attention and debate on copyright exceptions and the possibility of new collective licensing models.


G Dinwoodie and R. Dreyfuss, 'Diversifying Without Discriminating: Complying with the Mandates of the TRIPS Agreement' (2007) 13 Michigan Telecommunications and Technology Law Review 445 [...]

Although the technological community was once fairly united in its needs from the patent system, the recent debate over patent reform has made it clear that this is no longer the case. Rather, it has become increasingly difficult to believe that a one?size?fits?all approach to patent law can survive. In this brief contribution to a symposium tackling Diversity in Innovation Policy, we consider the ways in which intellectual property obligations, most notably the TRIPS Agreement, circumscribe the ability of national lawmakers to tailor patent protection to reflect the concerns of different industries. In particular, we propose that TRIPS art. 27, which is cast in terms of nondiscrimination, should be interpreted to permit ?differential treatment.? First, we argue that in other areas, treating different cases differently is not always invidious discrimination. Second, we note that many of the proposals for tailoring are not aimed at the nominal legal rights created by patent law, but rather at the economic effects of these patents, a distinction of significance in the WTO?s Canada-Pharmaceutical Patents case. Finally, we suggest that member states claiming de facto discrimination should be required to demonstrate some element over and above those required to establish de iure discrimination, and that member states defending an exclusion should be permitted to rebut a showing of disparate treatment by demonstrating a legitimate purpose. While decision makers will need to evaluate the relation between the stated purpose and the means chosen, this analysis would permit members to adopt most of the tailoring initiatives discussed during the Symposium. We give weight to the normative claims of the TRIPS Agreement to facilitate and enhance free trade. But we think that industry?specific patent laws are fully consistent with the language and purpose of the TRIPS Agreement as well as the comparative advantage philosophy that undergirds the modern trade regime.


D Vaver, 'Does the Public Understand Intellectual Property Law? Do Lawyers?' in Faculty of Law, McGill University (eds), Meredith Lectures 2006: Intellectual Property at the Edge: New Approaches to IP in a Transsystemic World (Les Editions Yvon Blais 2007) [...]

Argues for greater comprehensibility and cohesion in IP laws, using Canadian & British examples.


ISBN: 978-2-89635-108-4

Richard Warner, G Dinwoodie, Harold J. Krent and Margaret Stewart, E-Commerce, the Internet and the Law, Cases and Materials (Thomson West 2007)

G Dinwoodie, 'Foreign and International Influences on National Copyright Policy: A Surprisingly Rich Picture' in F. McMillan (ed), 6 New Directions in Copyright (Edward Elgar 2007) [...]

National copyright policy, traditionally reflective of domestic cultural and economic priorities, is increasingly shaped by foreign and international influences. In this chapter, I sketch some of the changes in copyright lawmaking that have given rise to this phenomenon. Especially when viewed in historical context, foreign and international influence on the development of copyright law is now quite pervasive ? albeit in ways, and effected through a number of institutions, that might appear surprising.


G Dinwoodie and M. Janis, 'Lessons From the Trademark Use Debate' (2007) 92 Iowa Law Review 1703 [...]

In their response to our article Confusion Over Use: Contextualism in Trademark Law, Professors Dogan and Lemley discard more all-encompassing versions of the trademark use requirement. Instead, they seek to delineate and defend a ?more surgical form? of trademark use doctrine. In this reply, we demonstrate that the language of the Lanham Act does not impose a trademark use requirement even when that requirement is defined ?surgically? and sections 32 and 43(a) are read ?fluidly,? as Dogan and Lemley suggest. Moreover, their interpretation still renders section 33(b)(4) redundant and unduly limits appropriate common law development of trademark law. We also address Dogan and Lemley?s additional normative arguments for deploying trademark use to shield defendants from even potential liability for various commercial uses of marks, especially in connection with online contextual advertising. We disagree that contributory infringement doctrine necessarily provides sufficient oversight of the presentation of search results or advertising sales practices; that marginalizing trademark law will best encourage intermediaries to structure their business arrangements in ways that promote reliable information flow; and that offline analogies should necessarily direct the outcomes of trademark disputes over online practices. Our disagreements with Dogan and Lemley on these points also highlight broader differences about methodological approaches to trademark law. In particular, our distaste for limiting the potential scope of the Lanham Act reveals our greater willingness to see trademark and unfair competition law as a market regulator. Relatedly, we are more firmly committed to judicial development of both potential liability and potential defenses; Dogan and Lemley want courts to focus only on the latter.


D Gangjee, 'Quibbling Siblings: Conflicts between Trade Marks and GIs ' (2007) 82 Chicago-Kent Law Review 1253

D Gangjee, 'Say Cheese: A Sharper Image of Generic Use through the Lens of Feta' (2007) European Intellectual Property Review 172

G Dinwoodie, 'The International Intellectual Property System: Treaties, Norms, National Courts and Private Ordering' in Gervais (ed), Intellectual Property, Trade and Development: Strategies to Optimize Economic Development in a TRIPS Plus Era (Oxford Univ. Press 2007) [...]

Although part of the political impetus for international intellectual property law making has long come from the economic gains that particular countries could secure in the global market, the recent situation of intellectual property within the institutional apparatus of the trade regime has been an important factor in the transformation of the classical system of international intellectual property law. This chapter analyses various aspects of this transformation. It suggests that viewing intellectual property through the prism of trade alone offers an incomplete explanation of the changes that have occurred in international intellectual property law making. For example, a full account of the contemporary system must reflect the role of both litigation in national courts and private ordering by commercial actors in establishing international intellectual property norms. This chapter stresses that these new contributors to the international system must be subject to no lesser scrutiny than traditional public international instruments such as treaties. The chapter also discusses the increasingly quick resort to international institutions in the field of intellectual property law. To ameliorate the costs associated with the speedy development of international rules, and perhaps to ensure that some international solution is adopted, policy makers have begun more overtly to support the adoption of soft law norms rather than hard law treaty obligations. In response, those skeptical of these trends in international intellectual property law making have sought to slow down the process or bring it to a complete halt. In order to achieve a political climate where public international law imposes fewer constraints on national law makers (particularly law makers in developing countries), skeptics have adopted a number of strategies, including the multiplication of international institutions in which intellectual property is considered, and the concomitant development of a range of rival norms that have massively complicated the political economy of public international intellectual property law. Using examples drawn primarily from copyright and trademark law, I illustrate the pressure to accelerate internationalization, the varying strength of adopted norms, and the changes to the political climate in which public international law making is occurring. To some extent, these changes reflect increased political and popular attention to trade and development. However, regardless of the catalyst, these systemic changes remain crucially important to trade and development because of the entanglement of intellectual property with trade and development policy.


C Greenhalgh and M Rogers, 'The value of intellectual property to firms and society’' (2007) Intellectual Property Oxford Review of Economic Policy,

G Dinwoodie, 'The WIPO Copyright Treaties: A Transition to the Future of International Copyright Lawmaking? (symposium)' (2007) 57 Case Western Reserve Law Review 751 [...]

This contribution to a symposium on the tenth anniversary of the WIPO Copyright Treaty (now published with a 2010 postscript) suggests that the WIPO Copyright Treaty represented a watershed moment in international copyright law for two reasons. First, it was in the 1996 Diplomatic Conference that one begins to see the most widespread explicit discussion of the concept of “balance” being integral to international instruments. Second, the WCT was a watershed moment for international copyright law in that the process that led up to the conclusion of the two internet treaties (both the WCT and the WIPO Performances and Phonograms Treaty) and the conduct of the diplomatic conference at which they were considered were quite different in several respects from that which had been seen heretofore. In particular, on some of the issues addressed in the treaty, the contracting states relied much less extensively on prior national experimentation than had been the norm in prior copyright agreements. Moreover, the 1996 Diplomatic Conference was populated by a wide range of non-governmental organizations (NGOs) in numbers never before seen at international copyright events. And (perhaps because of these first two changes in process), the debates that took place nationally and internationally were substantially assimilated. These features of the process that led to the WCT remain with us today. This brief essay addresses both the concept of balance and these changes to the lawmaking process. On the question of balance, I suggest that balance is a much more complicated concept than we assume. Even in the domestic environment, the phrase is used somewhat too glibly. But in the international context, it becomes even more complex. In particular, we need to take into account the multidimensional nature of balance (or what I call the various vectors of balance) before we try to insert internal substantive balance directly into treaty instruments. This is true whether we are talking about new authors’ rights or the development of users’ rights. I am also concerned by some aspects of the changes that occurred to the lawmaking process in 1996. In particular, there is often a failure to appreciate fully the difference between national lawmaking and international lawmaking. To be sure, in a dynamic, integrated lawmaking process, one is a constituent part of the other; that is, national lawmaking contributes to international lawmaking and vice versa. But these processes involve distinct institutions with different functions, and with different democratic and political structures; those urging further reform of international copyright law need to be aware of these differences.


G Dinwoodie and M. Janis, Trademarks and Unfair Competition: Law & Policy (2nd ed., Aspen Publishers 2007)

E Hudson and AT Kenyon, 'Without Walls: Copyright Law and Digital Collections in Australian Cultural Institutions' (2007) 4 SCRIPTed 197

2006

D Vaver, 'Advertising Using an Individual's Image: a Comparative Note' (2006) 122 (July 2006) Law Quarterly Review 362 [...]

Examines the development of privacy law in Europe, the US and elsewhere to disallow advertising using a person's image, and compares & criticizes English developments.


ISBN: 0023-933X

G Dinwoodie, 'Dilution's (Still) Uncertain Future' (2006) 105 Mich. L. Rev. First Impressions 98

D Vaver, 'General Introduction' in D. Vaver (ed), Intellectual Property Rights: Critical Concepts in Law (Routledge 2006) [...]

Overview of history, theory and features of intellectual property law, to introduce compilation of 87 articles on intellectual property


ISBN: 0-415-33088-2

D Vaver (ed), Intellectual Property Rights: Critical Concepts in Law (Routledge (2006) 2006) [...]

Compilation of world's leading intellectual property articles in English language, spanning over 150 years from Dickens, Macaulay and Abraham Lincoln, to modern writers mainly in law but also in economics and other disciplines. In 5 volumes.


ISBN: 0-415-33087-4

C Greenhalgh and M Rogers, 'Intellectual Property, Competition and the Value of UK Firms' in C. Peeters and B. Van Pottelsberghe (eds), Economic and Management Perspectives on Intellectual Property Rights (Palgrave 2006)

C Greenhalgh and M Rogers, 'Market Value of UK Intellectual Property: Manufacturing, Utility and Financial Services Firms' in D Bosworth and E Webster (eds), The Management of Intellectual Property (Edward Elgar 2006)

D Gangjee, 'Melton Mowbray and the GI Pie in the Sky: Exploring Cartographies of Protection' (2006) Intellectual Property Quarterly 291

G Dinwoodie and R. Dreyfuss, 'Patenting Science: Protecting the Domain of Accessible Knowledge' in Guibault & Hugenholtz (eds), The Future of the Public Domain in Intellectual Property: Identifying the Commons in Information Law (Kluwer Law International 2006) [...]

In this book chapter, we look at the effect of commodification on scientific and technological, as opposed to cultural, activity. After discussing the nature of the commodification debate and the constraints unique to scientific and technological production, we explore ways in which the domain of accessible knowledge could be reconstituted. In our discussion of these strategies, we draw on previous work in which we analyzed (1) various substantive methods for curbing perceived encroachments on the public domain to see how each would fare if challenged under the TRIPS Agreement, and (2) the relationship between the dynamics of domestic legislative procedures and TRIPS dispute resolution outcomes. In this piece, we continue our examination of the domestic efficacy and TRIPS compatibility of substantive alterations to the patent system: strengthening the nonobviousness (inventive step) requirement; narrowing the scope of patent claims; and recognizing new occasions in which the government may use patented inventions without authorization (but with payment).

As in our other pieces, our purpose is not to predict the outcome of future disputes - there are far too few WTO precedents for that. Rather, our goal is to explore how the interpretive approaches pursued at the international level affect the ability of TRIPS members to keep their laws attuned to the developments and needs of science.

We argue that under certain interpretations of TRIPS, a variety of prophylactic substantive steps to protect the domain of accessible scientific knowledge could be taken, that each has a different pay-off as a matter of domestic policy, but that the there is little relationship between the strength of the obstacle posed by TRIPS and the impact of the approach on innovation. Furthermore, we see reason to worry that the analytical tools utilized to date carry a strong potential for altering the political economies of member states in ways that create a one-way ratchet in favor of increased commodification.

We conclude that a map of the public domain of the type charted by Pam Samuelson must do more than consider the effects of various domestic laws and policies because the international system (as currently administered) shapes the legal landscape on which individual nations are operating. To alter that landscape, patent strategists should consider a variety of approaches. But we suggest that it may be particularly fruitful to adapt the rhetoric of scholars seeking to promote the public domain in domestic copyright law. The differences we see in the commodification debate may not, after all, reflect genuine differences between cultural and technological production. Rather, it may be that copyright scholars better appreciate the value in framing the public's interest as a right to access.


D Vaver, 'Publishers and copyright: rights without duties?' (2006) 40:6 (June 2006) Bibliotheksdienst 743 [...]

The paper argues that publishers historically owed duties of fair access, price & contract in return for the rights they were granted, and that such duties continue to be morally owed to the public. Bibliotheksdienst is the journal of the German Library and Information Association (Bundesvereingung Deutscher Bibliotheks und Informationsberbände).


ISBN: 0006-1972

G Dinwoodie, 'Ten Years of Trademark Law: Lessons for the Future?' in Hansen (ed), 8 International Intellectual Property Law and Policy (Juris Publishing 2006)

G Dinwoodie, 'The International Intellectual Property Law System: New Actors, New Institutions, New Sources' (2006) 10 Marquette Intellectual Property Law Review 205 [...]

International intellectual property norms are now being developed by a wide range of institutions - some national, some international, and some that do not fit neatly into either category; by bodies designed to address intellectual property; by trade and other bodies; and by actors public, private, and indeterminate. This new wave of international norm creation not only augments a growing body of substantive norms but also raises difficult structural questions about the future development of the international intellectual property system. This essay, a lecture delivered to the Annual Meeting of the American Society of International Law in 2004, is being reprinted as part of a symposium on ?TRIPS after ten years.?


C Greenhalgh and M Rogers, 'The value of innovation: The interaction of competition, R&D and IP’' (2006) Vol. 35 Research Policy,

G Dinwoodie, 'Towards an International Framework for the Protection of Traditional Knowledge' in Elements of National sui Generis Systems for the Preservation, Protection and Promotion of Traditional Knowledge: Innovations and Practices and Options for an International Framework (UNCTAD 2006) [...]

At a seminar organized by UNCTAD and the Government of India in 2002, participants considered how evolving national systems for the protection of traditional knowledge could be supported or augmented by international measures adopted at the regional or global level. The need for solutions on the international level has been discussed in a number of fora. Yet, the effective protection of the holders of traditional knowledge requires that these discussions move in some way toward implementation of working systems of protection.

This short paper, commissioned by UNCTAD for a conference in February 2004, and to be republished in a book on traditional knowledge, focuses on framework, or structural, issues, rather than on the substantive elements of sui generis systems for the protection of traditional knowledge. It considers the extent to which proponents must articulate the need for a completely new paradigm, or whether instead they can point to historical antecedents in the intellectual property system.

The principal impetus for the paper is the proposal of the Indian government that international law require the disclosure of the country of origin of genetic resources and related traditional knowledge in patent applications (and require compliance with the laws of the country of origin). This proposal is essentially an attempt to derogate from the principle of territoriality that pervades and is at the root of, international intellectual property law. That principle is most resolutely advocated and enforced in the patent context. In contrast, international trademark (and geographical indications) law - while firmly based upon the same general principle - has in several respects developed exceptions to that principle. These exceptions might provide the source for a range of options that countries might consider as the model for a system of traditional knowledge protection that likewise moves away from the principle of territoriality. An historical analysis of where resistance to such developments has been most acute in the field of trademark and geographical indications might also provide guidance to those seeking to construct an approach to traditional knowledge that encounters less resistance.

The paper conceptualizes the different departures from territoriality in trademark law and thus suggests analogous devices for the protection of traditional knowledge that could be developed along the lines suggested by the Indian government. This helps to identify the structural variables that countries should consider in fashioning a traditional knowledge regime that eschews a rigid commitment to territoriality.


C Greenhalgh and M Rogers, 'Use of Intellectual Property by the UK Financial Services Sector' in D Bosworth and E Webster (eds), The Management of Intellectual Property (Edward Elgar 2006)

2005

J Pila, 'Article 52(2) of the Convention on the Grant of European Patents: What Did the Framers Intend? A Study of the Travaux Preparatoires' (2005) 36 IIC: International Review of Intellectual Property and Competition Law 755-87 [...]

In a paper recently published in the IIC, I argued against the prevailing construction of article 52(2) of the Convention on the Grant of European Patents as resolving to a single requirement for technical character. That argument was based in part on a challenge to contemporary assumptions surrounding the historical provenance of the 'technical character' theory of inventions, and article 52(2) itself, that drew heavily on an analysis of the EPC's travaux preparatoires. Hence the article's subtext, that the travaux preparatoires can be of value in contemporary debates regarding European patent law, not only for the insights they offer on substantive matters of patentability, but equally for the insights they offer on regional lawmaking processes themselves. In the light of that value it is surprising that so little academic attention has been paid to the EPC's travaux preparatoires to date. There is an important series of early IIC articles documenting the progress of each stage in the EPC lawmaking process, but no detailed study of the travaux preparatoires in relation to the central EPC provisions themselves. The purpose of the current paper is to make a modest start on filling this gap in the literature of European patent law by offering a 'pre-history' of the most contested of those provisions, article 52(2), and its counterpart in the United Kingdom, sub-section 1(2) of the Patents Act 1977. It is hoped in doing so to create a study of interest and use to the range of people engaged in the current national and international debates concerning the reach of the contemporary European patent system, and the most appropriate mechanisms for that system's reform. Public access preprint at http://ssrn.com/abstract=736064


ISBN: 0018-9855

G Dinwoodie, 'Concurrence and Convergence of Rights: The Concerns of the U.S. Supreme Court' in Grosheide & Brinkhof (eds), Crossing Borders: Between Traditional and Actual (Hart Publishing 2005)

G Dinwoodie, 'Conflicts and International Copyright Litigation: The Role of International Norms' in Intellectual Property in the Conflict of Laws ( 2005)

J Pila, 'Dispute Over the Meaning of Invention in Article 52(2) EPC: The Patentability of computer-implemented Inventions in Europe' (2005) 36 IIC: International Review of Intellectual Property and Competition Law 173-91 [...]

In 2002, the European Economic and Social Committee ("ESC") described the doctrinal premise of the European Patent Office's interpretation of article 52(2) of the European Patent Convention as "the product of legal casuistry". The purpose of the current article is to consider that description, and ask whether it's fair, or whether the EPO's approach to article 52 is better ascribed to problems inherent in the EPC itself. Three issues are addressed to that end. The first is the object of the ESC's criticism: article 52(2) and its interpretation by the EPO's Boards of Appeal. The second is the context and substance of the criticism itself: the European Commission's Proposal for a Directive of the European Parliament and of the Council on the patentability of computer-implemented inventions, and the scathing response it attracted from the ESC. And the third is the question of the criticism's validity: can the EPO's approach to article 52(2) be defended against the charge of casuistic reasoning, and if it can, does it follow that the approach is satisfactory? Public access preprint at http://ssrn.com/abstract=593881


ISBN: 0018-9855

E Hudson and S Waller, 'Droit de suite down under: should Australia introduce a resale royalties scheme for visual artists' (2005) 10 Media & Arts Law Review 1

D Vaver, 'Recent Trends in European Trademark Law: Senses, Shapes and Sensation' (2005) (2005) 95 Trademark Reporter 895 [...]

Examines recent trends in European trade mark law (shapes, sounds, smell marks) and in misappropriation of personality


ISBN: 0041-056X

C Greenhalgh and M Longland, 'Running to stand still? – The value of R&D, patents and trade marks in innovating manufacturing firms’' (2005) Vol. 12 International Journal of the Economics of Business

M J Spence, Ashley Roughton and Trevor Cook (eds), The Modern Law of Patents (Butterworths 2005) [...]

This is a practitioner work.


ISBN: 0406958610

G Dinwoodie, 'The Story of Kellogg Co. v. National Biscuit Co.: Breakfast with Brandeis' in Intellectual Property Stories (Foundation Press 2005) [...]

Kellogg Co. v. National Biscuit Co. may be the Supreme Court's most versatile and influential trademark decision. Justice Brandeis' opinion contained language that is now at the core of the statutory test for whether a term should be unprotected because consumers understand the term as the generic name for the product on which it is used. That same language guides courts seeking to determine whether a mark has acquired the degree of secondary meaning necessary to support trademark protection. Plaintiffs seeking to establish trademark rights in a product shape must demonstrate that the shape in question is not "functional" according to a standard that has its roots in Kellogg. And defendants seeking to parry claims that the design of their product is confusingly similar to the design of a once-patented product habitually invoke Kellogg to support a competitor's right to copy the subject matter of an expired patent.

The scope of Kellogg's influence might, at first blush, seem surprising. The Court was confronted by a relatively narrow issue of trademark and unfair competition law, and to a large extent was revisiting an issue it had decided forty years earlier. The Court's opinion was also quite short. To understand its significance, one must be aware of the full range of philosophical reasons that motivated Justice Brandeis, including opposition for broad intellectual property rights, a concern for competition, and support for a misrepresentation-based model of unfair competition law. And one must also delve into the intense commercial rivalry in the cereal industry - a rivalry conducted by an odd mix of evangelists armed with even odder theories about nutrition and health.

Ultimately, because a variety of rationales were offered by the Court for a conclusion upon which most would agree, the precise scope of the opinion has never been fully clear. These (perhaps purposeful) ambiguities might have prevented the opinion contributing to the clear development of areas of law that were directly addressed by the Kellogg Court. This partially explains the irony that the current Supreme Court has cited Kellogg in a number of trademark cases for a series of different propositions, but did not cite the case in the most recent effort to tackle the very question at issue in Kellogg (the scope of trademark protection for a product covered by an expired patent).

By the same token, however, Justice Brandeis' quiet efforts to supply a more fundamental (and long-term) statement about the philosophy of trademark and unfair competition law may have allowed the opinion to achieve significance, both judicially and legislatively, well beyond the narrow context of the type of case the Court was deciding. And those efforts to articulate a philosophy for trademark and unfair competition law, which do not spring as obviously from the text of the Kellogg opinion, but instead are more readily apparent from historical context, may also be important in the years ahead as scholars and policymakers consider whether trademark law has inappropriately become a law against misappropriation.


D Vaver, 'Unconventional and Well-Known Trade Marks' (2005) [2005] Singapore Journal of Legal Studies 1 [...]

An analysis of trends in protection of sound, shape and smell trade marks, and problems of protection of famous marks, comparing mainly EU and Singapore law.


ISBN: 0218-2173

G Dinwoodie, 'Use, Intent to Use, and Registration in the United States' in Trademark Use ( 2005)

M J Spence and Timothy Endicott, 'Vagueness and the Scope of Copyright' (2005) 121 Law Quarterly Review 657 [...]

Journal article on copyright infringement and appellate process.


ISBN: 0023-933X

TAO Endicott and others, 'Vagueness in the Scope of Copyright' (2005) 121 Law Quarterly Review 657 [...]

The extravagant vagueness in the scope of copyright protection is not itself a defect in the law. But it gives appellate courts a responsibility to articulate principles to guide decision-makers in resolving copyright disputes. And it gives rise to a special need for an adjudicative process that will serve the purposes of copyright protection.

(pre-publication version)


ISBN: 0023-933X

C Greenhalgh, 'Why does market capitalism fail to deliver a sustainable environment and greater equality of incomes?' (2005) Volume 29 Cambridge Journal of Economics

G Dinwoodie and R. Dreyfuss, 'WTO Dispute Resolution and the Preservation of the Public Domain of Science Under International Law' in Maskus & Reichman (eds), International Public Goods and Transfer of Technology Under Globalized Intellectual Property Regime (Cambridge Univ. Press 2005) [...]

The TRIPS Agreement can be read to reflect a static view of the structure of intellectual property law. In this paper, we address whether - and how - the TRIPS Agreement can be interpreted to give it more fluidity, and thus to allow adjustments in national intellectual property regimes designed to reflect the dynamic nature of information production. To focus that inquiry, we concentrate on efforts to ensure a broader public domain for "upstream" inventions by modifying various elements of US patent law. The paper considers three stylized examples and asks whether each approach could be adopted by the United States without falling afoul of the TRIPS Agreement, as it is currently understood. Our purpose is to identify interpretive approaches that allow member states to keep their laws attuned to the developments and needs of science. In so doing, we also raise broader questions regarding the level of formalism generated by the WTO dispute settlement system, and the extent to which the TRIPS Agreement allocates power between supranational and national institutions, and between international and national laws.


2004

D Vaver and others (eds), Intellectual Property in the New Millennium: Essays in Honour of William R. Cornish (Cambridge University Press, 2004 2004) [...]

Co-editor of articles by leading academics, judges and lawyers on intellectual property issues in international law and in the UK, US and other jurisdictions. A favourable review by D. Mendis of Edinburgh University appears at http://www.law.ed.ac.uk/ahrb/script-ed/vol2-1/ipnm_review.asp.


ISBN: 0-521-84643-9

G Dinwoodie and R. Dreyfuss, 'International Intellectual Property Law and the Public Domain of Science' (2004) 7 Journal of International Economic Law 431 [...]

The TRIPS Agreement can be read to reflect a static view of the structure of intellectual property law. In this paper, we address wither - and how - the TRIPS Agreement can, on the other hand, be read with more fluidity, and thus to allow adjustments in national intellectual property regimes designed to reflect the the dynamic nature of information production. To focus that inquiry, we concentrate on efforts to ensure a broader public domain for 'upstream' inventions by modifying various elements of US patent law. The paper considers three stylized examples and asks whether each approach could be adopted by the United States without falling afoul of the TRIPS Agreement as it is currently understood. Our purpose is to identify interpretive approaches that allow member states to keep their laws attuned to the development and needs of science. But in so doing, we also raise broader questions regarding the level of formalism generated by the WTO dispute settlement system, and the extent to which the TRIPS Agreement allocates power between supranational and national institutions, and between international and national laws.


G Dinwoodie, 'Private Ordering and the Creation of International Copyright Norms: The Role of Public Structuring' (2004) 160 Journal of Institutional and Theoretical Economics 161 [...]

International copyright law must be based on an assessment of what types and levels of protection best further the purposes of copyright law. But constructing the international copyright regime is difficult as the international system must wrestle with copyright dilemmas that exist at the national level as well as broader challenges facing international law. This paper delineates the connection between international copyright law and the generation and distribution of knowledge by discussing two recent examples of (possible) unconventional international copyright rulemaking, namely, norms generated by Internet Service Providers in responding to infringement claims, and norms arising out of digital rights management systems (JEL: K 29).


J Pila, 'The Highs and Lows of 2004 for European Intellectual Property Law (English)' (2004) JETRO

J Pila, 'The Highs and Lows of 2004 for European Intellectual Property Law (Japanese)' (2004) JETRO

G Dinwoodie, 'The International Intellectual Property Law System: New Actors, New Institutions, New Sources' in Proceedings of the 98th annual Meeting of the American Society of International Law (ASIL 2004) [...]

International intellectual property norms are now being developed by a wide range of institutions - some national, some international, and some that do not fit neatly into either category; by bodies designed to address intellectual property; by trade and other bodies; and by actors public, private, and indeterminate. This new wave of international norm creation not only augments a growing body of substantive norms but also raises difficult structural questions about the future development of the international intellectual property system. This essay, a lecture delivered to the Annual Meeting of the American Society of International Law in 2004, is being reprinted as part of a symposium on ?TRIPS after ten years.?


D Vaver, 'The Problems of Biotechnologies for Intellectual Property Law' (2004) Hors série (2004) Les Cahiers de Propriété Intellectuelle: Mélanges Victor Nabhan 375 [...]

Moral, legal definitional and institutional issues involving the patenting of biotechnologies


ISBN: 0840-7266

G Dinwoodie, 'The Seventh Annual Honorable Helen Wilson Nies Memorial Lecture on Intellectual Property Law: The Trademark Jurisprudence of the Rehnquist Court' (2004) 8 Marquette Intellectual Property Law Review 187

G Dinwoodie, 'Trademarks and Territory: Detaching Trademark Law from the Nation-State' (2004) 41 Houston Law Review 885 [...]

It is an axiomatic principle of domestic and international trademark law that trademarks and trademark law are territorial. This paper critiques the principle of territoriality in four ways. First, I suggest that statements about trademark territoriality mask a variety of related propositions. In disaggregating the "principle of territoriality" into its component parts, it becomes apparent that different rules of trademark law possess a territorial character for different reasons. For example, common law trademark rights are territorial because the intrinsic purpose of trademark law suggests extending (and limiting) rights to the geographic reach of goodwill. In contrast, registration systems designed to promote economic expansion derive their territorial character from their grounding in economic policymaking, effected by institutions that focus on the regulation or development of discrete economic regions. And rules regarding the enforcement of trademark rights assume their territorial quality because of their connection to political institutions with territorially defined sovereignty. Thus, some aspects of territoriality are rooted in social and commercial practices that dictate the reach of a brand, while other aspects are a function of political or policymaking authority. In an era of global trade and digital communication, social and commercial practices are less territorially confined and less commensurate with the nation-state. But economic policymaking and political institutions may prove more resistant to change than social or commercial behavior.

Second, I argue that although the principle of trademark territoriality has nominally remained constant since the conclusion of the Paris Convention, recent developments at both the national and international level suggest that the principle may have a different intensity today. Third, the paper begins an investigation of the ways in which the principle of territoriality should be revisited in light of the globalization of markets and concomitant changes in modern marketing practices. Although the multidimensional nature of the territoriality principle suggests that an overarching reconfiguration would be unwise and perhaps impossible, some shared dilemmas can be derived from analysis of discrete rules. If the territorial character of a rule reflects the intrinsic purpose of trademark law and is thus rooted in social practices that are already in flux, the character of these doctrines will almost inevitably mutate as the notion of territoriality evolves in line with social change. Such revisions will swim with the current of socially constructed territoriality. If, however, the territoriality of a doctrine instead mirrors the national nature of economic and political institutions, then efforts to revise the doctrines will first require altering the underlying institutional and policymaking apparatus. Moreover, in deciding whether particular territorial aspects of trademark law warrant reassessment, it is important to consider whether trademark law should be structured reactively to protect whatever consumer understandings or producer goodwill develops, or should it instead proactively seek to shape the ways in which consumers shop and producers sell or seek to acquire rights, thus shaping how the economy functions?

Finally, the paper briefly highlights the extent to which there is, or should be, an assimilation of the "territorial" and the "national." Analysis of the choices facing trademark law might be better achieved by consciously separating nationality and territoriality. Recognition of the territoriality of goodwill is linked to the basic purposes of trademark law, while nationality-grounded doctrines are more likely driven by economic policy and by institutional issues such as the practical demands of current political structures. Recognizing this distinction would assist in highlighting where reform is likely to be evolutionary and where modification of political structures - whether judicial or administrative - must first occur.


G Dinwoodie and M. Janis, Trademarks and Unfair Competition: Law & Policy (Aspen Publishers Inc. 2004)

G Dinwoodie and R. Dreyfuss, 'TRIPs and the Dynamics of Intellectual Property Lawmaking' (2004) 36 Case Western Reserve Journal of International Law 95 [...]

In prior work, we took up the question of the TRIPs Agreement's resilience to changes in domestic law. We argued that such resilience is necessary because information production is a dynamic enterprise. As new industries emerge and mature, nations must have the flexibility to modify their intellectual property rules to readjust the balance between public and private rights. In the course of that study, we examined approaches to TRIPs dispute resolution that could cabin the choices of legislation available to deal with emergent substantive problems, and which could distort the legal environment in which creative enterprises are conducted. In this piece, we continue our consideration of the resilience of the Agreement and its commitment to neo-federalism. Here, however, we move from a focus on outcomes to the dynamics of the legislative process, examining the extent to which TRIPs dispute resolution adequately accommodates the operation of each member's political economy as it relates to intellectual property lawmaking.

Frequently, as intellectual property lawmaking becomes fiercely contested, reforms can only occur when a balanced package of rules can be reached. We ask whether such deals (or perhaps which of such deals, depending upon the connection between the reforms) should be taken into account by WTO panels. We argue that when legislation represents offsetting benefits and detriments, respect for domestic political dynamics requires panels to consider constituent pieces of such legislation in the context of the package in which they were enacted.

In previous work, we questioned whether the jurisprudence that has developed with regard to the GATT's trade provisions should apply equally to intellectual property, noting that differences between trade and intellectual property policy mandated different approaches. Here we reiterate that position, but make something of a converse argument as well: there are commonalities between the problems that nations experience in executing their trade commitments and their intellectual property commitments. Thus, it is significant that in its early years, the GATT incorporated strategies that created flexibility and permitted nations to deal autonomously with matters of domestic trade; we argue that similar mechanisms are required in TRIPs jurisprudence, especially in the Agreement?s formative stage.

We also focus on the effect that TRIPs, as currently understood, has on domestic lawmaking. If WTO panel decisions intrude more into national law, might lawmakers begin to enact legislation in reliance on international invalidation of whole or parts of the enactment? Should formulation of domestic policy take this into account? Further, would the formalistic approach that has been taken to TRIPs jurisprudence benefit domestic lawmaking by reducing the effect of lobbying? Or would it simply induce more nuanced log-rolling, or the enactment of laws aimed at influencing intellectual property production but under a different legislative rubric (such as food and drug regulation or consumer law)? Indeed, answers to these questions might affect not only lawmaking at the national level but, in turn, the form of WTO dispute settlement. We go so far as to suggest that there may be a role for the (much-feared) nonviolation complaints in navigating these complexities.


2003

J Pila, 'Bound Futures: Patent Law and Modern Biotechnology' (2003) 9 Boston University Journal of Science and Technology Law 326-378

G Dinwoodie, 'Commitments to Territoriality in International Copyright Scholarship' in Paul Brugger (ed), Copyright -- Internet World (ALAI-Suisse 2003)

D Vaver, 'Defining and rewarding invention: a review and a modest proposal for patent law' in P. Mirfield & R. Smith (eds), Essays for Colin Tapper (Lexis/Nexis 2003) [...]

Reviews definitions of "invention" in patent law internationally and argues that what should be patented should be more closely regulated.


ISBN: 0 406 96439 4

J Pila, 'Inherent Patentability in Anglo-Australian Law: A History' (2003) 14 Australian Intellectual Property Journal 109

C Greenhalgh and M Longland, 'Intellectual Property Scoreboards for the UK in 2000' (UK Patent Office 2003)

D Vaver, 'Le concept d’invention en droit des brevets: bilan et perspective' in M. Vivant & J.-M. Bruguière (eds), Protéger les inventions de demain: Biotechnologies, logiciels et méthodes d’affaires (Institut National de la Propriété Industrielle 2003) [...]

IP law article


ISBN: 2-11-005313-5

C Greenhalgh, M Longland and D Bosworth, 'Trends and Distribution of Intellectual Property: UK and European patents and UK trade and service marks 1986-2000’' (UK Intellectual Property Office 2003)

2002

J Pila, 'Battle for academic credit separates junior teams from heavyweights' (2002) Sydney Morning Herald

D Vaver, 'Copyright Developments in Europe: The Good, The Bad and The Harmonized' in N. Elkin-Coren & N.W. Netanel (eds), The Commodification of Information (Kluwer Law International 2002)

G Dinwoodie, W. Hennessey and S. Perlmutter, International and Comparative Patent Law (LexisNexis Publishing 2002)

D Vaver, 'Need Intellectual Property Be Everywhere? Against Ubiquity and Uniformity' (2002) 25:1 (2002) Dalhousie Law Journal 1 [...]

Argues that legal standardization of defective intellectual property laws is good for neither the developed nor the developing world. Retrenchment and diversity are better strategies. Cited favourably in the Constitutional Court of South Africa in Laugh It Off Promotions v. South African Breweries Int'l, 2005.


ISBN: 0317-1663

D Vaver and others, Principles of Copyright Law: Cases and Materials (World Intellectual Property Organization, Geneva (2002) 2002) [...]

A casebook on copyright, incorporating sections on Commonwealth and United States caselaw, civil law and Arabic law. I was sole author of the common law materials (158 pp.); my co-authors wrote the civil and Arabic law parts respectively.


ISBN: 92-805-1013-1

G Dinwoodie, 'The Architecture of the International Intellectual Property System' (2002) 77 Chicago-Kent Law Review 993

D Vaver, 'The Copyright Mixture in a Mixed Legal System: Fit for Human Consumption?' (2002) 2002:2/3 Juridical Review 101

C Greenhalgh and P Dixon, 'The economics of intellectual property: a review to identify themes for future research, ' (UK Patent Office 2002) [...]

Oxford Intellectual Property Research Centre Working Paper No. 05/02 2002.


G Dinwoodie, 'The Rational Limits of Trademark Law (plus 2005 postscript)' in H. Hansen (ed), U.S. Intellectual Property: Law and Policy (Edward Elgar Publishing 2002)

G Dinwoodie, 'Trademark and Copyright: Complements or Competitors?' in Jane Ginsburg and June Besek (eds), Adjuncts and Alternatives to Copyright (General Report to ALAI Congress 2002)

2001

D Vaver, 'Creating a Fair Intellectual Property System for the 21st Century' (2001) 10:1 (2001) Otago Law Review 1 [...]

F.M. Guest Memorial Lecture 2000


ISBN: 0078-6918

G Dinwoodie and L. Helfer, 'Designing Non-National Systems: The Case of the Uniform Domain Name Dispute Resolution Policy' (2001) 43 William and Mary Law Review 141 [...]

The article critically assesses the Uniform Domain Name Dispute Resolution Policy (UDRP) as a potential model for solving the immense legal challenges presented by transborder activity. Inaugurated in late 1999 by the Internet Corporation for Assigned Names and Numbers (ICANN), the UDRP creates a fast, inexpensive online mechanism for trademark owners to recapture domain names held by persons who, in bad faith, register and use domain names that are confusingly similar to those marks. At present, the UDRP applies only to a narrow segment of disputes between trademark owners and domain name registrants. But the UDRP has been heralded by some as the model for a new non-national approach to lawmaking and dispute settlement applicable to a broader set of legal issues that transcend national borders.

In this article, we describe the conditions that led to the UDRP's formation and consider whether the UDRP can and should be replicated elsewhere. The process by which the UDRP was created, and the way in which it is structured, departs significantly from preexisting approaches to international lawmaking and dispute settlement. The UDRP is the product not of national legislation nor an international treaty, but rather of a web of contractual obligations imposed by a private, non-profit corporation with a monopoly over a valuable resource. Through its agreements with the U.S. Department of Commerce, ICANN serves as the gatekeeper for anyone seeking to acquire the most commercially valuable internet addresses. Exclusive control of access to the root server enables ICANN to dictate the terms and conditions for domain name ownership. This technological control also facilitates enforcement of UDRP panel decisions compelling domain name registrars to cancel ownership of contested domain names or transfer them from registrants to trademark owners.

The UDRP deviates from preexisting lawmaking and dispute settlement paradigms in other ways that make its advantages considerable (and which may make it attractive for replication). For example, the UDRP is a hybrid dispute settlement system. It contains an amalgam of elements from three distinct decision making paradigms - judicial, arbitral and ministerial - and it draws inspiration from international, supranational, and national legal systems. The UDRP thus reveals how dispute settlement structures can be tailored to the needs of new technologies and new types of legal conflicts. The UDRP is also non-national. Neither its substantive content nor its prescriptive force necessarily depends upon the laws, institutions, and enforcement mechanisms of any single nation-state or treaty regime. It thus suggests ways to bypass the often slow and cumbersome mechanisms of national and international lawmaking and to fulfil the demand for effective dispute settlement mechanisms that, like so much current social activity, transcend national borders.

Even assuming the UDRP can be applied to other situations where the conditions of monopolistic technological control do not subsist, however, we do not believe that it should be uncritically extended to other contexts without first questioning how non-national systems ought to be structured. In particular, while we applaud the effort to construct a non-national model that draws upon but is not constrained by existing paradigms, the current iteration of that model fails to incorporate appropriate checking mechanisms to control the scope and pace of lawmaking and the limited powers granted to dispute settlement decisionmakers. Moreover, the tensions between national and non-national values may be more difficult to reconcile in other settings; cybersquatting, in contrast, was universally condemned, and thus competing national values were less frequently implicated. We seek to identify these and other variables that should guide the authors of new checking mechanisms for new non-national structures.


C Greenhalgh and M Longland, 'Intellectual property in UK firms: Creating intangible assets and distributing the benefits via wages and jobs' (2001) Vol. 63 Oxford Bulletin of Economics and Statistics

D Vaver, 'Intellectual Property Law: The State of the Art' (2001) 1.33402777777778 Victoria University of Wellington Law Review 1 [...]

IP Law article


ISBN: 0042-5117

D Vaver, 'Intellectual Property Law: The State of the Art' in Frankel & Smith (eds), Essays on Intellectual Property Law and Policy (Victoria Univ. L.Rev. 2001) [...]

IP Law article


ISBN: 475110870

G Dinwoodie, W. Hennessey and S. Perlmutter, International Intellectual Property Law and Policy (LexisNexis Publishing 2001)

G Dinwoodie, 'International Intellectual Property Litigation: A Vehicle for Resurgent Comparativist Thought?' (2001) 49 American Journal of Comparative Law 429

C Greenhalgh, M Gregory and B Zissimos, 'Jobs for the skilled: How technology, trade and domestic demand changed the structure of UK employment' (2001) Vol. 53 Oxford Economic Papers

J Pila, 'Methods of Medical Treatment Within Australian and United Kingdom Patents Law' (2001) 24 University of New South Wales Law Journal 421 [...]

Public access preprint at http://ssrn.com/abstract=303999


ISBN: 0313-0096

J Pila, 'Patenting Human Genes: The Australian Position' (2001) 6 Genetics Law Monitor 10

G Dinwoodie, 'Private International Aspects of the Protection of Trademarks (WIPO Doc. No. WIPO/PIL/01/4)' (2001)

G Dinwoodie, 'Report of the United States, in Adjuncts and Alternatives to Copyright (General Report to ALAI Congress 2001)' (2001)

C Greenhalgh and M Gregory, 'Structural change and the emergence of the new service economy' (2001) Vol. 63 Oxford Bulletin of Economics and Statistics

C Greenhalgh, D Bosworth and M Longland, 'Technological activity and employment in a panel of UK firms' (2001) Vol. 48 Scottish Journal of Political Economy

J Pila, 'The Common Law Invention in its Original Form' (2001) Intellectual Property Quarterly 209

G Dinwoodie, 'The Development and Incorporation of International Norms in the Formation of Copyright Law' (2001) 62 Ohio State Law Journal 733 [...]

The means by which international norms are developed and incorporated in the formation of copyright law have changed dramatically in recent years. In this article, Professor Dinwoodie explores the nature of those changes. The classical model of international copyright law afforded countries significant latitude to implement international standards in ways tailored to their own economic and cultural priorities. The lack of an effective method of enforcing international standards consolidated that deference to national autonomy. And international treaties tended merely to codify existing commonly accepted national standards. This model has undergone changes of late, most notably (but not exclusively) in the context of the TRIPS Agreement, which subsumed the principal international copyright obligations within the WTO Dispute Settlement system. This change to the classical model is potentially significant in many ways. Most directly, failure to fulfill international copyright obligations may be met by the imposition of trade sanctions. More broadly, however, the interpretation of international copyright obligations by WTO panels may alter the degree of national autonomy afforded member states and may make international copyright law more forward looking in nature. International copyright lawmaking by activist WTO panels thus may generate costs as well as gains. Professor Dinwoodie considers these issues through an analysis of the first (and, thus far, the only) report of a WTO dispute settlement panel regarding violation of a copyright provision contained in the TRIPS Agreement. This report, handed down in June 2000, found that an exemption introduced into section 11 (5) of the U.S. Copyright Act in 1998 violated the rights of owners of copyright in musical works guaranteed by the Berne Convention and incorporated within the TRIPS Agreement. Professor Dinwoodie concludes that the panel report is a good beginning to the new era of international copyright. The panel report is a strong and appropriate endorsement of the need to protect the rights of copyright owners and to hold WTO members to agreed-upon minimum standards. In addition, the report contains hints that WTO panels will accord some continuing respect to the value of national autonomy, will seek to interpret the TRIPS Agreement in a dynamic fashion responsive to changing social and economic conditions, will examine contentious issues of copyright law through other than a pure trade lens, will move cautiously before finding violations of international obligations, and will encourage the involvement of interested third parties in the resolution of WTO disputes. Despite this balanced beginning, the article concludes that private international lawmaking might further forwardlooking international copyright lawmaking in ways that do not incur the costs associated with activist WTO lawmaking. To facilitate this process, Professor Dinwoodie suggests that national courts consider resolving international copyright litigation by formulating substantive rules rather than localizing such disputes in a single country through traditional choice of law rules. Such a substantive law approach to choice of law fits well with the objectives of private international law. But this broader approach will also establish a means of incorporating international norms in the formation of copyright law without jeopardizing values appropriately furthered by the classical method of public international copyright lawmaking.


J Pila and et al, 'Why patents for genes aren't patently obvious (editorial)' (2001) The Age (Melbourne)

2000

G Dinwoodie, '(National) Trademark Laws and the (Non-National) Domain Name System' (2000) 21 University of Pennsylvania Journal of International Economic Law 495

G Dinwoodie, 'A New Copyright Order: Why National Courts Should Create Global Norms' (2000) 149 University of Pennsylvania Law Review 469

D Vaver, Copyright Law (Irwin Law, Toronto (2000) 2000) [...]

A text on Canadian copyright law. Shortlisted in 2003 for the Walter Owen Book Prize Award for outstanding new contributions to Canadian legal literature. The text is frequently cited in academic writing, and has also been favourably cited in Canadian courts, including the important decision of the Supreme Court of Canada in Law Society of Upper Canada v CCH Ltd (2004).


ISBN: 1-55221-034-0

D Vaver, 'Intellectual Property Law: The State of the Art' (2000) 116 (2000) Law Quarterly Review 621 [...]

Republished in 2001.


ISBN: 0023-933x

J Pila, 'The Inherent Patentability of Methods of Medical Treatment in Australia' (2000) Genetics Law Monitor 7

G Dinwoodie, 'The Integration of International and Domestic Intellectual Property Lawmaking' (2000) 23 Columbia-VLA Journal of Law & the Arts 307

1999

D Vaver, 'Copyright in Europe: The Good, The Bad and the Harmonized' (1999) 10 Australian Intellectual Property Journal 185 [...]

IP Law article


ISBN: 1038-1635

D Vaver, 'Moral Rights Yesterday, Today and Tomorrow' (1999) 7 International Journal of Law and Information Technology 270 [...]

Criticism of moral rights provisions in UK copyright law, suggesting reform.


ISBN: 0967 0769

D Vaver, 'Moral Rights: The Irish Spin' (1999) 0.127083333333333 Irish Intellectual Property Review 3 [...]

IP Law article, partly based on "Moral Rights Yesterday, Today and Tomorrow" by same author. Criticizes proposed Irish reforms. The article was referred to in the debates on the bill in the Irish parliament and helped shape the final Act.


ISBN: 1393-4317

D Vaver, 'Taking Stock' (1999) [1999] European Intellectual Property Review 339 [...]

IP law article. Compares law of 100 years ago with trends today.


ISBN: 0142 0461

G Dinwoodie, 'The Death of Ontology: A Teleological Approach to Trademark Law' (1999) 84 Iowa Law Review 611 [...]

In recent years, U.S. courts have recognized that a wide (and potentially limitless) range of subject matter may act as a trademark. These developments arguably comport both with a contemporary (global) consumer who is less reliant on linguistic forms of communication and with postmodern scholarship regarding the varied sources and development of meaning. This article addresses how trademark law should adapt to the reality that consumers identify and distinguish products using a range of symbols other than the traditional forms of words and pictorial images. I contend that, in order to regulate effectively the present-day marketplace, trademark law must recognize the limitless sources of meaning. But while nontraditional subject-matter may equally identify a product?s source, protecting that nontraditional matter as a trademark may give rise to very different consequences than protecting traditional trademark subject-matter such as words. If ontological restrictions upon trademark subject-matter are removed, a new set of limits must prudently be established if trademark protection is not to spawn adverse competitive effects from overprotection. I suggest that such limits can be found by tethering trademark law directly to its limited purposes, and by grounding protection not in over-generalized assumptions about classes of subject matter, but rather in the real present-day impact of particular symbols in society. The Article explores this (teleological model) through the vehicle of the nontraditional subject-matter generating the most trademark litigation and the most critical thinking, namely, product design features. The article systematizes the growing body of trade dress case law and scholarship and highlights the different premises that I detect underlying divergent schools of thought. I argue that the Supreme Court is cautiously moving, albeit without any express recognition, toward a postmodern vision of marketplace symbols, and that its recent opinions represent an incipient version of the teleological model that I espouse. Finally, I exemplify the operation of the teleological model by applying its lessons to the issue of functionality. Applying the teleological model to various hotly-debated aspects of the functionality doctrine leads me to endorse adoption of a transparent, purposive analysis of "competitive need" as the measure of functionality rather than any single doctrinal formulation. That inquiry, I argue, should be particularized and applied without categorical differentiation between aesthetic and utilitarian features. I also reject the prevailing view that a finding of functionality should foreclose the grant of any relief to a plaintiff producer, finding it insufficiently cognizant of the costs of confusingly similar source-identifying designs in an increasingly visual society. Instead, I propose that courts should explore the possibility of conditioning a defendant's right to copy a functional design on compliance with labeling or other requirements that minimize consumer confusion. Moderating the consequence for plaintiffs of a finding of functionality should embolden courts to apply a rigorous functionality analysis to a greater range of design features. An ontologically unlimited approach to trademark subject-matter sits well with our postmodern condition; but, in order to avoid over-protection, it must be accompanied by a heightened regard for the policy concerns embodied in the functionality doctrine.


J Pila and A Christie, 'The Literary Work Within Copyright Law: An Analysis of its Present and Future Status' (1999) 13 Intellectual Property Journal 133-177

1997

G Dinwoodie, 'Introduction: Intellectual Property Law For The Twenty-First Century' (1997) 66 University of Cincinnati Law Review 1

G Dinwoodie, 'Reconceptualizing the Inherent Distinctiveness of Product Design Trade Dress' (1997) 75 North Carolina Law Review 471

1996

J Pila, 'A-One Accessory Imports Pty Ltd v Off Road Imports Pty Ltd, 34 IPR 306 (Federal Court of Australia 1996) ' (1996) 11 EIPR D   [Case Note]

G Dinwoodie, 'Federalized Functionalism: The Future of Design Protection in the European Union' (1996) 24 American Intellectual Property Law Assocation Quarterly Journal 611

C Greenhalgh, G Mavrotas and R Wilson, 'Intellectual property, technological advantage and trade performance of UK manufacturing industries' (1996) Vol. 28 Applied Economics

J Pila, 'Trumpet Software Pty Ltd v Ozemail Pty Ltd, 34 IPR 481 (Federal Court of Australia 1996)' (1996) 10 EIPR D   [Case Note]

1994

C Greenhalgh, P Taylor and R Wilson, 'Innovation and export volumes and prices – a disaggregated study' (1994) Vol. 46 Oxford Economic Papers

C Greenhalgh and P Hayward, 'Intellectual Property Research: a review of the economic and socio-legal literature. ' (ESRC 1994) [...]

Report commissioned by C. Caswill, Research Director of the Economic and Social Research Council.


J Pila and J MacPhail, 'Kettle Chip Co Pty Ltd v Apand Pty Ltd, 46 FCR 152 (Federal Court of Australia 1993)' (1994) 3 EIPR D   [Case Note]

1990

C Greenhalgh, 'Innovation and trade performance in the UK' (1990) Vol. 400 Economic Journal

0

G Dinwoodie and Mark Janis, Trademarks and Unfair Competition; Law and Policy (Fourth Edition, Aspen Law Publishing 0)



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