Book Review: WTO Dispute Settlement and the TRIPS Agreement

This Kat has always felt a sense of unease in seeking to understand the relationship between the IP and trade aspects of the TRIPS agreement (Agreement on Trade-Related Aspects of Intellectual Property Rights), since it went into effect on January 1, 1995. As IP practitioners, we tend to view TRIPS in terms of international IP treaty-making, namely the most comprehensive attempt by the international community to set minimum standards for intellectual property rights. That is fine, as far as it goes.

However, as Professor Mathew Kennedy makes clear in his new book, “WTO Dispute Settlement and the TRIPS Agreement: Applying Intellectual Property

Standards in a Trade Law Format”, to do so is to miss the essential point--TRIPS is not merely an IP treaty. Rather, it is part of a multinational trade arrangement (Annex 1C to the Agreement establishing the World Trade Organization), deriving from the Uruguay Round of multilateral trade negotiations (1986 – 1994), resulting in the establishment of the World Trade Organization. Most notable are its arrangements for dispute resolution between governments (the WTO Dispute Settlement Understanding). As stated by Lars Anell (former Chairman of the Negotiating Group on TRIPS) in the Forward to the book, the inclusion of the TRIPS Agreement, building on treaties developed in another organization—WIPO, was the most “surprising” (p. ix) outcome of the Uruguay Round. It is this link between intellectual property rights, on the one hand, and the mechanisms for dispute resolution based on trade law principles, on the other, that gives TRIPS is unique character.

And what a complex, multi-layered, nuanced character it is. As Kennedy graphically observes, negotiating and implementing an IP agreement within the framework of a “multilateral trading system [is] like a cuckoo’s egg laid and hatched in the nest of another species” (p.1). How these two systems interweave and interact is the focus of Kennedy’s book. Covering over 450 pages (mainly) of text, supported by tables and case summaries, the book is divided into eight substantial chapters, ranging from discussion of procedural pitfalls to treaty interpretation. Each of the chapters is based on copious research and benefits from careful analysis and discussion. The overall impression is that anything that this Kat might have wanted to ask about the relationship between TRIPS and the WTO framework, with particular attention to the dispute resolution mechanism, is dealt with by Kennedy in a thorough fashion.

The challenge of language and conceptual underpinnings is particular daunting. On the one hand, IP practitioners are called upon to learn the lexicon of trade law. Kennedy’s book is an excellent guide to navigating this lexicon in the context of TRIPS. On the other hand, trade law needs to take care to avoid what Kennedy calls “fusion fallacies”, namely, “[b]lindly transplanting concepts of trade liberalization into intellectual property standards, simply because TRIPS is an integral part of the WTO Agreement.” The temptation to do so is especially present when dispute resolution practitioners, who tend to come from the trade law world, are “all too ready to transpose familiar concepts from trade law” (p. 403), without giving proper thought to the IP context in which they arise.

The author seems well-suited for the task that he has set for himself. He is currently a professor at the Faculty of Law at the University of International Business and Economics in Beijing. Before then, he was a senior lawyer at the WTO Secretariat and Secretary of the WTO Council for TRIPS.

IP professionals who want to gain a better grasp of the complexity that undergirds TRIPS within the context of trade law will be well-advised to add Kennedy’s book to their library.

Kennedy, Matthew. WTO Dispute Settlement and the TRIPS Agreement. Cambridge, United Kingdom. Cambridge University Press, 2016. ISBN 978-1-107-14468-2: Available in hardback, here.

Book review: Computer Crimes and Digital Investigations

Would-be computer criminals be warned, the law is slowly but surely catching up with you.  In Computer Crimes and Digital Investigations, 2nd edition, Ian Walden provides an updated version of his 2007 treatise on legal aspect of computer crime.  One area of interest for IPKat readers will be discussions on online IP crime and the use of computer evidence in computer crimes.

Walden provides a comprehensive explanation of the various key terms and approaches in legal aspects of cyber crime. He classifies crime using the Council of Europe's Convention on Cybercrime categorisation, which divides crime into three areas: computer-related crime (the computer is the instrument for the crime, such as hacking), content-related crime (e.g. copyright infringement and child pornography), and computer-integrity offences (e.g. viruses).

Cat caught in the act
Amelia on a MacBook Pro, Brownpau

As we move to a more knowledge-based economy, the role of intangible assets is increasing.  One of this Kat's favourite subjects is trade secrets. Walden notes a subtle distinction in the protection of trade secret between rights, "granted to trade secret information itself and protections triggered by the means of obtaining the information." Conspiring to defraud, for example, addresses the value of the information (trade secret protection), and computer misuse deals with the means of theft (means).  Walden details the increasing trend of trade secret protection moving from civil to criminal law.

Walden devotes a section to intellectual property crimes, namely infringement of copyright [Merpel notes that trade secrets, ever the poor relation of IP, are in a separate section.] He notes that the Convention on Cybercrime only addresses copyright and related rights infringement, not other IP, details the various cases and statutes, and notes a trend for rightsholders to seek redress via communication services providers (e.g. ISPs.)

Does the evidence add up?
John Thaw by Bill Strin

A longstanding question in online copyright infringement is evidence, as detecting and proving infringement is a challenge.  Walden divides law enforcement techniques into ordinary (e.g. searching on the internet), coercive (use of police powers such as search and disclosure), and covert (interception, surveillance etc.) [Merpel has been nostalgia-watching a lot of Inspector Morse recently, and is happy to note he uses all three techniques.] He describes the chaotic development of cybercrime evidence and evidence gathering. There are number of remaining challenges, including difficulty linking virtual identity to real-world people (identity problem), associating online data to physical locations (location problems) and the amorphous nature of data (its lack of stickiness.) These problems continue to challenge evidence used in online copyright infringement cases.

I found Walden's clear approach to categorising aspects of each topic helpful.  The appendix includes nearly 75 pages of legal texts, including the Association of Chief Policy Officers Good Practice Guide for Digital Evidence. The comprehensiveness of the book makes it both a good reference, and an interesting analysis; it will appeal to legal scholars and professionals, and the odd Inspector Morse fan (not a tautology.)

Walden, Ian. Computer Crimes and Digital Investigations. Oxford, United Kingdom: Oxford University Press, 2016. ISBN: 9780198705598 Available for £95 in hardback. Rupture factor: High, a hardback with nearly 560 pages.

Book review: Global Governance of Intellectual Property in the 21st Century

Navigating through intellectual property law and policy on the global stage can at times feel like being an apocryphal blind man trying to describe an elephant. The aspects and impressions are so different that without a broad outlook and a sharing of experiences, it is quite impossible to see the full picture. As Francis Gurry put it at the CIPA Congress 2016 earlier this month, the world is just too complex for a single global IP strategy.

This principle is highlighted by Mark Perry's (ed.) Global Governance of Intellectual Property in the 21st Century, available from Springer here.

This book offers some fresh and contemporary perspectives on IP governance. By way of introduction, it promises a wide selection of intellectual property topics and invites readers with expertise relating to one aspect of IP or one geographic location to discover more about the wider governance framework.

The content really does deliver on this promise, being a selection of chapters by various authors from around the world. On the whole, they provide consolidatory, useful comparisons between IP rights and between countries which generally make the subject matter both accessible and engaging.

Probably for reasons of space rather than style, once or twice some important new issues seemed to appear in chapter conclusions which had not been mentioned in the main body of text. Still, given the range of topics covered it remains a suprisingly concise and slim volume - shoulder bag and toe-friendly. This Kat also considered the topics were very well selected.

The chapter on Chinese prior art provides a clear introduction to a specific matter of policy which initially feels familiar to western students of IP, but with some distinctly Chinese twists which are clearly laid out by the author, Lijuan Liu.

A later chapter deals with CJEU-made law relating to originality in copyright. Here, Thomas Margoni presents some original analysis of the CJEU standard against the backdrop of civil and common law incarnations.

Particular highlights for this Kat were two fascinating chapters on trade marks, in a row: one on trade marks and domain names, and the other on "non-conventional" marks. The background to the Uniform Domain-Name Dispute-Resolution Policy is rich, and Heather Ann Forest explains the topic and the legal tensions extremely well.  The chapter on non-conventional marks offers a fresh perspective, which feels very current and resonates with contemporary ideas about branding. This is brought to life by Llewellyn Joseph Gibbons' colourful use of examples.

So much more ground is covered  - including the ASEAN market, Foreign Direct Investment Agreements, intermediary liability in Australia and a thoughtful reflection on the Marrakesh Treaty. On the whole, a fine balance is struck between different legal systems and IP rights.

The final chapter is co-authored by the editor, Mark Perry, and Kylie Lingard. It explains the importance of patent mapping in areas such as crop innovation in order to avoid the "tragedy of the anticommons", and also showcases Perry's modelling tool, Patentomics. Mapping the relationships between patents may feel intuitive, but it is clearly easier said than done to present the spidery web of relationships visually. Patentomics is a stylish, easy to use tool which clearly has massive potential for innovators to navigate around the patent landscape.

The book neatly captures the challenges faced in global governance of IP and makes up an interesting mosaic through each snapshot. It is well worth a read for anybody with an interest in international policy.

Perry, Mark (ed). Global Governance of Intellectual Property in the 21st Century. Springer International Publishing Switzerland 2016. ISBN: 978-3-319-31176-0 (Print) 978-3-319-31177-7 (Online). Available here.

Book Review: Arnold reviews "Economic Approaches to Intellectual Property"

Putting your own book out for review is a wee bit anxiety provoking, and this Kat was delighted when Richard Arnold very kindly agreed to review my new book.  Here is his take:

Book review: Economic Approaches to Intellectual Property

Richard Arnold

This new book by Kat Dr Nicola Searle (formerly Economist at the UKIPO and now a lecturer at Goldsmiths, University of London) and Martin Brassell (co-founder and Chief Executive of Inngot, an intellectual property valuation consultancy) provides an introduction to the economics of intellectual property for lawyers, managers and policymakers. Unlike many texts on the economics of IP, it assumes no prior knowledge of economics and begins with an introduction to economics which explains the basic principles. Moreover, it contains no equations and few graphs. While it does include a certain of amount of economic jargon, each term is carefully explained as it is introduced. By contrast, the book does assume a basic knowledge of copyrights, designs, patents and trade marks, although it explains the less commonly encountered rights such as geographical indications and plant breeders’ rights.

The book is divided into three parts, each of which comes with its own summary. The first part consists of the introduction to economics followed by an introduction to the economics of IP. The second part looks at the economics of individual IP rights, with separate chapters on patents, copyright, trade marks and design rights, and trade secrets and other rights. Each of these chapters considers a variety of topics, from the rationale for the individual rights to the economic impact of such matters as patent harmonisation, collective licensing and grey goods. Also included in this part is a chapter on competition and IP. The third part is entitled “How, Why and When Intellectual Property Delivers Value?”. This discusses the different ways in which IP adds value to businesses, when such value is added (buying and selling, fundraising, licensing, litigation, insolvency and tax), what the determinants of IP value are (such matters as duration of protection, geographical extent of protection and so on), methods of valuing IP (such as market comparables, cost, income and option-based methods), and reporting and accounting for IP.

The book not only provides a good introduction to the subject, but also is impressive in the breadth of its coverage. Perhaps because I was fairly familiar with the subject matter of the first two parts, I was particularly interested in part three. This centres on the paradox that IP increasingly determines the value of companies (in 1975 intangible assets represented just 17% of the value of S&P500 companies, but by 2015 the figure was 84%), yet IP rarely appears on their balance sheets (unless a company is acquired, in which case IP value that did not appear on the acquired company’s balance sheet can magically appear on the acquirer’s balance sheet as “goodwill”). In essence, this is because of the difficulty in valuing IP in a robust manner, although progress is being made on this front.      

I have a few minor quibbles: I was disappointed to find no mention of performers’ rights, there are a couple of legal errors (e.g. footnote 13 on page 87 wrongly states that parts of the Copyright and Rights in Performances (Quotation and Parody) Regulations 2014 were quashed in the BASCA case, whereas in fact it was the Copyright and Rights in Performances (Personal Copies for Private Use) Regulations 2014) and there are a number of typographical errors in some of the early chapters. More significantly, I would question the treatment of designs: I do not think that it is helpful to discuss designs together with trade marks, and it is important to differentiate between the different IP rights that are in play: registered designs, which are true monopolies; unregistered design rights, which are short-term rights that are only infringed by copying; and full-term copyrights. As the authors note, however, the economics of designs is presently an under-researched field. No doubt they will have more to say on this subject in the next edition.  

Bibliographic data: Oxford University Press, June 2016, xvii + 280 pages, ISBN 978-0-19-873626-4. Price: £75 (paperback). Rupture factor: modest.

Book Review: Le Droit Du Design

This slim and informative book is the eighth in the intelle©tual p®operty series from the Law Faculty at the University of Geneva. It collects the papers submitted for the intellectual property conference held on 5 February 2015:

- New Trends in Industrial Design and Development Law at the International Level (Marcus Höpperger); 

- The Hague System Today and Tomorrow (Grégoire Bisson) 

- The assessment of the individual character of Community design in the practice of OHIM (Carlo Rusconi) 

- The protection of designs in Swiss law: assessment of the prospects and LDes (Nathalie Tissot); 

- Design Law in the Apple vs Samsung Dispute: Lessons and Prospects (David Stone) 

- Protecting Designs Globally: a Practitioner's Point of View (Michael Ritscher); 

- Design practice of law in the watch and jewellery (Bertrand Siffert).

Regrettably this Kat can only speak and read French un petit peu, so with apologies to messrs Rusconi, Tissot, Siffert and his former French teachers, this review covers the English chapters only.

New Trends in Industrial Design and Development Law at the International Level (Marcus Höpperger)

International industrial design laws are notoriously diverse, both in terms of the substantive conditions required for protection and the procedures for obtaining registered protection. Hopperger argues that despite this, "there are areas of industrial design law that lend themselves to a more common and harmonised approach among member states." The paper includes a useful summary of the proposed changes that would be put into place by the draft Design Law Treaty.

The Hague System Today and Tomorrow (Grégoire Bisson) 

Bisson says that the Hague System is in the midst of a period of 'spectacular' development following the ratification of the Geneva (1999) Act by the Republic of Korea, Japan and the USA. All three nations joined the Hague System as Contracting Parties whose Office is an Examining Offices. This means, Bisson says, that users of the Hague System will increasingly have to bear in mind that "someone at the other end of the international registration process will be appreciating their design and its disclosure from a substantive point of view." The author acknowledges that applying for registrations through the Hague System has become more complex, but argues this is a "small price to pay" for single pass access to protection in over 80 countries.

Design Law in the Apple vs Samsung Dispute: Lessons and Prospects (David Stone) 

This helpful case note comes from a partner in the intellectual property department at Simmons & Simmons. The chapter focuses on the EU decisions related to Apple's 2004 Registered Community Design for a handheld computer (RCD 181607-0001). It is an excellent primer on the infringement proceedings at OHIM and the German, Dutch, Spanish and UK national courts. The author is not shy of offering constructive criticism where he feels that the courts erred in their reasoning. 

Protecting Designs Globally: a Practitioner's Point of View (Michael Ritscher)

The author shares the insights accumulated from 20 years working in-house for the high-end Swiss furniture manufacturer Vitra. This thoughtful piece asks whether existing legal frameworks and practices provide adequate protection for the aesthetic element of product designs. Ritscher also questions whether academics and judges adequately consider the overlap between design rights and other forms of IP protection (particularly trade marks and copyright). 

I would recommend this book to any practitioner or student wishing to bring themselves up to date with recent developments in international industrial design law. A 10% discount is available to IPKat readers on request to Patrick.detraz@schulthess.com.

JACQUES DE WERRA (ed.), Le Droit de Design / Design Law, collection, p®opriété intelle©tuelle - intelle©tual p®operty, Geneva / Zurich 2015, Schulthess Éditions Romandes.

Book Review: European Patent Litigation in the Shadow of the Unified Patent Court

There is a perverse incentive in research that it is not in a scholar's interests for a problem to be solved. If your pet problem is solved, what do you do next? Therefore, publishing a UK book on European patent litigation in the year of the Brexit vote can be surprisingly fortuitous and lead to interesting reading. Brexit adds an (un)expected plot twist to the development of European patent litigation, and Luke McDonagh's new book is possibly the prequel to whatever-comes-next.

The book has three main chapters; one chapter looks at European patent litigation under the European Patent Convention, and includes a comparative analysis of key jurisdictions. Another chapter examines the UPC and Unitary Patent reform packages. The book provides a lot of practical information in its examination of litigation in the UK, Germany, France and the Netherlands.

In Chapter 4, the author reports on a survey of the UP/UPC-interested legal and business communities. Interviewees were predominately UK-focused. Here a discussion on renewal fees, perhaps one of the more interesting economic levers of the UP, suggests that the community prefers renewal fees to be set at the equivalent of three member states existing fees (namely the UK, Germany and France.) However, this view was not unanimous, as one interview noted that, "her company 'would like to see a higher renewal fee because higher fees discourage spurious patenting.'" [Merpel thinks this interviewee is very economics-friendly.]  Other sections address trolls and forum shopping, the opt-out and SMEs.

At the time of writing, the UK IPO has not changed its stance on the UPC. Time will tell.

European Patent Litigation in the Shadow of the Unified Patent Court, by McDonagh, Luke.  Cheltenham: Edward Elgar Publishing, 2016. ISBN: 978 1 78471 473 4. Available here for £70. Rupture factor: Low, a back-friendly 200 pages.

Disclosure: In my previous role at the UK IPO, I was involved in the underlying research project discussed in the final chapter.