Modern Intellectual Property Law

Jonathan Galloway, Daithí Mac Síthigh, Andrew Griffiths, Aisling McMahon

• Publisher: Routledge
• Year: 2010
• Print ISBN: 9780415556712
• eBook ISBN: 9781135267698
• Edition: 3
• Topic: Law
• Subtopic: Intellectual Property Law
• Index: Law

Modern Intellectual Property Law combines coverage of each intellectual property right granted for creations of the mind into a thoughtful, unified textbook. Deconstructing the fundamental topics into short, clear sections separated by subheadings throughout, Colston and Galloway's text is the ideal student companion to this intriguing area of the law.

This new edition has been completely revised to bring it up to date with the latest debate and changes to the law. All significant recent developments are covered including the continuing controversy over patents for computer-implemented inventions and biotechnological inventions, the House of Lords' developments of patent law, the ECJ jurisprudence relating to trade mark dilution and comparative advertising, as well as the database right, and international efforts to reconcile copyright with peer-to-peer file sharing. This text also discusses the ongoing effort to achieve an appropriate balance between intellectual property and competition law in order to protect market competition while retaining key incentives to drive the process of innovation.

Written for students, this accessible and comprehensive textbook provides the perfect starting point for anyone studying intellectual property law in the UK.

Chapter 1
Introduction

Chapter Contents

Introduction 2

1.1 Protection for Ideas 3

1.2 Means for Protecting Ideas 3

1.3 Sources of Intellectual Property Law 7

1.4 Intellectual Property Rights and Free Movement 13

1.5 Intellectual Property and Competition Law and Policy 20

1.6 Other Impacts of EU Law on National Intellectual Property Laws 29

1.7 Harmonisation Directives and EU-wide Rights 29

Introduction

The enduring fascination for the student of intellectual property law is that it has something for everyone: enough to intrigue philosopher, student of ethics, scientist, politician, artist, entertainer, economist and businessman. Intellectual property law’s influence extends to every aspect of human life. The markings on a can of COCA-COLA, the rights in the books, music, pictures, drama, films and electronic information sources we all use, even the shape of our pen, architecture and the science behind the latest attempt on space exploration all form its subject matter: extending from science to art.

Intellectual property is all about the results of human creativity. Its subject matter is formed from new ideas generated by man. New ideas may be applied in as many ways as the human mind can conceive. Their application to human needs and desires can be of considerable benefit to mankind. New ideas can be embodied in familiar things such as books, music and art, in technical machinery and processes, in designs for household objects and for commercial ventures, and in all other sources of information. The list is infinite, as is the potential for discovery of new means of expression. Once applied to human needs, the value of ideas ranges from the industrial and commercial to the world of literature, art and design, contributing to technological, economic, social and cultural progress. Protecting the development and application of new ideas aids realisation of the benefits which can be derived from them.

Intellectual property law is the means used to provide this protection. It comprises a discrete body of rights (whether statutory, tortious or equitable) which are applied to the many and varied forms in which the human intellect expresses itself. The common feature that lies behind each of the intellectual property rights is that they allow right owners to stop others taking their creations. This preserves the integrity of, and reserves the exploitation and presentation of, those creations for the right owners.

Intellectual property law has a long history. The Romans used marks on pottery to denote its maker and a Venetian law of 1474 established 10-year privileges to those inventing new machines, for example. The industrial and transport revolutions, which saw an explosion in new ideas and new means with which to spread their benefits, gave the law increased significance. The commercial and information age has only served to enhance the importance of intellectual property law.

Broadly, intellectual property law can be divided into three parts. The first part, protection for industrial property, encompasses patents for inventions and protection for confidential information (trade secrets). The distinctive characteristic of this protection is that the very concept or idea underlying the invention or information is legally ‘fenced’, preventing others from using it. Consequently, this part of intellectual property might be regarded as encompassing creation. Secondly, there is protection for form and appearance, through copyright, design and moral rights. Here the author’s idea or concept remains in a public domain; it is only the form in which it is encapsulated that is protected. This is protection for expression. Thirdly, the law includes protection for reputation, through the tort of passing off and trade mark registration. This third part might be regarded as protection for image. It provides a fascinating area of study as modern concerns for image, both personal and commercial, push the boundaries of intellectual property ever wider.

In addition, common themes relating to the nature of, and justification for, intellectual property rights, as well as the enforcement of the rights, require examination. First, it is necessary to consider what comprises the subject matter of intellectual property. Secondly, it is necessary to consider the way in which the law achieves its aims with respect to this subject matter and why it should do so.

1.1 Protection for Ideas

It is helpful to begin a study of this branch of law by contemplating the development of an idea, from its genesis to production of a desirable commodity. Most importantly, it is necessary to ask what interests such an enterprise will create, what risks it might engender and whom the outcome will concern.

The conception and development of a new idea may require the expenditure of considerable time, effort and money, regardless of whether it is either a solution to a technical problem, or aesthetic in nature. Even if the idea was intended purely for personal use, that expenditure may need recompense. The creator of a work of art, in the sense of literature, drama, music or art, also has an interest in the reputation engendered by the work and in the integrity of its performance or exhibition. Exploiting an idea commercially, as a product, process, or service, or presenting a work to the public, can secure such recompense, reputation and possibly profit. However, if success is uncertain, embarking on exploitation may engender financial risk. The creator is also prey to the risk of being copied if the idea is sold, displayed or used in circumstances where others can see it. Copying would undermine the reputation, recompense and profit it is hoped will be gained by commercial exploitation or presentation. It might also undermine the creator’s commercial or artistic reputation if the copy imitates his trade marks or signs, or is of inferior quality. However, the idea may well be one to which the public should have access, perhaps where it is a revolutionary educational, technical or medical advance, or a work of art.

The creator of an idea, and the manufacturer of its embodiment, if different persons, have an interest in gaining reward for their efforts and expenditure and in making a profit from the enterprise. This is only possible if there is protection against the risk of imitation. It is at this point that the law can step in to provide that protection in some form. However, protection restricts the activities of those with an interest in access to, and use of, the idea’s embodiment, which must be balanced against the interests of both creator and manufacturer.

1.2 Means for Protecting Ideas

Accepting, for the moment, that some measure of protection is desirable, it remains to consider the ways in which this may be done. Potentially, the law could intervene at one or more of several points in the progress from initial idea to product on the market, or work in the public eye, which is where the danger of imitation lies. Protection can be given to the idea itself, as an idea, or by granting rights over the product or work embodying the idea. Subsequently, the law could intervene at the point where the product reaches the market, or when the work reaches the public domain, by protecting the reputation with which it is marketed (by means of advertising themes, names, logos, slogans and the like). Alternatively, protection could be delayed until competition which is unfair takes place.

1.2.1 Secrecy

Keeping a new idea secret is the most complete form of protection possible, provided that the secrecy can be maintained after commercial production and marketing. Some notable products are protected in this way, such as the recipe for the children’s toy PLASTICINE. Sometimes, physical protection is possible, through anti-copying techniques applied to electronic products, for example. It may be possible to preserve the secrecy of a process even after it is put into use. However, the disadvantage of secrecy is that disassembly which uncovers underlying design and engineering features of a product released onto the market will reveal its secrets. Moreover, physical protection is always prey to the danger that the means for avoiding it will quickly be discovered. Where secrecy can be maintained, however, there is statutory support for anti-copying measures adopted to protect copyright works in ss 296, 296ZA and 296ZB of the Copyright, Designs and Patents Act 1988. The action for breach of confidence supports secrecy where this is the chosen method of protection.

1.2.2 Exclusive rights

To protect all ideas would be to remove far too much of the raw material of industrial, commercial, educational and cultural development from the public domain. Very broadly, the model adopted has been one of exclusive proprietary rights, with one exception – the action for breach of confidence. The consequence of this is that intellectual property can be dealt with as other property: it can be assigned, licensed, mortgaged and bequeathed. In providing any protection at all for a creator of an idea, delicate balances must be drawn between the legitimate interests of creator, entrepreneur, competitor, consumer and the public. Intellectual property right owners have a natural right to their creations and an interest in a just reward. The public also has an interest in access to, and use of, the intellectual property. Consumers have an interest in the preservation of fair competition.

Beyond this, it is difficult to generalise about intellectual property rights, as intellectual property law actually comprises a bundle of diverse rights. Each is of differing scope as the correct balance between competing interests in different types of subject matter is sought. Drawing such balances has traditionally been seen as a question for the legislature, often after lobbying from, and consultation with, interest groups, such as the Federation Against Software Theft. Consequently, most intellectual property law is statutory and the result of political and economic history.

A brief description of the varied rights follows.

1.2.2.1 Patents

A patent is a monopoly which is granted for an invention after application to, and examination for patentability by, the Patent Office and lasts for a maximum of 20 years. To be patentable, an invention must be new, show an inventive step, be industrially applicable and not fall into one of the excluded categories of invention. The patent even protects its owner against an independent creator of the same invention who makes, keeps or uses the invention.

1.2.2.2 Copyright

Copyright subsists automatically on the creation of a work; no application is needed, nor do any formalities apply. Copyright works comprise original literary, dramatic, musical and artistic works: sound recordings, films, broadcasts and the typographical layout of published editions. Additionally, a work must qualify for protection in the UK. It ...

Table of contents

• Outline Contents
• Detailed Contents
• Preface
• Table of cases
• Table of statutes
• Table of statutory instruments
• Table of EU legislation
• Table of treaties and conventions
• Useful websites
• Chapter 1 Introduction
• Chapter 2 Justification
• Chapter 3 The Patent
• Chapter 4 Patentable Subject Matter
• Chapter 5 Patentable Inventions
• Chapter 6 Infringement, Validity and Revocation
• Chapter 7 Breach of Confidence
• Chapter 8 Copyright Principles, Copyright Works and Related Rights
• Chapter 9 The Subsistence and Substance of Copyright and Related Rights
• Chapter 10 Infringement of Copyright and Defences
• Chapter 11 Employing Copyright: Permitted Copyright uses, Dealings in Works and Competition
• Chapter 12 Moral Rights
• Chapter 13 Design Rights
• Chapter 14 Passing Off
• Chapter 15 Registered Trade Marks
• Chapter 16 Trade Mark Infringement and Challenges to Trade Marks
• Chapter 17 Property and Dealings in Marks and Domain Name Disputes
• Chapter 18 Image Protection
• Chapter 19 Enforcement
• Index