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Intellectual Property Law Across Jurisdictions Fail 21st Century Innovation, Science, Technology and the Arts

If you believe in the necessity for incentives to promote innovation, and that such incentives need to be carefully balanced between innovators, their competitors and we consumers, then intellectual property laws (IP) across the world fail us. Though these laws have certainly not failed Intellectual Property lawyers who have made a fortune out of their intricacy and doctrinal complexity “a merry litigious bonanza” as 1Professor WR Cornish termed it. So too have generations of IP academics with abstruse tenure articles and subsequently the even more convoluted PhD student theses they supervised. They, or I should say we, are however, not to blame. Intellectual Property law fundamental concepts have hardly moved for 120 years. If we are truly progressing towards an information-based society, rather than one based on land, labour and capital, then it is despite IP law rather than because of it.

Cornish was the first, or one of the first, anywhere in the world to write his 1980 text dealing with all the causes of action nowadays comprising intellectual property and exploring their commonality. Before that we had discreet texts on patents or trademarks, or copyright, etcetera

Why Listen To Me

I make that assertion after 40 years as an Intellectual Property professor, practitioner and Intellectual Property law reformer in Australia, New Zealand and Hong Kong, China. I was appointed by the Prime Minister as a member of the Australian Copyright Law Review Committee for two references and by the Governor of Western Australia as Chair of the West Australian Law Reform Commission. I was a member of the Law Reform Commission Subcommittee on Copyright and that on Privacy and Breach of Confidence in Hong Kong, China. I’m a Mediator, Arbitrator and Domain Name Neutral for the World Intellectual Property Organisation WIPO. I’ve worked for major international IP law firms like Baker and McKenzie and Deacons. I’ve written twelve books and over 100 articles on Intellectual Property – see here.

Whose Barrow am I Pushing

I am not beholden to any particular interest group, right holders, corporations, consumers, political action groups. I am merely addressing the fundamental mechanisms by which intellectual property laws function. Failed mechanisms. Most experienced IP lawyers agree but they don’t see the point of, or it’s not in their interest to say so. Examples of these failures follow later and in turn, so does a more detailed explanation.

No One Country Can Fix This

No one country can fix this as it requires International renegotiation of a number of treaties, principally the TRIPS agreement of the World Trade Organisation (WTO). A body which is in terminal decline due to the Trump administration refusing to appoint judges to the appellate tribunal of the WTO. At present there isn’t the will or even the recognition of the necessity for reform. This website is intended to go some distance towards creating a case for that necessity.

What I am Proposing

The major thrust of the argument here is that difficult cases in intellectual property are not always or even often solved by the tribunal applying the intricate doctrines it details in its judgement. Rather the tribunal decides where it’s sympathy lies by asking whether the defendant has, without adding substantial or enough of its own input, taken the product of the labour, skill and effort (sometimes investment) of the plaintiff. Has it slavishly imitated, copied or misappropriated the plaintiff’s information product. But misappropriation protection is only proportionate to what the plaintiff has added and the defendant taken. This was concisely and presciently stated in the nineteenth century English House of Lords case Kenrick v Lawrence (1890) LR 25 QBD 99.

The court said if protection was to be afforded to something very simple in design that protection would be limited to the precise form and to infringe the defendant would have to almost exactly duplicate it in its entirety. As protected subject matter becomes more complex less and less precise duplication would be required. In effect they were stating the modern law on substantial part in copyright infringement doctrine. That largely turns on the originality of the part taken which brings us full circle back to what the court thinks of the ethical merits of the case.

This type of analysis, however, is rarely articulated. Complex doctrine is given as the reason for the result. But at base these complex doctrines lend themselves to the discretion to decide on the basis of the above. They have to as the complex doctrines do not without more give an answer to a case in point. It would be much more predictable and likely to attract the support of ordinary people if this was articulated and in fact became the principal determinant or mechanism of large parts of intellectual property. Embracing such a misappropriation or unfair competition mechanism would be unlikely to expand or restrict the present-day scope of intellectual property. That’s because it is already the unstated mainstay in determining many present day difficult IP cases.

What I am suggesting is that much if not all contemporary intellectual property causes of action could be protected under a general rubric of slavish imitation or misappropriation or unfair competition. I think it would be preferable to abolish much of the present day intellectual property regime but there’s no reason why a general law of misappropriation could not stand beside the present day regime if the former is regarded as too radical. If conceived and drafted properly there’s no reason why this would increase or decrease the scope of present-day intellectual property protection and access to information.

I started to write on this much maligned topic of misappropriation and unfair competition nearly 40 years ago under the urging of Professor WR Cornish (LSE later Cambridge) who disagreed at the time and also at the urging of the late Professor James Lahore (Melbourne University) who did agree.

Professor James Lahore, The Herchel Smith Lecture 1992: Intellectual Property Rights and Unfair Copying: Old Concepts, New Ideas. 1992, 14(12), 428-433 European Intellectual Property Review 2020 Sweet & Maxwell and its Contributors

 

“A new tort of unfair competition would also mean that the courts could adapt more quickly to the needs arising from the rapid development of new technologies — all of which require some protection from unfair exploitation in their growth period in particular. At present far too much time is expended in determining copyright disputes on narrow and artificial grounds of interpretation. Does computer software fall within the meaning of a “literary work”? Is a film frame a photograph or a part of a film? Is a videogram a record or a film? It cannot be in industry”s interest that issues of great commercial importance should rest on technicalities more characteristic of the application of a Taxes Act. A tort or unfair competition would be a useful restraint against plagiarism and would go some way in meeting the needs of new technologies and also in balancing the requirements of their users. It would not prevent the enactment of specific enactments.”

“What the Australian experience does suggest is that an action directed against certain conduct, whether it be described as unfair competition or unfair copying or in some other way, can develop effectively within a common law system to provide what is a valuable, flexible and cost-effective remedy as a supplement to those traditional remedies for infringement of intellectual property rights.

My point, simply, is that to recognise and develop a general law of unfair copying is a preferable method for dealing with many of the claims for protection I have referred to this evening, rather than by the creation of an ever-increasing range of property rights within or analogous to traditional intellectual property. As a learned commentator has written:

‘With the dawning of the information age a whole panoply of interests including character merchandisers and sponsors are pressing for the extension of legal protection for an ever-increasing range of information-related “products”.
How to articulate the mechanism to balance a right to protect labour, skill and effort against a right of access to information creates great difficulties but may not be insoluble once a basis for protection outside the traditional concept of property is devised. (Professor Michael Pendleton, “Character Merchandising and the Proper Scope of Intellectual Property”, [1990] Australian Intellectual Property Journal 242.)‘

I suggest that the task of establishing that basis for protection is one which must now be urgently addressed”

 

So far as I am aware Jim never resiled from that opinion and I sat on two Copyright Law Review Committee references with him. Despite that encouragement my writing didn’t go far as I didn’t really trust my insights till now. I largely stuck to discrete small issues within a cause of action like everyone else. My writing which follows is dated, much of it pre-digital, but I believe the principal concepts remain the same.

See:

  • The Evolving law of Unfair Competition, 1982, Law Lecturers for Practitioners, Hong Kong Law Journal, 76.
  • Intellectual Property, Information Based Society and a New International Economic Order – the Policy Options? 1985, 2 EIPR 31.
  • Character Merchandising and the Proper Scope of Intellectual Property, 1990, Intellectual Property Journal 242
  • Misappropriation Remedies – Rendering Intellectual Property Law Redundant? 5th Annual Intellectual Property Teachers Association, University of Queensland, St Lucia, Brisbane, 4-6 February 1996.
  • Intellectual Property Laws Inability to Cope Generally, Not Merely with Web Based Works –Where to From Here 10th International World Wide Web Conference, Hong Kong Exhibition Centre, 4 May 2001.
  • Challenging Laws Traditional Refusal to Protect Information per se for Fear of Stifling Innovation, Competition and Access: an East Asian Perspective, Intellectual Property in an Asian Context: Challenges, Demands of the Information economy, National University of Singapore, 14 Sept, 2001.
  • Balancing Competing Interests in Information Products; a Conceptual Rethink, 2005, Information & Communications Technology Law Vol. 14, No. 3, p 241, Routledge.
  • Honest Copying – the Gist of Intellectual Property, in Law Lectures for Practitioners 2006, (2006) Hong Kong Law Journal Ltd.
  • Creating a Vocabulary and a Conceptual Ordering Device for Conferring Appropriate Rights in Information: the Challenge for Law in Proceedings of Fifth Round Table on Semiotics PENN STATE, Roberta Kevelson, Editor.

Some Examples of Major Failures in the Conventional Treaty Based Mechanism of Intellectual Property Follow

Trademarks

Trademark law continues to use the mechanism of consumer protection though in fact trademark law historically predated consumer protection. Deception and confusion of the public are key concepts in trademark law both in order to gain registration, to prove infringement and to remove an existing registration. But trademark owners have no interest in consumer protection. They are interested in stopping other traders from using their marks. Asking whether the public are confused or deceived rather than whether a mark is misappropriated or diluted (an extension) by another trader muddies the waters considerably. The interests which need to be balanced are obscured. They are largely competitor interests rather than provider and consumer.

See:

  • Excising Consumer Protection – the Key to Trade Mark Law Reform, 1992, Australian Intellectual Property Journal 110.

Copyright

To get copyright protection you have to have something, say the treaties, which is original. There is no, or minimal statutory definition in most jurisdictions. This is an invitation to courts to decide what should and should not be protected. That’s okay but increasingly courts are inclined to restrict protection chiefly by denying protection to the products of labour skill and effort, so called, ‘sweat of the brow’ copyright.

While recognition of the need to restrict what is protected by copyright is desirable, there are better ways of achieving it than denying sweat of the brow copyright works. An extended defence to infringement would accomplish the same result. In other words has the defendant added sufficiently to what the plaintiff has done to be said to have a new original work in it’s hands.

Infringement turns on taking a substantial part of a copyright work. This substantial part concept is again largely discretionary as courts have defined it as qualitative rather than quantitative taking. Whether something is a substantial taking in a qualitative sense is often said to depend upon the originality of what is taken. So both originality and substantial part revolve around each other and both are largely within the subjective discretion of the court. So judicial policy is crucial to the exercise of these key discretions. But this, with notable exceptions, is rarely articulated in the case law. Where it is articulated the courts use the language of misappropriation. It would be so much easier to be upfront about this.

See:

  • Reforming Copyright for the Digital Age – Everyone’s Horse on the Wrong Course, 1997, Vol 4 No 4 E Law Journal, Murdoch University.
  • The Danger of Protecting Too Much – A Comparative Analysis of Aspects of Intellectual Property in Hong Kong Britain and the United States, 2000, EIPR 69
  • The Digital Divide – International Enforcement of Digital Lockup in Journal of Information Law & Technology, Vol 1, 2006, ISSN: 1361-4169

Patents

Non-obviousness is a key requirement for patentability. But unlike the other key requirement of novelty, non-obviousness does not lend itself to any qualitative assessment but instead leaves an inherently subjective assessment to the patent office or court.

Interpretation of patent claims for validity and infringement purposes.

Nonliteral taking is of the essence of a problematic patent case and the court’s approach in most jurisdictions is quasi-mystical, think equivalents or taking the pith and marrow. The best method of interpreting non-literal patent cases is a functional purposive approach. If the defendant’s variant made no functional difference to the way the patented invention works before the priority date of the claims then you hypothetically ask the appropriate person skilled in the art whether the patentee would have intended to exclude the defendant’s variant or whether it was a drafting oversight. In Catnic v Hill & Smith, the case which ushered in the all-pervasive purposive construction in Anglo commonwealth jurisdictions, the word vertically was held to comprehend 84 degrees on this basis. Misappropriation concepts have a role to play in patent law.

See:

  • Catnic-Signpost to Where?, 1982, 3 European Intellectual Property Review (EIPR), 79.
  • Presentation on Purposive Analysis of Patents. Invited and organized by Justice Robert French (later Chief Justice of the High Court of Australia) at Federal Court Judges conference room, Perth. Sole presenter. June 2005.
  • When Patents Mean Different Things in Different Jurisdictions, “Intellectual Property and Information Wealth’, Volume Two, Peter K Yu (ed) Praeger (2007).

Trade Secrets

Information partially in the public domain needs clarification that it is protectable and in what circumstances.

Information not communicated but acquired by covert acquisition needs clarification that it is protectable and in what circumstances.

Third-party recipients of the information should be bound by confidential information but the area is murky and requires clarification.

Trade secrets protection is tellingly included in the unfair competition section of TRIPs. That suggests that trade secrets and indeed much of confidentiality could be protected under a broad principle of misappropriation.

See:

  • Chapter 6 Trade Secrets, LAW OF INTELLECTUAL AND INDUSTRIAL PROPERTY IN HONG KONG – A Guide to Copyright, Trade Marks, Patents, Registered Designs and Other Protected Commercial Information, (1984) Butterworths, London. 536 pages. Foreword by Sir Denys Roberts, Chief Justice of Hong Kong.

Related Sui Generis Rights

  • Silicon chip topography or circuit layouts
  • Plant varieties
  • Further regimes akin to intellectual property like geographic indicators will continue to grow.
  • The growth of these new regimes could be limited and curtailed by including remedies akin to misappropriation.