Parody and damages for wrongful oppositions: two calls for articles

JIPLP's Readers and Writers Linked-In group is a forum for the exchange of ideas by contributors, readers and subscribers to the Journal of Intellectual Property Law & Practice. Right now it has 272 members and it has already been the source from which a number of articles have been inspired, commissioned and ultimately published.

In the past few days, suggestions for two articles have been posted on this group. One relates to parody as a defence: both copyright and trade mark law may be prima facie infringed unless a defence of parody is raised, yet the parameters of that defence in respect of those two bodies of law are not usually coterminous. So what happens when a figurative trade mark or logo is parodied, and how does one advise a client in such a case?

The other relates to the possibility of securing damages for losses caused by a bad-faith trade mark opposition. This has been recognised by the Civil Division of the Supreme Court of Panama -- but might it be available elsewhere, for bad faith oppositions to patents as well?

If you are interested in writing on either of these subjects, do let JIPLP Commissioning Editor Sarah Harris know, by email to sarah.harris@oup.com.

You can check out the JIPLP Readers and Writers Group here.

Copyright articles in search of an author

The Journal of Intellectual Property Law & Practice is currently hoping to receive some potential contributions in the area of copyright. Here is a non-exclusive selection of topics which we would be particularly happy to see covered:

- Online copyright infringements and private international law [TAKEN]

- Transformative uses under EU copyright law [TAKEN]

- Copyright enforcement: the case of injunctions [TAKEN]

- Hyperlinking, framing, embedding and ... copyright? [TAKEN]

- Does copyright subsist in playlists? [TAKEN]

- Help: I need some evidence! But what is evidence for copyright policy? [TAKEN]

- Burden of proof and the significance of legal presumptions in copyright litigation [TAKEN]

If you would like to tackle one of these subjects yourself or together with a colleague, either as it stands or with some variation, please send an email to eleonorarosati@gmail.com. And here, in the event that you've decided to write on these or indeed other topics, is some guidance for authors of articles submitted to JIPLP.

Why not have a tilt at writing for JIPLP?

Here are some more topics on which JIPLP would dearly like to receive articles:

• Problems relating to proof of foreign intellectual property rights in domestic infringement proceedings and/or in Office actions;
  
  
• Initial interest confusion as a ground on which an action for trade mark infringement may be based;
  
  
• Practical implications in intellectual property for the doctrine of freedom of commercial speech;
  
  
• Strategic implications of "trade fair" injunctions;
  
  
• Whatever happened to patent marking?
  
  
• Practical guidance on securing geographical indication protection in the European Union;
  
  
• Trade mark and trade name disputes: are shared market surveys (i) feasible, (ii) desirable?
  
  
• Calculation of compensation where a defendant's business has been harmed by an interim injunction that should not have been ordered;
  
  
• Best practice in negotiating a co-existence agreement with a competitor with a not-too-similar brand r trade name;

If you think that you would be suitably qualified to write on one of these topics, (i) check the journal's Instructions for Authors and consider whether you can manage to keep within their parameters, then (ii) on the understanding that you are comfortable with the Instructions for Authors, please email Sarah Harris (Commissioning Editor), who will deal with you on all logistical and practical issues arising from the submission and publication of your text.

Articles in search of an author

Here's another selection of subjects for which JIPLP would like to receive articles for publication. This list is emphatically not an exclusive one, so regular topics are welcome too, but readers have expressed interest in topics on this list over the past year and it would be good to match JIPLP's content as closely as possible with the interests and expectations of its readership:

1. Dealing with counterfeit and IP-infringing goods in transit between manufacturer and consignee, in contexts other than that of the European Union;

2. Liability of landlords for infringing activities that take place within their premises; [taken]

3. The acquisition and enforcement of IP rights in public domain historical characters; [taken]

4. General guidance for civil IP lawyers on the intersection of civil and criminal IP litigation;

5. A private practitioner's perspective on best practice in management of client conflicts in an IP practice;

6. Securitisation of IP rights in a time of recession: points to consider;

7. The US Bayh-Dole legislation -- an introduction for non-US businesses;

8. The creation of copyright-protected art works using digital technologies -- key issues; [UK version now taken]

9. The litigation of intellectual property issues before the European Court of Human Rights;

10. The use of musicologists for the purpose of furnishing expert evidence in musical copyright infringement trials.[taken]

For the sake of smooth administration, please bear in mind that the Commissioning Editor is Sarah Harris, to whom all inquiries should be directed by email, here, if you can't find an answer to your question on JIPLP's Instructions for authors page here. If you want to see what JIPLP articles look like and don't have access to one, you can get a sample issue of JIPLP here.

Also, while JIPLP likes to encourage young authors, the journal's staff hate to see prospective contributors disappointed and try to prevent any waste of human capital in terms of time, effort and emotional commitment to lost causes.  Therefore we ask you to bear in mind the following:

1. If you are a law student, you may have some valuable opinions to offer -- but they probably won't be supported by the sort of professional or commercial experience that readers of a journal of law and practice generally expect and appreciate.  Law students' articles are rarely accepted for publication since they are usually rejected at the peer review stage. 

2. If you are writing about a jurisdiction which is not your own, bear in mind that IP practitioners and owners in that country probably have access to far more materials and general information than you do. It is strongly recommended that you show your draft to an IP expert in that country before submitting it for publication so that lacunae can be identified and addressed. 

3. JIPLP is getting increasingly tough with submitted manuscripts that appear to have been poorly proof-read, or not proof-read at all, by their authors.  Peer reviewers often object to having to review error-strewn submissions, which are also difficult and time-consuming to edit.

4. Please don't garnish submitted manuscripts with stylistic devices, dingbats and other features which some poor soul has to remove at a later stage.

Authors wanted -- and a word on co-authors

Here follows a shortlist of articles in search of authors. Some are on new topics; others have been listed before and either (i) were taken up by authors who subsequently found that they could not commit themselves to writing them or (ii) were not taken up at all.

* Issues arising from the need to dispose of infringing stock;

* Roving injunctions and John Doe orders against unidentifiable defendants in IP infringement proceedings;

* Potential liability of landlords and lawful occupants of premises for infringements that take place on them -- how to establish it and how to avoid it;

* Good practice in dealing with client complaints arising from professional services in intellectual property -- can a firm be wise before the event?

* The balance between EU legislative and judicial powers -- who gets to decide what Europe's IP laws really are?

* Best strategy for an IP-backed business which is threatened by multiple small-scale infringers.

As before, if you feel that you'd like the chance to write on one of these topics, please let me know by emailing me. Before you contact me, you may want to check out the guidance for authors here, so see what we expect.

Monkeying around with JIPLP submissions
can lead to disappointment

While on the subject of authors, I'd like to raise what is probably a delicate issue. 

From time to time this journal (in common with many others) receives submissions from two named authors, one of whom is a senior member of a law firm and the other of whom is a very junior lawyer, or sometimes even a trainee.  When editing the article, the degree of contribution of each is often sorely apparent. 

Can I say just this: it is in general preferable for the senior contributor to write the piece and for the junior one to proof and correct it, rather than for the junior to write it and the senior to put it right. This is because senior IP practitioners tend to know their subject better, while their junior assistants are generally more conscientious background researchers and proof-readers.

Still more articles in search of an author

Here is another list of topics on which JIPLP would be delighted to receive articles. If any one of them appeals to you, please email me here and let me know. As usual, general guidance for contributors can be found on the official JIPLP website here.

* Proposals to bring fashion design within the ambit of United States law -- what will they mean to designers, manufacturers, retailers and consumers? [Taken]

* The cases for and against requiring foreign applicants for registered rights to instruct a local professional representative [Taken];

* Issues arising from the need to dispose of infringing stock;

* Roving injunctions and John Doe orders against unidentifiable defendants in IP infringement proceedings;

* Potential liability of landlords and lawful occupants of premises for infringements that take place on them -- how to establish it and how to avoid it;

* When can a well-known person monopolise his surname in Europe? A simple flowchart of the court's logic in Case C-51/09 P Barbara Becker v Harman International, OHIM [Taken].

* Guarding against a failed right -- if, as some have said, the sui generis database right in Europe will be abolished -- what precautions should rights owners take?

* Initiating IP litigation in India: points for foreign plaintiffs to ponder [there's a mirror image article here too, on how best an Indian defendant can handle an action brought against it in India by a foreign litigant];

* The moral right of an employee of a professional firm to be known and recognised as the author of work that is signed off and sent out by a partner or manager of the firm [Taken];

* But what legal means, if any, can a person who is known to the public only by a pseudonym enforce the right to control or prohibit the unauthorised publication of that person's real name?

More articles in search of an author

This weblog's previous request for volunteers to tackle articles (see "Articles in Search of an Author", here) was very well received, with all ten articles being matched to authors within a remarkable 48 hours. Some of the articles have since been received and are now undergoing peer review.

Here's another, rather shorter list, of further articles on which JIPLP would like to publish articles. As before, anyone wishing to write on one of these topics should email me, whether to reserve the topic, to seek further particulars or to make a counter-proposal.

* Trade marks and the blind: the special significance of aural and haptic marks [one reader, who is currently very busy, is willing to help anyone who does take this topic -- but only from September];

* A comparative review of "three strikes" legislation in the small number of countries which have opted for it, to examine whether and, if so, to what extent, legislative expectations have been fulfilled [Taken];

* TSG ("Traditional speciality guaranteed") registration in Europe: legal basis and parameters of exploitation [Taken];

* Points to consider when suing an IP licensee, when determining whether to proceed for breach of the licence agreement or for infringement of the infringed right(s) [Taken];

* Availability and assessment of damages for loss of opportunity to license intellectual property [Taken];

* The author's moral right to withdraw a work (droit de repentir): how does it work and what are its consequences in commerce? [Taken];

* Declarations of non-infringement of another's IP right-- when can, and should, they be sought? [Taken].

Guidance for all prospective authors on the submission of articles can be accessed here.

Articles in search of an author

The sidebar of the jiplp blog contains a permanent, non-exclusive list of topics on which the journal welcomes the submission articles. There are many other topics on which articles are welcomed. Here is a selection of them:

* A review of how Chinese companies fare as litigants in Community trade mark and Community design disputes before the Office for Harmonisation in the Internal Market (OHIM) [TAKEN];

* Creation and enforcement of rights in digitised versions of public domain artwork [TAKEN];

* Affordable strategies for monitoring and enforcing rights against the transit of counterfeit goods [TAKEN];

* Approaches towards the post-contractual plugging of gaps in hastily-negotiated IP licences [TAKEN];

* A private practitioner's guide to the perils of dealing with in-house IP lawyers [TAKEN];

* Key points to consider when licensing the exploitation of celebrity name and image rights [TAKEN];

* A comparison of the treatment of look-alikes, smell-alikes and sound-alikes [TAKEN];

* Language issues in everyday patent practice [TAKEN];

* Crisis management for branded goods facing product recalls [TAKEN];

* IP "super-regimes" of the Olympics and Fifa -- should these models be developed or dismantled? [TAKEN]

If you would like to tackle one of these subjects yourself or together with a colleague, either as it stands or with some variation, please email me here and let me know. And here, in the event that you've decided to write on these or indeed other topics, is some guidance for authors of articles submitted to JIPLP.