"A Welcome Addition to the Literature on the Economics of Copyright"

JIPLP has an excellent record for commissioning and publishing books relating to intellectual property while they are still current, by using this weblog as a means of advertising the availability of books for review and then matching them up with suitably qualified and interested reviewers. Recent jiplp weblog posts seeking qualified reviewers can be seen, for example, here, here, here and here.

Here we reproduce a recently-commissioned review which shows that the gulf between economic theory of intellectual property and the practical work of a judge in deciding cases is not nearly as great as one might imagine. The book under review here is the Handbook on the Economics of Copyright: A Guide for Students and Teachers, edited by Richard Watt, published by Edward Elgar, 2014 ISBN: 978-1-84980-852-1, Hard cover, 351 pp. Price: £130.00. The reviewer: Richard Arnold (Judge of the High Court of England and Wales, Chancery Division) and the review was first published online in JIPLP on 20 April.

Here is what the reviewer had to say:

Although there were some early pioneers of the study of the economics of copyright, such as Arnold Plant, the subject only really began to develop in the 1980s. Now there is a substantial literature on the subject, and it is of increasing importance. As this collection reveals, the subject is a multi-faceted one. I would divide it into three main branches. The first is the study of copyright markets: analysis of the functioning of markets in subject matter protected by copyright (and related rights, such as performers' rights). This includes such matters as the earnings of authors, the impact of infringement and the efficiency of collecting licensing. Practitioners in this branch face huge difficulties in obtaining data for analysis, but persistent efforts have enabled some useful work to be done. The second main branch is the study of copyright law from an economic perspective: what are the economic consequences of such matters as copyright term and copyright scope? Much of the past work in this branch has focused on term, including term extensions, but practitioners are now starting to look at the harder question of scope, such as the effect of particular limitations and exceptions. The third main branch is the study of copyright policy from an economic perspective: how, informed by an economic understanding of copyright, should we frame legislation? Much of this work is concerned with the purposes of conferring copyright protection, and involves trying to understand how those purposes are served, or disserved, by particular policies. The first branch is largely empirical, while the other two are more theoretical.

Given the rapid growth in the field, this new book is a welcome addition to the literature. It is edited by Richard Watt, Associate Professor of Economics and Finance at the University of Canterbury, New Zealand, a leading figure in the field, who has also contributed seven of the 18 chapters. Other chapters have been contributed by several of the most prominent scholars in this area, including Wendy Gordon, Christian Handke, Paul Heald, Stan Liebowtiz and Ruth Towse. The collection is divided into five sections: ‘the economic theory of copyright’; ‘the legal structure of copyright and the public domain’; ‘licensing and authors' earnings’; ‘copyright collectives’ (ie collective management organisations); ‘copying and copyright piracy’; and ‘other issues in the economics of copyright law’. As these section titles indicate, the chapters cover a broad range of topics. Each chapter provides an overview of the current state of research into that topic. Many indicate areas where further research is needed. A couple make an original contribution to the subject under discussion.

According to the publishers, the book is ‘pitched at a level designed to be accessible to advanced undergraduate and postgraduate students in economics and law’, ‘covers all of the topical content that a student of copyright economics should know’ and provides teachers with ‘all the required material to provide a comprehensive overview of the subject’. It should be emphasized, however, that this is not a textbook. Further, some of the chapters, particularly those contributed by Prof Watts, assume that the reader already has a grounding in economics and thus knows (for example) what an inverse demand curve is and can follow moderately sophisticated mathematical modelling. As a lawyer without a training in economics, but some acquaintance with many of the issues discussed, I found some of the chapters easier to follow than others. No doubt for the same reason, I found some of the chapters more enlightening than others.

For me, probably the most interesting single contribution was Stephen Margolis's chapter on ‘law and economics of copyright remedies’. This illustrates quite neatly both the problems and the virtues of the law and economics approach. On the debit side, Margolis relies on a difference which exists in US law, namely that an account of profits is available as a remedy for copyright infringement but not patent infringement, as reflecting the fact that copyright infringement is usually intentional while patent infringement is frequently inadvertent. He also considers that this shows that patent remedies accommodate efficient infringement while copyright remedies do not. I assume he is right about US law (I have not checked). Under English law, however, an account of profits is equally available for both types of infringement. Now Margolis may say that this shows that English law is defective by comparison with US law. I think it shows that the availability of different remedies in different legal systems is not based on economic considerations. Nor I am convinced that economic analysis has much to contribute in deciding whether an account of profits is an appropriate remedy for patent infringement. On the credit side, Margolis persuasively analyses the correct approach to deducting costs on an account of profits. As he explains, two different rules can be identified in case law, namely the fully allocated costs rule (which allows the defendant to deduct an appropriate allocation of its fixed costs) and the incremental costs rule (which does not allow the defendant to do so). Margolis demonstrates that, in real-life multi-product companies, the fully allocated costs rule is more economically accurate than the incremental costs rule. Here the law can learn from economics. It is therefore unfortunate that Margolis's analysis (which he first published in an article in 2007) was not cited to the Court of Appeal of England and Wales when it adopted the incremental costs rule in Hollister Inc v Medik Ostomy Supplies Ltd [2012] EWCA Civ 1419, [2013] Bus LR 428.

Harmonization by degrees: a book review

JIPLP's review section carries reviews of not just books but also of the occasional weblog or Twitter account -- as is only appropriate now that we live and work in the age of the social media. The book reviews are popular with publishers and authors, since the journal's book review policy means that virtually every book received will be reviewed.  New IP books are advertised on this weblog as being available for review, and prospective reviewers often have to compete in order to persuade the journal that they are the person best equipped to write the review. Reviewers who are slow to discharge their responsibilities are required to return their book so that it can in turn be reviewed by someone else.

Book reviews don't often feature on the jiplp weblog (though an earlier review by Christopher Wadlow was reproduced here), so we thought it was high time to post another one. The author of the book in question is the JIPLP Deputy Editor and the reviewer is a member of the judiciary who has done much to help direct the path of European IP law in recent years through the reference of questions to the Court of Justice of the European Union for preliminary rulings:

Originality in EU Copyright Law: Full Harmonization through Case Law, by Eleonora Rosati; published by Edward Elgar, 2013 ISBN 978-1-78254-893-5, Hard cover, 304 pp. Price: £80.00 

A review by Sir Richard Arnold (Judge of the High Court of England and Wales, Chancery Division)

Broadly speaking, there are two main approaches to law reform. The first is incremental and the second is holistic. The incremental approach proceeds one stage at a time. The stages may involve different areas of the field under review, or the whole field may be changed in small steps. The holistic approach considers the field as a whole and changes it all at once. Both approaches have their advantages and disadvantages.

Harmonization of European intellectual property laws has involved both approaches. Harmonization of copyright and related rights has proceeded incrementally through a series of 14 directives and is still incomplete. By contrast, harmonization of trade mark law was more holistic through a single directive-and-regulation package (now under revision). The incremental approach to copyright harmonization has involved sector-specific (eg computer programs, databases), issue-specific (eg term, re-sale right) and more wide-ranging (eg the Information Society Directive) measures. Among the advantages of this approach is that each measure can address a manageable amount of subject matter. Among the disadvantages are that the field is not considered as a whole. Further, there is an inevitable time lag between earlier measures and later measures. Both these factors conspire against coherence and consistency. These problems will inevitably be compounded if the reform process slows, as it did during the 2000s, and is not completed, as is presently the case.

Eleonora Rosati's book provides a case study of the advantages and disadvantages of the EU's incremental approach to copyright harmonization. Rosati begins by surveying the legislative reform process from 1988 to 2012. If one were to attempt a holistic approach to copyright law reform, one would surely start by asking what subject matters should be protected by copyright and according to what criteria. Because of the incremental approach it has adopted, the EU legislature has only given a partial answer to this question. It is clear that computer programs, database and photographs must be protected insofar as they are original in the sense that they are their author's own intellectual creation. But the legislature has given little guidance on this criterion of originality, and has not specified what other subject matter should be protected, or on what conditions.

As Rosati explains, the criterion of originality is a significant policy tool in shaping any copyright system, although I would argue that it is not quite as important as she suggests. A more important tool, as much of Rosati's own analysis shows, is that of protectable subject matter (scope of right and exceptions are still more important). It may therefore be regarded as unfortunate that the EU legislature has not properly addressed this question.

When legislatures fail to act, courts tend to feel impelled to step into the breach. This is particularly true of a harmonizing court like the Court of Justice of the European Union (CJEU) when confronted with piece-meal and incomplete legislation. Perhaps it should not have come as a surprise, therefore, that starting with its decision in Infopaq International A/S v Dankse Dagblades Forening, C-5/08, EU:C:2009:465 and continuing through the subsequent cases of Bezpečnost softwarová associace v Ministerstvo kultury, C-393/09, EU:C:2010:816; Football Association Premier League Ltd v QC Leisure, C-403/08 and C-429/08, EU:C:2011:631; Painer v Standard Verlags GmBH, C-145/10, EU:C:2011:798; Football Dataco Ltd v Yahoo! UK Ltd, C-604/10, EU:C:2012:115; and SAS Institute Inc v World Programming Ltd, C-406/10, EU:C:2012:259, the CJEU has boldly seized the initiative. This case law is analysed in detail by Rosati. The broad picture now seems reasonably clear, and can be summarized in three main propositions. First, the ‘works’ protected by the directives must be literary and artistic works within the meaning of Article 2 of the Berne Convention. Secondly, in order to be protected, a work must be original, in the sense that it is its author's own intellectual creation. It is not enough for this purpose that the creation of the work involved skill and labour. It must have involved the author's ‘creative freedom’ (FAPL), ‘personal touch’ (Painer) or ‘free and creative choices’ (Football Dataco). Thirdly, protection (at least in the case of the reproduction right) extends to parts of works which are original in this sense. As Rosati explains, however, beyond these broad propositions, little is clear.

Even so, the potential implications for the copyright laws of the Member States are profound. In the case of the United Kingdom, it seems clear that the effect is to raise the bar for the level of originality. But how much difference this will make in practice, other than in cases involving pure information, such as football match fixtures and the like, may be doubted. For example, a parallel case to the English case of Sawkins v Hyperion Records Ltd [2005] EWCA Civ 565, [2005] 1 WLR 3281 (the case about performing editions of French baroque music) was decided in the same way in France. Would the new approach have led to a different result in either country? Further, it does not necessarily follow that the overall level of protection has been lowered. It is at least arguable that, although the CJEU has raised the bar on originality, it has lowered the bar when it comes to reproduction. Rather less clear is the effect on the UK's closed list system of protectable subject matter. Rosati suggests that this is no longer compatible with EU law, but she acknowledges that the CJEU has yet squarely to address this question.

Rosati examines theses issues through the prism of two recent English cases: Temple Island Collections v New English Teas Ltd [2012] EWPCC 1, [2012] FSR 9 (the ‘red bus’ case) and Lucasfilm Ltd v Ainsworth [2011] UKSC 39, [2012] 1 AC 208 (the Star Wars storm trooper helmet case). She is critical of the decision in Temple Island, but it is not clear to me why. Like many other commentators, she appears to have been confused by the judge's description of the claimant's work as a photograph. As both the judge and Rosati make clear, however, it was in fact a digital artwork derived from a photograph through an extensive process of manipulation. It follows that the correct criteria for protection were those applicable to true artistic works rather than those applicable to photographs. Once this is understood, I would suggest that the decision is less surprising than it may otherwise appear. Rosati's criticisms of Lucasfilm appear to me to be more cogent. It is very striking that the Supreme Court approached the issue as a pure question of the interpretation of the word ‘sculpture’ in the current domestic legislation viewed in its historical context, without a glance at the broader European context.

As Rosati explains, the approach taken by the CJEU in its case law also has profound implications for current harmonization projects such as the Wittem Group's European Copyright Code and more generally for the future of EU copyright law. Any future legislation about protectable subject matter and the criteria for protection will have to be framed with this case law in mind.

Rosati has made a valuable contribution to the study of European copyright law. The only flaws in the book are some hangovers from its origin as a PhD thesis, such as tables of cases listed in chronological, rather than alphabetical, order.

If you are interested in reviewing books for JIPLP, just keep an eye on this weblog for the next batch of books on offer.

It's complicated: copyright law and chaos theory

Book review by Francis Davey (barrister)

Complex Copyright: Mapping the Information Ecosystem, by Deborah Tussey

Published by Ashgate, 2012. ISBN: 9780754677840, Hard cover, 143 pp. Price: £60.00

Journal of Intellectual Property Law & Practice (2012), doi: 10.1093/jiplp/jps119, first published online: August 24, 2012

I am sure that, to many people, copyright law seems ‘complicated’ but this book is not about the kind of ‘complexity’ that ‘complex copyright’ is about.

It is nearly twenty years since ‘chaos theory’ intruded sufficiently into the mainstream, when it featured not only in Stoppard's Arcadia but was the professional interest of Jeff Goldblum's dinosaur-dodging mathematician in Jurassic Park.

Chaos theory was born in the late 19th century when mathematicians such as James Clerk Maxwell and Henri Poincaré began to study systems where small changes in setting up the system could lead to large changes in the result. An imperceptible difference in, say, the position of the Moon, could lead to a completely different set of orbits after the passage of time.

What Poincaré and those who came after him realized was that, although one might have to give up on being able to predict outcomes exactly, there were techniques that let one predict some qualitative or statistical properties of the system. This area of study came to be called ‘chaos theory’.

By the 1980s it had achieved popular science status with James Glieck's book, Chaos: Making a New Science (Viking Penguin 1987) being nominated for the Pulitzer Prize. Its offspring, ‘complexity theory’, has been suggested as a solution to ‘traffic congestion, financial market crashes, terrorist attacks, pandemic viruses, and cancer’ (see Neil Johnson Two's Company, Three is Complexity, Oneworld 2007). The reality was much more modest. ‘Chaos theory’ and ‘complexity theory’ are not ‘theories’ in the sense of evolution or special relativity, but a collection of techniques that may be applied to some more or less general classes of chaotic situations. They can be powerful tools, but are not of universal application (HJ Jensen, Self-Organized Criticality, Emergent Complex Behavior in Physical and Biological Systems, Cambridge University Press 1998).

A further advance was the discovery of ‘self-organized criticality’ (SOC: see P Bak, C Tang and K Wiesenfeld, ‘Self-organized criticality: An explanation of the 1/f noise’ (1987) 59 Phys Rev Lett 381). In certain circumstances one can achieve a kind of balance between order and chaos. A system exhibiting SOC will tend towards a kind of equilibrium, exhibiting random behaviour but with well-defined statistical behaviour. A tiny change in the preparation of the system will lead to large changes in the equilibrium state but with the same statistical behaviour.

For example, it is almost certainly the case that if Hitler had died in infancy, history would have been very different but we would almost certainly have seen a series of wars in Europe; different but, if history truly exhibits SOC as claimed, the overall sweep would be much the same. Characteristically, studies of SOC systems focus on the whole rather than the parts, and it is often difficult to predict the behaviour of the whole merely from contemplating the parts of which it is made.

A characteristic feature of most SOC systems is scale invariance. The behaviour of the system is the same at all scales. For example, if you saw a plot of earthquake intensities over a period of time, it would be difficult to work out its scale merely from its shape (CF Richter and B Gutenberg, Seismicity of the Earth and Associated Phenomena, Princeton University Press 1949). Scale invariance turns up in enormously varied circumstances, not only in physics but also biology (T Gisiger, ‘Scale invariance in biology: coincidence or footprint of a universal mechanism?’ (2001) 76 Biol Rev 161) and economics (J Creedy and VL Martin (eds), Chaos and Non-Linear Models in Economics, Theory and Applications, Edward Elgar 1994).

Scale invariance is often a result of another feature common in SOC, self-similarity. This occurs where parts of the system resemble the whole. For example, the buds on a floret of a Romanesco broccoli resemble the floret itself, and the same is true of the buds on the buds.

Professor Tussey's thesis is that ‘copyright’, understood in its broadest sense to include the whole environment in which copyright law operates, taking in publishers, authors and consumers—is a complex adaptive system exhibiting self-organizing criticality and that this realization should inform policy and condition the way in which future research is conducted. The book is an exposition of that subject in five chapters.

Her first chapter, ‘Are publishers really like prairies?’, does not quite answer the question it poses. She presents us with many features that copyright shares with the prairie ecosystem—for example, feedback loops or complex interaction between large numbers of actors—but the whole discussion feels impressionistic. At best, Professor Tussey suggests that the two systems might be similar enough that one could draw conclusions from one to the other, for example by applying principles learned from conservation to copyright, but there was no attempt to build any models, even crude ones, or demonstrate that the similarity goes beyond a hunch.

The second chapter consists of an outline of justifications for copyright with a criticism that they have simply been taken for granted, rather than subjected to empirical testing.

Though reference is made to ‘labour’ and ‘personhood’ theories it is clear that the author is only concerned with a utilitarian view of copyright. In discussions of theory in later parts of the book it is assumed to be the only one that need be considered. In any case, it makes little sense to talk of ‘testing’ a theory based, for example, on natural rights since natural rights theories do not claim that copyright law is justified on the basis of its outcomes.

I felt the whole chapter was unnecessary. Competing theories were mentioned and then forgotten. The discussion was necessarily at a very surface level and contributed little to the book's main argument.

The third chapter purports to look at ‘systems analysis’ for complex copyright. It does contain some useful material, including a sketch of empirical research on the effect of copyright law. While it does not seem to be a comprehensive study, it might provide a useful starting point for someone wanting to find a way into the field.

No concrete examples are offered of applying systems analysis to copyright. Instead, generalities are offered, such as a need to take a holistic view or look at the social and cultural effects rather than the narrow economic outcomes.

The high point of the chapter is an argument that the failure of analysis results from, on the one hand, the practising lawyer's habit of focusing on detail to the neglect of the whole and, on the other, the academy's retreat from empirical analysis to theory—a trend Professor Tussey clearly hopes to change.

Chapter 4, which starts with neuroscience, is an apparent attempt to persuade the reader that, because the brain is a complex adaptive system, so must be copyright. That is a non sequitur. It is not suggested that brains and copyright exhibit self-similarity; rather, the brain must be intended to be one of the classes of atom which make up copyright as a system. As we have seen, the behaviour of the individual elements of a complex system is often quite unlike that of the whole system.

The rest of the chapter addresses the phenomenon of creativity. Here I think the book provides food for thought. Many arguments about copyright focus either on economic incentives to create or the availability of other works as a substrate for future creations, but individual creativity has other drivers than the economic and other constraints than the availability of works for re-use. We are encouraged to find ways to analyse copyright that consider how it might foster creativity from a more holistic point of view.

Her final chapter looks forward. She makes some general recommendations for policy makers such as ‘nudge—don't shove’, which seem reasonable enough, but I felt there was a failure firmly to establish that they followed from her analysis. The chapter concludes by calling for more research and, more importantly, more data. Here, she makes some useful suggestions about data collection—for instance, that large copyright interests might be required to supply data as a quid pro quo for copyright registration.

In conclusion, I felt this was a brave effort to cover a difficult subject in a relatively short space. It suffers by being too general, including material better covered elsewhere, which perhaps distracted from a more focused study of the new ideas Professor Tussey is bringing to the table.

It was hard to know who was the intended reader. The book covers ground that would be challenging for a beginner, but it also includes material that is elementary in nature.

The most serious failure is that complexity theory is never explained sufficiently clearly that one could usefully apply it. The whole book has an impressionistic feel. For example, having observed earlier that complex systems are frequently ‘non-linear’, with the mathematical meaning that outcomes are not proportionate to inputs, she elides this use of ‘linear’ meaning ‘in a line’ referring to thought processes observing simple cause and effect. The words are the same, but to a mathematician they have completely different meanings in context.

I am not sure that someone reading the book without already understanding complex adaptive systems would really have any idea what they were at the end of it. This is not helped by a lack of references to peer-reviewed material on complexity theory rather than to popular works.

If, as Professor Tussey claims, the publishing or copyright world does exhibit self-organizing criticality, where is the quantitative evidence of it? It seems entirely plausible that variables such as sales and profitability of works exhibit scale invariance as she claims, but there are no figures, diagrams or references to back up this claim. I would have welcomed rather more rigour.

The best that can be said for the book is that it is thought-provoking. There is much to chew over, but readers will have to do much of that work themselves. A first book on such a complex subject is always going to be difficult. I hope to see more in the future. For now, readers may be better advised to read Professor Tussey's original paper (D Tussey ‘Music on the Edge of Chaos: A Complex Systems Perspective on File Sharing’ (2005–2006) 37 Loy U Chi LJ 147) and follow references from there.

Book Review: New life and vigour at Terrell?

Book reviewed: Terrell on the Law of Patents, 17th edition. Richard Miller QC, Guy Burkill QC, Judge Colin Birss QC and Douglas Campbell, Sweet & Maxwell, 2010 ISBN: 9781847039033, Hard cover, 1238 pp. + xc Price: £325

Reviewer: Christopher Wadlow (Professor of Law, UEA Law School, University of East Anglia, Norwich, England)

I must confess to having indulged in a certain amount of hyperbole when I wrote in a previous issue of this Journal that the editors of Terrell on the Law of Patents, then in its 16th edition, could ‘trace their succession back in line unbroken to … the first edition of 1884’(1). There have in fact been two successive editorial dynasties, the first having been founded by the eponymous Thomas Terrell QC in 1884 and the second by KE Shelley KC in the 1950s.

The life of Thomas Terrell himself makes surprisingly lively reading for those who have known only the recent generation of editors (2). Born in Paris in 1852, Thomas Terrell may originally have intended to follow a career as a chemist or mining engineer,(3) but took to journalism instead, a role which he briefly revisited when he attended the second court-martial of Captain Alfred Dreyfus in 1899.4 On being called to the bar in 1879 he joined Gray's Inn, and was subsequently made a QC (1895), a Bencher (1896), and Treasurer (1904). His early practice was varied, and if he seems to have found his natural milieu in the divorce courts, most notably as counsel for the plaintiff in the final act of the long-running cause célèbre known as Wiedemann v Walpole,(5) then it is perhaps coincidental that matrimonial relations of the conventional kind were somewhat of a rarity in the Terrell household. It was said of Thomas Terrell and his father that ‘both made unhappy marriages in their twenties, both engaged lustfully in haphazard womanising and both, in their forties, became passionately involved with a mistress’.(6) He was also a published novelist,(7) and the inventor of an improved gas-mantle.(8)

Patna High Court

Thomas Terrell was succeeded by his second son Sir Courtney Terrell, who was Chief Justice of the Patna High Court from 1928 until his death in 1938, and between them they edited six of the first seven editions, with an interregnum for the 3rd edition of 1895, and another for the 8th edition of 1934. A memoir of Sir Courtney Terrell, by the latter's son, Richard Terrell, provides some additional insights into the life and character of the biographer's grandfather. Thomas Terrell was the offspring of a liaison between Thomas Hull Terrell, an ostensibly respectable barrister (and future county court judge) and his ward Elizabeth Spry, who had been entrusted to his care when her father, an Indian Army officer, left England to join his regiment in Madras. He died en route. In 1852 Elizabeth, by now pregnant, was bundled off to Paris where she gave birth to Thomas fils. The boy grew up speaking French, and professing a characteristically Gallic brand of politics: revolutionary, egalitarian, democratic, and anti-clerical.(9) His novel Lady Delmar allowed him to display his leanings towards the avowedly Marxist values of the Social Democratic Federation,(10) but it was as a Gladstonian Liberal (of the Radical wing of the party) that he unsuccessfully contested four general elections.

With Sir Courtney Terrell, the family succession came to an end, and after a decently prolonged interval, a second (unrelated) dynasty was founded by KE Shelley KC with the 9th edition in 1951. Terrell has continued to be edited in the same chambers ever since—its successive editions serving as a rite of passage for junior barristers eager to demonstrate their worthiness to ascend the silken ladder at 3 New Square, or 6 Pump Court before it. For the rest of us, the same successive editions have seemed (at times) to have offered little more than a handsome and expensive binding for the text of the Patents Act of the day. Readers of past editions will recall countless occasions on which counsel would say: ‘My Lord will find section X of the Act at page Y of Terrell’, with the clear implication that if My Lord were perverse enough to look for section X anywhere else, even in the Queen's Printer's copy, then the text would very probably turn out to be corrupt, if not altogether spurious.

So much for the past. The commentary has been greatly extended for the present edition, and the appendices cut back accordingly. More importantly, the editors seem to have been asking themselves some fundamental questions about what Terrell is really for. The winds of change have made their presence felt, and just as Great Britain has found itself bereft of the Empire which Sir Courtney Terrell served as a judge, so the editors of Terrell must have had cause to wonder about their own future role and relevance. In its own dignified fashion, Terrell has been adjusting itself to the new ways since the 13th edition of 1982, but the need to adapt to a new environment has intensified, as the Preface candidly acknowledges:

While the principal focus [of Terrell] remains the law as practised and applied in the courts of this country, there is an ever-increasing willingness on the part of our courts to follow the decisions of the Boards of Appeal of the EPO and, where appropriate, we have cited settled jurisprudence from that source.

With this promise in mind, it may come as something of a surprise that the table of Board of Appeal decisions in Terrell actually occupies no more than two facing pages, compared to nearly 45 pages tabulating the decisions of the UK courts. Butterworths’ Modern Law of Patents,(11) in comparison, takes all of 20 pages to list the Munich case law. The Boards of Appeal, however, can at least consider themselves generously served by Terrell in comparison to the dearth of cases from other common law jurisdictions. The commentary itself remains as firmly centred on the English case law as ever.

Might it therefore be suggested of Thomas Terrell's distant successors that their performance fails to match up to their promises? In his lifetime, Terrell himself unsuccessfully defended Frederick Roe and his notorious Carbolic Smoke Ball Company.(12) He later (but with equal lack of success) prosecuted the fraudulent Cornelius Bennett Harness, the promoter and managing director of the Medical Battery Company, of Oxford Street, London W1. The latter's ‘electropathic belts and corsets’, though patented in the UK and USA,(13) and advertised as being ‘scientifically constructed … for new life and vigour’,(14) were therapeutically useless, as Terrell's client, an ‘aged and decrepit’ retired Indian Army Colonel living in Margate, discovered to his cost.(15) Of the Colonel's unrelieved affliction, delicately referred to as a ‘weakness of the loins’, suffice it to say that nothing of the sort seems to have troubled Terrell, who continued to be productive in that department well into the twentieth century. He married his French mistress, Clementine Bouriel, shortly after the death of his wife Emma in 1924, thereby legitimating the seven offspring from that side of his family, to which should be added the three more regularly accounted for by his first marriage.

As always with patent claims, not to mention advertisements proffering dubious ‘guarantees’, for even more dubious ‘miracle cures’, it is important to pay attention to the precise wording: in this case ‘practised and applied’, ‘in the courts of this country’, ‘where appropriate’, ‘settled jurisprudence’. Terrell is not just unapologetically Anglo-centric, it is almost entirely court-centred. Unlike The Modern Law of Patents, in particular, Terrell has no pretensions as a source of reference for patent office practitioners (whether in Newport or Munich), and the Munich case law is expressly included for its relevance to UK law and practice, rather than for its intrinsic importance. Does all this mean that Terrell's editors have failed to deliver on what they promised? I think not, since Terrell holds up a faithful mirror to what has been the policy of the Patents Court since the days of Falconer and Aldous JJ, both editors of Terrell themselves. They (and Terrell) have done their best to see that English law has marched to the same tune as European law, but not to the extent of slavishly following in anyone else's footsteps.

It also follows that topics which are of high importance in examination, but of relatively low importance post-grant (such as office procedure, added matter, impermissible amendment, clarity, and fair basis of claims) are dealt with rather briefly, and attention is concentrated on issues which tend to dominate English patent litigation. This is not to say that any of the former are completely ignored, but they are not really part of Terrell's intended franchise. Practitioners whose interest in patents is non-contentious will also find that Terrell has relatively little to offer beyond a new chapter on Entitlement, where there has been a minor surge of decided cases. In all these respects, Terrell is much less wide-ranging than The Modern Law of Patents, and sticks more closely to the needs and interests of UK patent litigators.

The comparison with The Modern Law of Patents is most clearly in Terrell's favour when one comes to its chapters on claim interpretation, infringement, and the skilled person, as the wearer of the new-found unisex mantle has now become. The attributes of this surprisingly elusive character are absolutely fundamental (sorry) not only to claim interpretation (and therefore to both novelty and infringement), but also to obviousness, and even to insufficiency, so it makes eminent sense to devote a whole separate chapter to them, which the new edition of Terrell does very successfully.

When it comes to claim interpretation and infringement, Terrell gives more generous measure than The Modern Law of Patents, since the latter is disadvantaged by the negligible amount of EPC case law in point, and the very limited relevance of what little there is outside examination and opposition proceedings. Article 69 is equally applicable in Munich as in London, of course, but it is one measure of the difference between office practice and litigation that claim interpretation is often the determinative factor in the latter, whereas it is hardly ever so much as a side-issue in the former. Likewise, The Modern Law of Patents seems rather too willing to assume that Kirin-Amgen(16) has obliterated the legacy of Catnic(17) and Improver(18) from our law, whereas Terrell contains a much fuller treatment of the Catnic (and even pre-Catnic) case law in all its variants. For the time being, at least, this is surely the safer option, and probably the correct one, since whatever the merits or demerits of purposive construction in the mould of Catnic and Improver, the latter do at least represent a very necessary attempt to provide a structured and accessible way of applying Article 69 EPC and its Protocol to the facts of individual cases.

The new chapter on the skilled person apart, the present edition has added entirely new chapters on Supplementary Protection Certificates, Entitlement, and Declarations. Likewise, the principal grounds of invalidity (novelty, obviousness, and insufficiency) have been disaggregated from the former single chapter on grounds of revocation, and given individual chapters of their own. Another sensible decision has resulted in the former treatment of stamp duty and income tax being omitted, though the table of contents continues to promise otherwise in the title of Chapter 23.

If Thomas Terrell's marital unorthodoxy, political radicalism, and religious scepticism barred him from promotion to the very highest reaches of the legal profession, then I can hardly imagine that he was very much bothered. On one version of events, he could have been a judge for the asking, but turned the opportunity down. According to his grandson Richard: ‘Tom [Terrell] had been a drinking companion of [Lord] Birkenhead and there is a story of how, one moonlit night in Pall Mall, Birkenhead put his arm round Tom's shoulders and said, “Tom, I'm going to make you a judge.”’ Terrell, who must have been approaching 70 at the time, is supposed to have declined, both on an account of his age, and because of his irregular family arrangements.(19)

Be that as it may, Thomas Terrell's life story is surely one which most of us would be more than happy to contemplate in old age, with feelings of contentment verging on complacency, and complacency verging on conceitedness. Even the most trivial of his documented achievements—that of winning a silver cup for riding a penny-farthing bicycle from London to Brighton(20)—is suitably memorable. I very much doubt if he would have swapped destinies with Sir Douglas Falconer,(21) for example, though he might have been tempted by the prospect of changing places with Sir John Mortimer. How does he deserve to be remembered? For want of anything better, I append my own belated and inadequate attempt at a suitable epitaph:

THOMAS TERRELL KC (1852–1928), BARRISTER.
JOURNALIST, NOVELIST, SATIRIST, JURIST AND AMORIST.
INVENTOR OF A PATENT GAS MANTLE.
TRULY A MAN SKILLED IN EVERY KIND OF ART.
EXEGI MONUMENTUM AERE PERENNIUS.(22)

It is hardly Thomas Terrell's fault that the most illuminating of his monuments should have been as delicate as a fairy's mantle, and as evanescent as the use of gas for domestic illumination, nor that the most durable should have turned out to be more leaden than brazen.


Footnotes

1 CM Wadlow, ‘Butterworths’ Book of Sand’ (2011) JIPLP 194.

2 For an obituary of Thomas Terrell (1852–1928) see The Times (Monday, 30 April 1928) p 19. Further information from Richard Terrell, The Chief Justice: A Portrait from the Raj (Michael Russell, Salisbury 1979), (1928) 3 Greya (Michaelmas Term) 8, www.balean.net/terrell.html, and miscellaneous sources.

3 Details of Terrell's education vary. According to The Times, above n 2, he obtained a first class degree from the Ecole des Mines, and intended to practise as a mining engineer. However, a potted biography published by the same newspaper in 1892 states that he was educated at Berkhampstead Grammar School and at the Royal College of Chemistry, and intended to pursue a career as an analytical chemist: The Times, (Wednesday, 6 July 1892) 13. Yet another version has him attending the Jewish School at Ramsgate: The Western Mail (Saturday, 1 July 1893). (The Welsh connection is that Terrell practised on the South Wales Circuit.)

4 In which capacity the New York Times described him as ‘One of the leading jurists in England’ New York Times (20 August 1899).

5 Wiedemann v Walpole [1891] 2 QB 534 (CA). There were three trials in all, arising from a promise of marriage supposedly made by the Hon. Robert Horace Walpole, heir to the Earldom of Orford, to Valerie Wiedemann, a German governess whom he seduced and impregnated in Constantinople. Fräulein Wiedemann pursued the Hon. Arthur back to England, where she continued to importune him after his marriage to an American railway heiress. For the third and final trial, see The Times (Tuesday, 16 June 1891) 3, and for the appeal which ended the litigation see The Times (Thursday, 30 July 1891) 3.

6 Terrell, The Chief Justice (1979), at 17. Sir Courtney Terrell, the Chief Justice of the book's title, continued the family tradition by setting up house in India with his estranged wife's elder sister.

7 Lady Delmar (1891, with Miss TL White); The City of the Just (1892); A Woman of Heart (1893). The City of the Just was avowedly written to warn the public against City frauds, ‘bucket shops’, and bogus speculative companies, but The Times acidly observed that ‘such interest as it attracted was chiefly due to the satirical exposure of the foibles of the Judges, which probably did not improve the (never very cordial) relations existing between Terrell and the Bench’. The Times, n 2, above.

8 No 4324 of 1895.

9 Terrell, The Chief Justice (1979), at pages 30 (parentage) and 19 (political and religious opinions).

10 ‘[T]he chief characteristic of this work lies in its exposition of Social Democratic theories … [I]t tells a story of a woman's weakness and a man's treachery, the man, an aristocrat, being thoroughly villainous, while virtue appears to be looked upon as the peculiar attribute of the less favoured classes.’ The Morning Post (London, Wednesday, 4 March 1891) 2.

11 Ashley Roughton, Phillip Johnson and Trevor Cook (eds), The Modern Law of Patents (2nd edn, OUP, Oxford 2010).

12 In Carlill v The Carbolic Smoke Ball Company [1892] 2 QB 484, affirmed [1893] 1 QB 256 (CA). Terrell was junior counsel on the appeal.

13 Patent number 4,881 of 13 October 1883 in the UK; number 380,568 of 3 April 1886 in the US.

14 For an example of an advertisement, see www.wellcomecollection.org/full-image.aspx?page=961&image=electricity-based-therapy.

15 A Brian Simpson, Leading Cases in the Common Law (OUP, Oxford 1995) at 286. See also The Times, (Thursday, 23 November 1893) 11; (Thursday, 1 February 1894) 8. The company failed, and was wound up shortly afterwards: Re Medical Battery Company [1894] 1 Ch 444. A doctor, Joseph Richard Leeson, who had lent his name and assistance to Harness, was struck off for ‘infamous conduct’: Leeson v General Council of Medical Education and Registration (1890) LR 43 ChD 366, CA.

16 Kirin-Amgen Inc v Transkaryotic Therapies Inc [2004] UKHL 46; [2005] RPC 9 (HL).

17 Catnic Components Ltd v Hill & Smith Ltd [1982] RPC 183 (HL).

18 Improver Corp v Remington Consumer Products Ltd [1990] FSR 181, Pat Ct.

19 Terrell, The Chief Justice (1979) at 32. No date is given but the event, if it ever took place at all, must have occurred while Birkenhead (FE Smith) was Lord Chancellor, between 1919 and 1922.

20 Terrell, The Chief Justice (1979) at 16. The occasion is not stated.

21 Obituary, The Times (26 February 2008).

22 ‘I have erected a monument more lasting than bronze.’ Horace, Odes Bk 3, no 30, l. 1.

Richly Diverse (book review)

Copyright and Piracy: an Interdisciplinary Critique, edited by Lionel Bently, Jennifer Davis and Jane C. Ginsburg, Cambridge University Press, 2010 ISBN: 9780521193436, Hard cover, 471 pp. Price: £70

Reviewer: Charlotte Waelde (University of Exeter)

Journal of Intellectual Property Law & Practice (2011), doi: 10.1093/jiplp/jpr097, first published online: July 6, 2011

Take a topical subject, copyright, and piracy; add three world renowned legal experts, Lionel Bently, Jennifer Davis, and Jane Ginsburg; stir in lawyers, economists, historians, technologists, sociologists, cultural theorists, and criminologists; and slice according to history, comparative law, economics, linguistics, computer software, information studies, literature, art, sociology/music, and criminology. Outcome: a wonderfully rich and thought-provoking set of essays which make a significant contribution to our understanding of copyright infringement.

The methodology employed by the editors has been to pair essays—a non-lawyer with a lawyer. Mostly, the non-lawyers have taken first place with the comment being made by the lawyer. In general, this has been successful. Tanya Aplin for instance in her chapter ‘Reflections on measuring text reuse from a copyright law perspective’ comments on that of Paul Cough ‘Measuring text reuse in the news industry’ and in so doing skilfully pulls threads and themes from Paul's work in building her own. Jonathan Griffiths is similarly adept in drawing out points of agreement and of difference between his ideas in ‘Copyright's imperfect republic and the artistic commonwealth’ and those of Daniel McClean which are presented in ‘Piracy and authorship in contemporary art’. Daniel's own interdisciplinarity as an independent art curator and a lawyer shines through in his chapter. So the methodology certainly meets the editors’ self-imposed task and results in a deep and reflective approach to the multi-faceted issues raised by copyright infringement, probably more so than has hitherto been the case in other studies. It would be an interesting, and challenging, step to get the discipline experts to write one chapter between them.

Does the collection also meet the desire to address the ‘vital and overarching question of whether strong copyright laws, rigorously enforced impede rather than promote creativity?’ This is a big question—and one that lawyers argue about but can often find it difficult to produce evidence in support. How, after all, does a lawyer actually know that creativity is being impeded? Just because an individual can't do one thing with an existing work does not mean that they can't do something else. The ‘something else’ might not be what they had originally intended but does that make it any less creative? So do the other disciplines help to shed some light on this question? However, I digress a little.

I have always found the use of the term ‘piracy’ in connection with copyright infringement somewhat challenging. It seems to turn all of us into pariahs (unless you first think of Johnny Depp). So the inclusion of chapters on ‘Nineteenth-century Anglo-US copyright relations: the language of piracy versus the moral high ground’ by Catherine Seville paired with ‘Language, practice and history’ by Adrian Johns are most welcome in helping to shed some light on this area. Relatedly I also really enjoyed the clutch of chapters dealing with copyright and plagiarism: Isabella Alexander's chapter on ‘Inspiration or Infringement: the plagiarist in court’, and her second chapter ‘The genius and the labourer: authorship in eighteenth-and nineteenth-century copyright law’ responding to Nick Groom's chapter ‘Unoriginal genius: plagiarism and the construction of “Romantic” author’. The three chapters give the reader much food for thought on the interaction between copyright infringement and plagiarism.

Delving deeper into the book, David Lefranc, translated by Sébastien Oddos, and Jane Ginsburg share a lively debate on the origins of contrefaçon in French Law in ‘The metamorphosis of contrefaçon in French copyright law’ and ‘A common lawyer's perspective on contrefaçon’, respectively. In a most careful and insightful chapter ‘Copyright infringement, “free-riding” and the lifeworld’ (and in a change to the norm of having the main chapter written by a non-lawyer), Anne Barron gives an account of the law and economics approach to copyright infringement and its limits to which Jonathan Aldred, an economist, responds in his piece ‘Copyright and the limits of law-and-economics analysis’ in which, while taking issue with a few points made by Barron, shares her concerns in relation to the central tenet of her argument over the limitations of the law and economics approach. We move to music in ‘Reggae open source: how the absence of copyright enabled the emergence of popular music in Jamaica’ by Jason Toynbee twinned with ‘Free-riding on the riddim’? ‘Open source, copyright law and reggae music in Jamaica’ by Johnson Okpaluba, by virtue of which we are privy to a sprightly argument as to the effect of copyright on the development of reggae in Jamaica; and on to an examination of the motivations for file sharing in ‘Copyright infringement: a criminological perspective’ by Loraine Gelsthorpe paired with ‘Towards a clearer understanding of the file-sharing phenomenon? Comments on a criminological perspective’ by Shira Perlmutter. Other pairings include Alan Durant on ‘“Substantial similarity of expression” in copyright infringement actions: a linguistic perspective’ with Graeme Dinwoodie ‘Refining notions of idea and expression through linguistic analysis’; and Jon Crowcroft on ‘Copyright, piracy and software’ with Jennifer Davis with ‘Of plots, puddings and draught-excluders: the law as it applies to the infringement of computer programs’.

So, having read this rich and diverse set of essays, are we any closer to being able to answer the question that was posed at the outset of the book? Do strong copyright laws, rigorously enforced, impede rather than promote creativity? Well, I don't know. But what I do know is that I thoroughly enjoyed this collection and certainly regard it as a ‘must have’ for any copyright scholar and fully expect to see it enter the bibliographies of the theses and dissertations of the many students who are passionate about this subject. As the reader of this review will gather, I highly recommend it for any copyright collection.

Butterworths’ book of sand

The Modern Law of Patents, Ashley Roughton, Phillip Johnson and Trevor Cook (eds)., LexisNexis Butterworths, 2010, ISBN: 9781405745185, Hard cover, 1921 pp. + ccxxxvi Price: £300

Reviewer: Christopher Wadlow (Professor of Law, UEA Law School, University of East Anglia, Norwich, England).

Let no one say the book reviews in this Journal are anything other than scrupulously objective. (I live alone in a fifth-floor apartment on Calle Belgrano, in Buenos Aires.) Butterworths’ Modern Law of Patents has 1921 numbered pages, of which 915 make up the appendices. (One evening a few months ago, I heard a knock at my door.) The front matter runs to an additional ccxxxvi (236) pages. (I opened it and a stranger stepped in.) It weighs 1.48 kg and is 4.5 cm thick. (Everything about him spoke of honest poverty: he was dressed in gray and carried a gray valise.) Comparable figures for the current (16th) edition of Terrell on Patents are 1206 numbered pages (of which 494 pages is statutory materials; there are also civx pages of front matter). Its weight is 1.86 kg and it is 6.8 cm thick.

‘I sell Bibles’, he said at last.
‘In this house’, I replied, not without a somewhat stiff, pedantic note, ‘there are several English bibles, including the first one, Wyclif's. I also have Cipriano de Valera's, Luther's (which, is in literary terms, the worst of the lot) and a Latin copy of the Vulgate. As you see, it isn't exactly Bibles I might be needing.’
After a brief silence, he replied, ‘It's not only Bibles I sell. I can show you a sacred book that might interest a man like yourself. I came by it in northern India, in Bikaner.’
He opened the valise and brought out the book. He laid it on the table. It was a clothbound octavo volume that had clearly passed through many hands. I examined it: the unusual heft of it surprised me. On the spine was printed ‘Holy Writ’, and then ‘Bombay.’

The key to the sheer extent of the Modern Law of Patents is surprisingly mundane, since its production has not been outsourced to India, nor its composition to the Deity. It is printed on unusually thin paper, so that all those thousands of pages can be accommodated in a single volume. Hence, the extent and comprehensiveness of the collection of primary legislative materials runs to 625 pages. Almost everything one could reasonably expect to find is here, and quite a few things one might not. The reader's interests in patents would have to be fairly esoteric, or directed outside the UK and Europe, before it could be said that anything significant was lacking, though your reviewer notices the absence of the text of one of his personal favourites, the 1963 Strasbourg Convention on the Unification of the Substantive Law of Patents for Inventions. There is also a useful selection of pleadings and precedents, though only contentious ones, yet the whole book is no thicker or heavier than Butterworths’ Intellectual Property Handbook. The Handbook, of course, is a great deal cheaper to buy, and the primary texts are more conveniently available online, so it is by the usefulness of the commentary, and not for the legislative materials, that the Modern Law of Patents is likely to be judged. The production and presentation are excellent, once one has accustomed oneself to the flimsiness of the paper, and there is a very useful pair of ribbon place-holders.

I opened it at random. The characters were unfamiliar to me. The pages, which seemed worn and badly set, were printed in double columns, like a Bible. The text was cramped, and composed into versicles. At the upper corner of each page were Arabic numerals. I was struck by an odd fact: the even-numbered page would carry the number 40,514, let us say, while the odd-numbered page that followed it would be 999. I turned the page; the next page bore an eight-digit number. It also bore a small illustration, like those one sees in dictionaries: an anchor drawn in pen and ink, as though by the unskilled hand of a child.
It was at that point that the stranger spoke again.
‘Look at it well. You will never see it again.’
There was a threat in the words, but not in the voice.
I took note of the page, and then closed the book. Immediately, I opened it again. In vain I searched for the figure of the anchor, page after page. To hide my discomfiture, I tried another tack.
‘This is a version of Scripture in some Hindu language, isn't that right?’
‘No,’ he replied.

When Butterworths stunned the profession by selling off the major part of their list to Tottel (now Bloomsbury Professional) in 2004, they kept back some of their IP titles, and even extended the range. First there had been the Modern Law of Copyright by Hugh Laddie, Peter Prescott, and Mary Vitoria in 1980, then Christopher Morcom's Modern Law of Trade Marks in 1999, and finally the Modern Law of Patents by Michael Fysh, Ashley Roughton, Trevor Cook, and Michael Spence in 2005. As for the future, the Modern Law of Passing-off is altogether too oxymoronic to frighten your reviewer.

Then he lowered his voice, as though entrusting me with a secret.
‘I came across this book in a village on the plain, and I traded a few rupees and a Bible for it. The man who owned it didn't know how to read. I suspect he saw the Book of Books as an amulet. He was of the lowest caste; people could not so much as step on his shadow without being defiled. He told me his book was called the Book of Sand because neither sand nor this book has a beginning or an end.’
He suggested I try to find the first page.
I took the cover in my left hand and opened the book, my thumb and forefinger almost touching. It was impossible: several pages always lay between the cover and my hand. It was as though they grew from the very book.
‘Now try to find the end.’
I failed there as well.
‘This can't be,’ I stammered, my voice hardly recognizable as my own.
‘It can't be, yet it is,’ the Bible peddler said, his voice little more than a whisper. ‘The number of pages in this book is literally infinite. No page is the first page; no page is the last. I don't know why they're numbered in this arbitrary way, but perhaps it's to give one to understand that the terms of an infinite series can be numbered any way whatever.’

Butterworths’ previous effort to break the monopoly of Sweet & Maxwell in patent law was the loose-leaf Patent Law of Europe and the United Kingdom of 1978, by Anthony Walton and Hugh Laddie, which simultaneously demonstrated the almost infinite erudition of Anthony Walton QC, and the utter futility of trying to explain the post-1977 regime in terms of pre-1977 English case law. It was abandoned in the early 1980s. But monopolies do not last for ever, and each of Butterworths’ three ‘Modern’ textbooks had a target, and an agenda to match. Laddie, Prescott and Vitoria was meant to be everything which Copinger was not, and succeeded brilliantly, at least in its first two editions, before it became more bloated than Copinger itself. Morcom hardly pretended to be the nemesis of Kerly, despite the latter's slowness to adapt to the 1994 Act, but it did establish itself as a viable alternative. So which of these two models does the Modern Law of Patents seek to follow?

The target of the Modern Law of Patents is obviously Terrell, and the defining feature of Terrell is its sense of continuity. The editors of the 16th edition can trace their succession back in line unbroken to Thomas Terrell himself and the first edition of 1884—a genealogy which many royal houses would envy. This gives Terrell its characteristic flavour. There is a pleasant musty odour to it, as of an ancient library filled with leather-bound codices and incunabula, all engrossed on parchment or printed on vellum. A library which has not been disturbed by too many modern accessions or accretions, and where all that subversive European stuff is kept decently out of sight in an annex, to be brought in by one of the servitors when needed.

In contrast to the aristocratic virtues and ancestral vices of Terrell, the Modern Law of Patents most definitely lives up to its name, and with a vengeance. Not only is it of the 21st century through and through, but the original revolution of 2005 has devoured its children, and in its second edition the book has already repudiated its founders and rewritten most of its own brief history. Several of the editors and contributing authors are new in their posts, more than a few of the old have been retired, and the text has been almost entirely recast, despite the absence of any really significant legislative changes. Though only 5 years old, it exemplifies anything but a regal succession from one generation to the next, unless the royal house in question be that of the Russian Tzars, or the early Roman Emperors.

The present edition of the Modern Law of Patents retains Michael Fysh as Consultant Editor, but the real work seems to have been done by the editorial team of Ashley Roughton, Phillip Johnson, and Trevor Cook. Named contributors to individual chapters are Mark Anderson and Victor Warner (transactions and licensing), Richard Davis (claim drafting), Johanna Gibson (future development), Ian Karet (claim construction), and Michael Spence (theory). This list gives some idea of the ambitions of the book, whose scope extends well beyond the familiar areas of patentability, validity, infringement, and defences, to include detailed coverage of office procedure (at Newport, in Munich, and under the PCT), ownership and employee compensation, enforcement and litigation procedure (including international issues), and an interesting new chapter on arbitration. There are chapters on border controls and SPCs, as well as European competition law. In all, the editors seem to have taken infinite pains to anticipate every patent-related problem which might occur in every kind of patent-related practice, and have set themselves to provide a correspondingly wide range of answers.

As we talked I continued to explore the infinite book.
‘Had you intended to offer this curious specimen to the British Museum, then?’ I asked with feigned indifference.
‘No,’ he replied, ‘I am offering it to you,’ and he mentioned a great sum of money.
I told him, with perfect honesty, that such an amount of money was not within my ability to pay. But my mind was working; in a few moments I had devised my plan.
‘I propose a trade,’ I said. ‘You purchased the volume with a few rupees and the Holy Scripture; I will offer you the full sum of my pension, which I have just received, and Wyclif's black-letter Bible. It was left to me by my parents.’
‘A black-letter Wyclif!’ he murmured.
I went to my bedroom and brought back the money and the book. With a bibliophile's zeal he turned the pages and studied the binding.
‘Done,’ he said.

The reduction in the number of active contributors, and their shared responsibility for the majority of the substantive chapters, seems to have improved the sense of purpose, and the consistency of treatment. Compared, especially, to Terrell, the focus is strikingly modern and Euro-centric. Most pre-1977 authority is simply discarded, though a short and unattributed history of patents and their institutions has been included as an Appendix, along with essays on theory and future developments, all of which are admirably brief and to the point. In the main body of the text, the preferred technique is to start with the European Patent Convention and the European (EPO) authorities where possible, and to fit the treatment of the Patents Act 1977 and the post-1977 English cases in around these. As a random example, at paragraph 2.22 the question of when a document becomes available to the public is addressed by reference to no fewer than 12 decisions of the EPO boards of appeal, but with no reference to the classic English case of Humpherson v Syer.1 It is only for areas where the EPO is silent, as for claim construction, liability for infringement, and litigation procedure, that UK law and practice necessarily takes prominence. One may wonder whether this reversal of the Terrell order of things is dictated primarily by the desire to be as ‘modern’ as possible, or whether the underlying rationale is that patent attorneys constitute a far more numerous readership than barristers and solicitors.

The authorial technique also differs from Terrell in the way it treats decided cases. Terrell, like many texts in the common law tradition, is often written around extended quotations from cases which are accepted as particularly important or authoritative. Perhaps because decisions of the EPO do not typically lend themselves to this kind of treatment, it is rarely adopted in the Modern Law of Patents, except in the chapter on claim construction, which is almost inevitably dominated by the direct quotation of lengthy passages from Lord Hoffmann in Amgen, if only because no one has yet worked out what they actually mean. One can hardly blame Ian Karet for that state of affairs, but, while we are on claim construction, some of his more gnomic utterances could surely do with more explanation and justification, such as that at section 4.12, where it is contemplated that the ‘factual matrix’ for interpreting a claim will not only include the common general knowledge, but may go further and include ‘matters … [not in the common general knowledge] yet were known to and taken into account by the skilled person’.

Taken as a whole, the Modern Law of Patents lives up to its name. It reads well, and consistently impresses with its grasp of detail, which is matched with a sense for structure. It is impossible on short acquaintance to say how accurate it is, as that must await the judgment of practical experience, but it promises well. It states its own case for a place on the practitioner's bookshelf, but its relatively compact dimensions would make it a useful companion at court, where the extensive primary materials would come into their own, or on one's travels.

I thought of putting the Book of Sand in the space left by the Wyclif, but I chose at last to hide it behind some imperfect volumes of the Thousand and One Nights.
I went to bed but could not sleep. At three or four in the morning I turned on the light. I took out the impossible book and turned its pages. On one, I saw an engraving of a mask. There was a number in the corner of the page—I don't remember now what it was—raised to the ninth power.
I showed no one my treasure. To the joy of possession was added the fear that it would be stolen from me, and to that, the suspicion that it might not be truly infinite. Those two points of anxiety aggravated my already habitual misanthropy. I had but few friends left, and those, I stopped seeing. A prisoner of the Book, I hardly left my house.

By what I am sure must be a coincidence, the number of pages of the main text of Butterworths’ Modern Law of Patents is the magical 1001, neither more nor less.2

Summer was drawing to a close, and I realized that the book was monstrous. It was cold consolation to think that I, who looked upon it with my eyes and fondled it with my ten flesh-and-bone fingers, was no less monstrous than the book. I felt it was a nightmare thing, an obscene thing, and that it defiled and corrupted reality.
I considered fire, but I feared that the burning of an infinite book might be similarly infinite, and suffocate the planet in smoke.
I remembered reading once that the best place to hide a leaf is in the forest. Before my retirement I had worked in the National Library, which contained nine hundred thousand books; I knew that to the right of the lobby a curving staircase descended into the shadows of the basement, where the maps and periodicals are kept. I took advantage of the librarians’ distraction to hide the Book of Sand on one of the library's damp shelves; I tried not to notice how high up, or how far from the door.

But there is no need to go anywhere near the National Library of Argentina, and perhaps it is safer not to do so. The Modern Law of Patents may not quite be as all-encompassing as Borges’ Book of Sand,3 nor does it even contain the equivalent of 900,000 volumes, but it is remarkably close to being a library in one volume, and it can be yours for a very reasonable £300. Just don't swap your Terrell for it, because Terrell, like Wycliffe, is part of our heritage too, and Luther's is not the only translation of the Bible, nor the best.


Footnotes

1 (1887) RPC 407, CA. Nor is Humpherson v Syer cited in the Table of Cases.

2 The main text (excluding front and end matter, and appendices) ends on page 1003, but as the first two pages are blank, and the text starts on what is supposed to be page 3, the page count is 1001 precisely.

3 The italicized quotations are all from Jorge Luis Borges, in Andrew Hurley (tr), The Book of Sand (Penguin Modern Classics, 2001). With apologies to the IPKat, , but your reviewer thought of the analogy independently. Great (feline) minds think alike.

IP, civil procedure and arbitration in Germany

As a change from the publication of Current Intelligence pieces and editorials, here's a recent JIPLP book review:

Intellectual Property Law in Germany: Protection, Enforcement and Dispute Resolution (2nd edn.), by Klett, Sonntag, and Wilske

Published by CH Beck, 2010, ISBN: 9783406545306, Hard cover, 628 pp. Price: €98.

Reviewed by Guido Westkamp (Queen Mary, University of London)

There is very little literature on German IP law in English. This book promises, according to the publisher, to close that gap, having predominantly a practitioner audience in mind. The book covers, by way of an introduction, all aspects of German IP law. In addition to the salient categories (trade marks, designs, copyright and neighbouring rights, patents and utility models, plant varieties), specific emphasis is placed on enforcement, including the recent changes brought about by European legislation in that area. In addition, the editors provide basic information concerning practical enforcement by way of both judicial proceedings, including interim injunctions, and arbitration and mediation. Much of the text consists of a translation of each relevant German IP statute into English, complemented by a brilliant glossary. This is welcome and doubtless reflects a great deal of excellence and linguistic skill.

Overall, the editors place much emphasis on the procedural and contentious aspects of enforcement. To that end, they provide the reader with textual samples of relevant legal documents such as briefs, tables of calculating court costs, and a highly commendable glossary of legal terms. These samples provide an impression of legal writing in Germany translated into English; the samples cannot, of course, be practically used by a UK practitioner to enter into communication with German courts. Likewise, arbitration and mediation aspects in IP cover much ground, certainly much more than would be expected in a volume primarily concerning IP law.

In that sense, coverage of substantive law, especially where written for a UK audience, could have been much more extensive. Mostly, coverage is constrained to brief introductions to statutory law. Detailed examination beyond the statutory text is more or less absent, and there is hardly any reference to current debates and problem areas or to the many important recent decisions by the Federal Court of Justice in, specifically, copyright, design, and trade mark law. Likewise, the important area of unfair competition law, and its role as a form of complementary protection would have been of utmost interest specifically to readers in the UK to grasp fully the architecture of German IP law.

The bibliography on German IP law in English is, disappointingly, extremely limited. Many works referenced relate to general procedural and arbitration aspects rather than substantive IP law. Despite the admitted lack of a voluminous body of good work here, one would have expected a more concise and structured bibliography.

Overall, this reviewer has doubts as to the merits of such undertaking. For a UK lawyer in particular, many substantive divergences between the UK and the German system remain inaccessible, and in the same vein—as the editors agree—this book cannot replace the services of a specialized German attorney. Certainly, the work provides a good introduction to fundamental IP issues and doubles as a rather good introduction to civil procedure and arbitration in Germany. The glossary in particular will render this work a commendable purchase—in particular, for speakers of German. To be sure, nothing more than an introduction is promised, and the book is certainly recommended as a reference point for gaining a basic impression.

Trade marks as an indicator of innovation

Trademarks as an Indicator of Product and Marketing Innovations, by Valentine Millot, is the title of the 46-page STI Working Paper 2009/06, published in April 2009 by the Organisation for Economic Co-operation and Development (OECD). According to the Abstract,

"Non-technological innovation is a major factor of competitiveness and productivity growth in the economy, notably in the service industries. However, the measurement of non-technological innovation and of innovation in the service industries is currently very poor, as traditional data sources like R&D or patents do not apply to these types of innovations. This document presents a strong candidate for quantifying non-technological innovation: trademark data.

Trademarks constitute a rich and easily accessible source of data. Besides, several studies have shown that they are highly correlated with various innovation variables (patents, share of innovative sales). Lastly, trademarks have a large perimeter of application; they are present in almost every sector of the economy. Trademark data are then likely to convey information on two key (overlapping) aspects of innovation that are not well covered by traditional indicators: innovation in the service sectors and marketing innovation.

This paper aims at presenting trademarks, their potential link with innovations and their main statistical properties, to see if they may actually serve as an innovation indicator".

I should be grateful if any reader of this weblog could volunteer to review it. If you'd like to do so, please email me here. The review can either take the form of a standard book review, or it can be expanded to a full-length article since the subject is such an interesting one.

Precedents for the biotech and pharma industries: a book review

Reviewer: Trevor Cook (Bird & Bird. Email Trevor.cook@twobirds.com)

Citation: Journal of Intellectual Property Law & Practice, doi:10.1093/jiplp/jpp182

Book reviewed: Drafting Agreements in the Pharmaceutical and Biotechnology Industries, by Mark Anderson et al. (Eds)

Bibliographic details: Oxford University Press, 2009, ISBN: 978-0-19-953963-5, Loose leaf, pp. c. 1,200. Price: £395 (main work and first year's subscription). Web page here.

This is a book of precedents with two unique features. First, and uniquely at least for a European book (there are no doubt US ones), it focuses on a single industry sector, that of pharmaceuticals and biotechnology. Secondly, and probably uniquely for any book of precedents anywhere in the world, it bravely, and generally successfully, tries to adopt a multi-jurisdictional approach, with agreements primarily drafted and annotated from an English perspective, but with additional commentary also from a number of consultants giving German, French, Spanish, Dutch, and Swedish perspectives on them, and on some individual clauses. This latter feature, while, as the editor admits, not comprehensive, does at least provide a fascinating insight into certain aspects of these other legal systems, and if nothing else will be invaluable in explaining to those with a common law background the various sensitivities on the part of practitioners and contracting parties who are based in those other jurisdictions.

The 38 precedents that the book offers are divided into separate sections for preliminary agreements, collaborative R&D agreements, services agreements, clinical trial agreements, product manufacturing and supply agreements, distribution and marketing agreements, licence agreements and assignments—all types of agreement encountered in the pharmaceuticals and biotechnology sector, and many are very much tailored to the issues encountered in it—indeed many reflect relationships and business models, such as co-promotion, that are unique to the sector. The types of agreement tackled range from the simple to the downright ambitious. Precedents are introduced with general commentary, but commentary on specific clauses in the precedents is set out clearly and conveniently, on the opposite page to the clause the subject of comment. Despite the smaller type face of such commentary, this results, because of its thoroughness, in fewer expanses of blank space than one might fear—the only precedent to suffer from such blank space on the opposite pages is the NHS Clinical Trial Agreement and the accompanying guidance notes, these being standard documents prepared by third parties and which do not adopt the useful arrangement of the rest of the precedents and commentary. In addition to the precedents themselves and their commentary and introductions, there is some general commentary on a number of topics—regulations affecting R&D of pharmaceutical products, IP, competition law, contract law and practice, and tax and currency issues. There is also a small appendix of European Union competition law materials.

One can have every confidence in the drafting, edited as the book is by Mark Anderson, whose area of speciality this is, and who has already written a number of valuable books on technology licensing. My only criticism of the book is a minor one of presentation—some extra dividers to split up the chapters in the main section, which containing the precedents, would have been welcome. But this is a book that can thoroughly be recommended for anyone who is drafting or negotiating agreements in Europe in the pharmaceutical and biotechnology sectors.