Vol. 16 No.5 (May, 2006), pp.320-323

INTELLECTUAL PROPERTY IN THE NEW MILLENNIUM: ESSAYS IN HONOUR OF WILLAM R. CORNISH, by David Vaver and Lionel Bently (eds). New York: Cambridge University Press, 2004. 322pp. Hardback $100.00/ £60.00. ISBN: 0-521-84643-9.

Reviewed by Ann Bartow, University of South Carolina School of Law. E-mail: Bartow [at] law.sc.edu

This book is a collection of twenty essays that are grouped into four categories: “General Intellectual Property,” “Patents and Plant Protection,” “Trade Marks and Unfair Competition,” and “Copyright, Moral and Neighboring Rights.”

According to the Preface:

The contributions reflect some of the most pressing practical and theoretical concerns which intellectual property lawyers face today.  These include the adaptation of intellectual property law to meet the challenges of digitization and biotechnology; conflicts between developed and developing countries over the appropriate level of intellectual property protection; the relationship between different legal traditions in a world of increasingly shared international norms; and the relationship between intellectual property rights and neighbouring areas of law. (p.xiii).

The range of writings is just as broad and sophisticated as that paragraph suggests.  This is both a strength and a weakness of the work. While many of the individual essays are well written and fascinating, they lack any coherent theme or organizing principle. Other than honoring William R. Cornish, whose lengthy and impressive curriculum vitae is included in the book at pages 289 through 298, it is a little difficult to discern the exact purpose of the book.  The essays cover a broad range of topics at high levels of complexity, so it is unlikely to serve as a treatise or reference work.  Few of the essays contain enough introductory or explanatory material to draw in or effectively educate a newcomer to the intellectual property law field.  The preface describes the project as a “festival of writing” (p.xiii).  However, it is unlikely that readers with enough expertise in one of the discreet areas of intellectual property law to appreciate the observations of the authors who contributed essays in that specialty will find all or even a majority of the essays of interest. Experts in patent law would likely skip the portions of the tome dedicated to trademarks and copyrights, and the trademarks and copyrights oriented readers are likely to confine their reading to their subject areas as well.  It is possible that all readers will find some of the essays designated “General Intellectual Property” of interest, but many of those are actually fairly specialized too.

It is unfortunate that each essay does not begin with a brief abstract that lays out a thesis to help the reader divine its substance and point of view at the outset. Some of the essays are quite connected to the scholarly contributions of William Cornish, while others do not directly engage his works.  Some are largely [*321] descriptive, while others have a distinctly normative agenda. They are diverse in tone and coverage, as well as content. Unless the book is made available in a searchable electronic format, the essays risk being overlooked by researchers who are unwilling to invest the time in perusing the volume to discern whether it might contain anything of pertinence to a particular topic. 

The book concludes with a brief index. An annotated list of the essays contained within the book follows:

1. International Intellectual Property Jurisprudence after TRIPS, by Michael Blakeney (pp.3-19).  This essay provides an overview of the legal sources of international intellectual property law, the international regimes that administer international intellectual property, and the main principles of treaty interpretation in international law, with illustrative examples.

2.  Harmony and Unity of European Intellectual Property Protection, by Hans Ulrich (pp.20-46).  This well-footnoted essay critiques aspects of unification and harmonization of intellectual property laws in the European Union as perhaps an ill-considered “rush to unity and uniformity” of process at the expense of national interests and a smooth transition to harmony and unity of the substance of the law.

3.  Oskar Hartwieg’s Thoughts On The English Legal System, by Dieter Stauder (with David Llewelyn) (pp.47-57).  This essay gives a brief overview of Oskar Hartweig’s approach to comparing English law and German law.  Hartwieg is described as a friend and contemporary of Cornish, which is apparently the reason that this essay was included in the collection.

4. Intellectual Property in a Peripheral Jurisdiction: A Matter of Policy? by Hector L. MacQueen (pp.58-76). This essay describes the origin and unique characteristics of modern intellectual property laws in Scotland.  

5.  Creating the Community Patent and its Court, by The Rt. Hon. Sir Robin Jacob (pp.79-90). This essay articulates the historical development of European Patent and European Patent Court proposals.

6.  Patents – What’s Invention Got to Do With It? by Sir Hugh Laddie. (pp.91-95). This brief essay explains that the civil law approach to intellectual property is driven by a concern for moral rights, while the common law approach has an economic justification.  Inventiveness, the author asserts, is an illogical basis for deciding what is worthy of a monopoly, because “the requirement of inventiveness is unrelated to the commercial justification for patents” (p. 94).  

7.  Common Law and Civil Law Approaches to Patent Claim Interpretation: ‘Fence Posts’ and ‘Sign Posts,’ by Donald S. Chisum. (pp.96-108).  This essay discusses the difficulties of harmonizing the patent laws of Germany and the U.K. with respect to judicial patent claim interpretation. [*322]

8. Indirect Infringement of Patents in Israel: Judge-made Law, by Amiram Benyamini (pp.109-123). This essay critiques the use of the indirect infringement doctrine by Israeli courts, warning that deriving ideas from different patent systems will lead to “an disharmonious doctrine of indirect infringement” (p.123).

9. Genomics and the Food Industry: Outlook from an Intellectual Property Perspective, by Joseph Straus (pp.124-136).  This essay discusses the intersection of genomics, the food industry, and patent law and policy, with particular attention to TRIPs.

10. From ‘Outmoded Impediment’ to Global Player: The Evolution of Plant Variety Rights, by Margaret Llewelyn (pp.137-156). This essay describes changes in monopoly protections for plant innovations in Europe, and articulates a view that as the property rights in plant materials have increased, the rights for plant breeders have decreased correspondingly.  The author expresses concern that this could become an impediment to future plant innovations.

11. Dilution of a Trade Mark: European and United States Law Compared, by J. Thomas McCarthy (pp.159-174). This essay very clearly and cogently explains the problematic and inconsistent ways in which trademark dilution theories have been adopted and distorted by courts in both the U.S. and in the European Union.

12. Unfair Competition: Is It Time for European Harmonization? by Gerald Dworkin (pp.175-188).  This essay expresses some skepticism about the necessity and advisedness of the expansion of unfair competition doctrine that might accompany a harmonization movement.

13. Coexistence Between the Tort of Passing Off and Freedom of Slavish Imitation in Polish Unfair Competition Law, by Stanislaw Soltysinski (pp.189-201).  This essay describes the tension between protecting companies from “misappropriation” of their commercial innovations, and allowing free competition, in Poland.

14. Confidentiality, Patents and Restraint of Trade, by Jim Lahore and Ann Dufty (pp.202-213).  This essay describes the “inherent tension between the protection given to confidential information or trade secrets, and that given to patents for inventions which will inevitably be published in the process of prosecuting the application to grant” (p.202).

15. The Berne Convention: The Continued Relevance of an Ancient Text, by Sam Ricketson (pp.217-233).  This essay charts the modern ascendancy of the Berne Convention within the contemporary framework of international copyright law.

16. The (New?) Right of Making Available to the Public, by Jane C. Ginsburg (pp.234-247).  This essay analyzes the scope and meaning of the “right making available” in the 1996 WIPO Copyright Treaty, using illustrative examples in addition to doctrinal analysis. [*323]

17. Private Copy Licence and Levy Schemes: Resolving the Paradox of Civilian and Common Law Approaches, by Andrew F. Christie (pp.248-258).  This essay contrasts the ways in which civilian and common law systems in Germany, Australia and the U.K. handle private copying, looks at legislative efforts to address private copying in Germany, Canada and the United States, and suggests future approaches to the issue.

18. Paternalism and Autonomy in Copyright Contracts, by Paul Goldstein (pp.259-265).  This brief essay asserts that U.S. law treats authors paternalistically with respect to copyright contracts and is critical of these practices.

19. Criminality and Copyright, by Colin Tapper (pp.266-279).  This essay considers “first, the validity of the criminalization of the infringement of intellectual property rights, in the light of history; and second, very briefly, the value of doing so, in the light of policy” (p.267).

20. Towards New Forms of Neighboring Rights Within the European Union? by Pascal Kamina. (pp.280-288).  This essay critiques the fact that copyright laws were harmonized “upward, to the highest existing standard” (p.280) with little debate or reflection, and proposes three areas for reform: “the introduction of a neighboring right for organizers of cultural or sporting events; the introduction of a broadly defined neighboring right in all recordings; and the extension of the scope of the neighbouring right of broadcasting organizations to other types of broadcasters or transmitters” (p.284).  

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© Copyright 2006 by the author, Ann Bartow.