Intellectual property law

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Intellectual property law


Bently, L., & Sherman, B. (2014). Intellectual property law (4th ed.). Oxford University Press.

Chapter Summary

Chapter 1: Copyright Subsistence
This chapter explores the basic requirements for copyright protection, including the concepts of originality, fixation, and the types of works that can be protected under copyright law. It also discusses the duration of copyright and the conditions under which copyright protection subsists.

Chapter 2: Authorship, Ownership, and Moral Rights
The focus here is on who is considered the author of a work and how ownership of copyright is determined. The chapter covers the assignment and licensing of copyright, as well as moral rights, which protect the personal and reputational interests of authors.

Chapter 3: Copyright Infringement, Remedies, and Defenses
This chapter details what constitutes copyright infringement, including direct and indirect infringement. It outlines the remedies available to copyright holders, such as damages and injunctions, and discusses possible defenses against infringement claims.

Chapter 4: Confidentiality
Confidentiality is explored as a means of protecting information that is not covered by traditional intellectual property rights. The chapter examines the legal requirements for maintaining confidentiality and the remedies available for breach of confidence.

Chapter 5: Patentability, Entitlement, and Ownership
This chapter discusses the criteria for obtaining a patent, including novelty, inventive step, and industrial applicability. It also covers who is entitled to apply for a patent and how ownership of patents can be transferred or licensed.

Chapter 6: Patent Infringement, Defenses, and Remedies
Patent infringement is explained, along with the legal remedies available to patent holders, such as injunctions and damages. The chapter also covers defenses to patent infringement, including challenges to the validity of the patent.

Chapter 7: Design Law
This chapter provides an overview of the legal protection available for designs, including registered and unregistered design rights. It explains the requirements for protection, the scope of design rights, and the remedies for infringement.

Chapter 8: Trademark Registrability
The focus here is on the criteria for registering a trademark, including distinctiveness and the ability to distinguish goods or services. The chapter also discusses grounds for refusing registration and the process of applying for a trademark.

Chapter 9: Trademark Infringement
This chapter covers the various forms of trademark infringement and the legal remedies available to trademark owners. It discusses the defenses that can be raised against infringement claims and the principles governing the enforcement of trademark rights.

Chapter 10: Passing Off
Passing off is addressed as a common law tort that protects the goodwill associated with a business. The chapter explains the elements required to establish a passing off claim and the remedies available to successful claimants.

Chapter 11: Intellectual Property, Computer Software, and the Internet
The final chapter examines the unique challenges posed by computer software and the internet for intellectual property law. It covers issues such as software licensing, copyright protection for software, and the enforcement of IP rights online.

Additional Sections:

  • Guided Tour and Resources: The textbook provides various learning aids, including topic maps, revision checklists, sample questions, and online resources to support student learning and exam preparation.
  • Glossary and Index: These sections help students navigate key terms and concepts in intellectual property law, providing quick references and definitions.

This comprehensive guide aims to provide a clear and structured understanding of intellectual property law, focusing on key principles, legal requirements, and practical applications.

Key Concepts

1. Originality in Copyright Law

  • Definition: A work must be original to qualify for copyright protection, meaning it must originate from the author and exhibit some degree of creativity.
  • Case Example: Interlego AG v. Tyco Industries Inc. (1989) – Small modifications to existing drawings were not deemed original enough to create new copyright.

2. Fixation Requirement

  • Definition: Copyright protection applies only to works that are fixed in a tangible medium, meaning they must be recorded in some form.
  • Legal Basis: Copyright, Designs, and Patents Act 1988, Section 3(2) and (3).

3. Authorship and Ownership

  • Authorship: The person who creates the work is generally considered the author.
  • Ownership: The initial owner of copyright is usually the author, but rights can be assigned or licensed to others.
  • Key Concepts: Joint authorship, works made for hire, and moral rights which protect the personal and reputational interests of authors.

4. Copyright Infringement

  • Definition: Unauthorized use of copyrighted material constitutes infringement.
  • Forms of Infringement: Direct, indirect, and secondary infringements.
  • Remedies: Injunctions, damages, and accounts of profits.
  • Defenses: Fair use, de minimis use, and parody.

5. Confidentiality

  • Protection Scope: Protects confidential information that is not otherwise protected by IP rights.
  • Requirements: Information must be confidential, disclosed in circumstances importing an obligation of confidence, and there must be unauthorized use of the information.

6. Patentability

  • Criteria: Novelty, inventive step, and industrial applicability.
  • Legal Basis: Patents Act 1977.
  • Entitlement: Who can apply for a patent, usually the inventor or their assignee.

7. Patent Infringement and Defenses

  • Infringement: Unauthorized making, using, or selling of a patented invention.
  • Remedies: Injunctions, damages.
  • Defenses: Challenging the validity of the patent, experimental use, and prior use.

8. Design Law

  • Types of Protection: Registered and unregistered design rights.
  • Criteria: New and individual character for registered designs.
  • Scope: Protects the appearance of a product.
  • Infringement: Copying the protected design.

9. Trademark Registrability

  • Criteria: Distinctiveness and the ability to distinguish goods or services.
  • Grounds for Refusal: Descriptive marks, deceptive marks, and marks that are contrary to public policy.

10. Trademark Infringement

  • Infringement: Unauthorized use of a mark that is identical or confusingly similar to a registered trademark.
  • Remedies: Injunctions, damages, and destruction of infringing goods.
  • Defenses: Fair use, non-commercial use, and comparative advertising.

11. Passing Off

  • Definition: Protects against misrepresentation that causes damage to the goodwill of a business.
  • Elements: Goodwill, misrepresentation, and damage.
  • Remedies: Injunctions and damages.

12. Intellectual Property and Technology

  • Software Protection: Copyright protection for software, software patents, and licensing issues.
  • Internet Issues: Digital rights management, online infringement, and the challenges of enforcing IP rights on the internet.

13. Moral Rights

  • Definition: Personal rights of authors that are separate from economic rights, including the right to attribution and the right to object to derogatory treatment of the work.
  • Legal Basis: Copyright, Designs, and Patents Act 1988, Sections 77-83.

14. Duration of IP Rights

  • Copyright: Life of the author plus 70 years.
  • Patents: 20 years from the filing date.
  • Designs: Registered designs up to 25 years; unregistered designs up to 15 years.
  • Trademarks: 10 years, renewable indefinitely.

These key concepts form the foundation of intellectual property law as detailed by Bently and Sherman, providing a comprehensive understanding of how various forms of intellectual property are created, protected, and enforced.

Critical Analysis

1. Balancing Protection and Access

  • Overview: The authors discuss the necessity of balancing the protection of intellectual property rights with the need for public access to information and cultural goods. Overly restrictive IP laws can hinder innovation and access to knowledge.
  • Strengths: This balance is critical in ensuring that IP laws serve both creators and the public interest. The discussion is well-supported with case law and examples.
  • Weaknesses: The book could further explore the nuances of how different jurisdictions handle this balance and the impact of international treaties on local IP laws.

2. Impact of Digital Technology on IP Law

  • Overview: The authors highlight how digital technology and the internet have disrupted traditional IP frameworks, posing new challenges for enforcement and protection.
  • Strengths: The analysis of issues such as digital rights management (DRM), online piracy, and the challenges of enforcing IP rights in the digital age is thorough and relevant.
  • Weaknesses: While the book covers the challenges well, it could delve deeper into potential solutions and emerging technologies that might address these issues, such as blockchain for IP protection.

3. Case Law and Legal Precedents

  • Overview: Bently and Sherman use numerous case studies to illustrate key points and legal principles in IP law. These cases provide concrete examples of how laws are applied and interpreted.
  • Strengths: The use of case law is a significant strength, providing real-world context and aiding in the understanding of complex legal principles.
  • Weaknesses: Some cases could be analyzed more critically, particularly in terms of their long-term implications for IP law. Additionally, the book might benefit from a discussion on the diversity of case law across different jurisdictions.

4. The Role of Moral Rights

  • Overview: The discussion on moral rights emphasizes the importance of protecting the personal and reputational interests of authors, beyond mere economic rights.
  • Strengths: The authors effectively argue that moral rights are essential for maintaining the integrity and attribution of works, which is particularly important in the creative industries.
  • Weaknesses: The exploration of moral rights could be expanded to consider the tensions between moral rights and economic rights, especially in collaborative and derivative works.

5. Economic Analysis of IP Law

  • Overview: The book touches on the economic rationale behind IP law, including the incentives for innovation and investment.
  • Strengths: The economic analysis is crucial for understanding the justification for IP rights and their impact on market dynamics.
  • Weaknesses: The economic arguments could be more robust, with a deeper dive into alternative models and the economic impact of IP laws on different sectors. Comparative economic analysis with other legal systems could also provide more insights.

6. International Perspectives and Harmonization

  • Overview: Bently and Sherman address the international dimension of IP law, including treaties and conventions like TRIPS, the Berne Convention, and the Paris Convention.
  • Strengths: The discussion on international harmonization of IP laws is critical, given the global nature of many industries affected by IP rights.
  • Weaknesses: The book could benefit from a more detailed exploration of the conflicts and compromises involved in international IP law harmonization, as well as the impact on developing countries.

7. Challenges in Patent Law

  • Overview: Patent law is thoroughly examined, particularly the criteria for patentability, ownership issues, and infringement.
  • Strengths: The detailed coverage of patent law, including the nuanced discussion of inventive step and industrial applicability, is a significant strength.
  • Weaknesses: The book could further explore the ethical implications of patenting in areas like biotechnology and pharmaceuticals, as well as the access to medicines debate.

8. Copyright in the Digital Age

  • Overview: The challenges of copyright law in the digital age are well-covered, including issues like fair use, digital copying, and the impact of the internet on copyright enforcement.
  • Strengths: The analysis of digital copyright issues is comprehensive and timely, reflecting current debates and technological advancements.
  • Weaknesses: The book might include more on future trends and potential reforms in copyright law to better adapt to digital technologies.

9. Design and Trademark Law

  • Overview: The sections on design and trademark law provide detailed explanations of the requirements for protection, infringement, and defenses.
  • Strengths: These chapters are particularly useful for understanding the practical aspects of registering and protecting designs and trademarks.
  • Weaknesses: The discussion could be enhanced with more on the strategic use of trademarks and designs in business and branding.

10. Practical Implications and Legal Strategies

  • Overview: Throughout the book, practical implications for IP practitioners are discussed, including legal strategies for protection and enforcement.
  • Strengths: The practical focus is valuable for students and practitioners, offering concrete advice and highlighting real-world applications.
  • Weaknesses: Additional case studies and examples of successful legal strategies could further enrich this practical guidance.

Bently and Sherman’s “Intellectual Property Law” provides a comprehensive and insightful analysis of IP law. While the book excels in its detailed examination of legal principles and use of case law, there is room for deeper exploration of economic implications, international perspectives, and future trends. The critical analysis underscores the importance of balancing protection and access, adapting to digital advancements, and considering the broader implications of IP law in a global context.

Real-World Applications and Examples

1. Copyright Law and the Creative Industries

Music Industry:

  • Example: The case of Bridgeport Music, Inc. v. Dimension Films (2005) exemplifies the complexities of copyright infringement in the music industry. This case involved the unauthorized sampling of a two-second guitar riff from a song by Funkadelic. The court ruled that even such a small sample could constitute infringement, underscoring the importance of obtaining licenses for all samples used in new works.
  • Implication: This ruling had significant implications for musicians and producers, emphasizing the need for careful clearance of samples to avoid legal disputes. Film and Television:
  • Example: The format of reality TV shows like Big Brother has been a subject of contention in copyright law. While the overall concept of a reality TV show cannot be copyrighted, specific elements such as the script, set design, and recorded episodes can be protected.
  • Implication: Producers need to ensure they protect and enforce their copyright on tangible elements of their shows while navigating the limits of copyright protection for show formats.

2. Patent Law and Technological Innovation


  • Example: The case of Novartis AG v. Union of India (2013) highlights the tension between patent rights and public health. Novartis sought a patent in India for an updated version of its cancer drug, Glivec. The Indian Supreme Court denied the patent, ruling that the new version did not demonstrate a significant enhancement in efficacy.
  • Implication: This case underscores the importance of balancing patent protection with access to essential medicines, particularly in developing countries. Technology Sector:
  • Example: In Apple Inc. v. Samsung Electronics Co., Ltd. (2012), Apple alleged that Samsung infringed on its design patents related to the iPhone. The court awarded Apple significant damages, though the case also led to ongoing legal battles and appeals.
  • Implication: This case illustrates the intense competition and high stakes in the technology sector, where design patents can play a crucial role in protecting innovative products.

3. Trademark Law and Brand Protection

Fashion Industry:

  • Example: The dispute between Christian Louboutin S.A. v. Yves Saint Laurent America Holdings, Inc. (2012) centered on the trademarked red sole of Louboutin shoes. The court ruled that Louboutin’s red sole had acquired distinctiveness, and thus, was eligible for trademark protection.
  • Implication: This case highlights the significance of distinctive branding elements in the fashion industry and the role of trademarks in protecting brand identity. Food and Beverage Industry:
  • Example: The case of Starbucks Corporation v. Morinaga Nyugyo K.K. (2011) involved the alleged infringement of Starbucks’ trademark by a Japanese company selling a similar product. The court ruled in favor of Starbucks, emphasizing the importance of trademark protection in maintaining brand reputation.
  • Implication: Companies must vigilantly monitor and enforce their trademarks to prevent dilution and consumer confusion.

4. Design Law and Product Innovation

Consumer Goods:

  • Example: The design of the Dyson vacuum cleaner has been the subject of several legal disputes over design infringement. Dyson has successfully protected its design through both registered and unregistered design rights.
  • Implication: Strong design protection can be a critical factor in maintaining a competitive edge in the marketplace. Automotive Industry:
  • Example: The case of Ferrari S.p.A. v. Mansory Design & Holding GmbH (2021) dealt with unauthorized modifications to Ferrari car designs. The European Court of Justice ruled in favor of Ferrari, affirming the importance of protecting distinctive car designs.
  • Implication: Automotive companies rely on design protection to safeguard their innovative designs from unauthorized copying and modification.

5. Confidentiality and Trade Secrets

Tech Startups:

  • Example: The case of Waymo LLC v. Uber Technologies, Inc. (2017) involved allegations that a former Waymo employee stole trade secrets related to self-driving car technology and provided them to Uber. The case was settled with Uber agreeing to pay significant damages.
  • Implication: This case underscores the importance of robust confidentiality agreements and trade secret protections, particularly in highly competitive and innovative industries. Pharmaceutical Research:
  • Example: In Bristol-Myers Squibb Co. v. Teva Pharmaceuticals USA, Inc. (2010), Bristol-Myers alleged that Teva had misappropriated trade secrets related to the production of a chemotherapy drug. The court ruled in favor of Bristol-Myers, highlighting the need for strict protection of proprietary research.
  • Implication: Protecting trade secrets is vital for companies investing heavily in research and development to maintain their competitive advantage.

6. International Harmonization and IP Law

Global Trade:

  • Example: The implementation of the Trade-Related Aspects of Intellectual Property Rights (TRIPS) Agreement has harmonized IP laws across member countries, setting minimum standards for IP protection.
  • Implication: While TRIPS has strengthened IP protection globally, it has also raised concerns about access to medicines and the impact on developing countries. Cultural Goods:
  • Example: The case of Folklore and Traditional Knowledge involves efforts to protect indigenous cultural expressions and traditional knowledge from exploitation. Countries like India have implemented laws to safeguard traditional knowledge under IP frameworks.
  • Implication: Protecting cultural heritage requires a balance between IP rights and the recognition of traditional and communal contributions.

The real-world applications and examples provided by Bently and Sherman in “Intellectual Property Law” illustrate the diverse and complex nature of IP law across various industries and contexts. The examples underscore the importance of IP protection in fostering innovation, maintaining competitive advantage, and balancing the interests of creators, businesses, and the public.

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