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  • G Dinwoodie and RC Dreyfuss, 'Brexit and IP: The Great Unraveling?,' (2017) 39 Cardozo L Rev (forthcoming)
    In theory, exit from Brexit will free the United Kingdom from the constraints and burdens of EU membership. It will transfer sovereignty back to the people from the technocratic rule of Brussels; replace the jurisprudence of the Court of Justice with the adjudicative power of national courts; and allow the UK to tailor its market regulation in the particular exigencies of the UK economy. Whether, as a general matter, the restoration of a classic Westphalian state enhances value either nationally or globally is an issue we leave to others to debate. We ask a different question: we explore how well the rhetoric of Brexit comports with the reality and the institutional economics of nation-state lawmaking in an era of global trade and digital communication technologies. We use intellectual property law as a concrete example. We think it a good place to consider, with potentially broad significance. Copyrights are deeply intertwined with culture and education; patents have significant implications for health and safety; and trademark law sets the rules of the road for the marketplace in products and services. Since the critique of one-size-fits-all intellectual property regimes is well-known and widely accepted, some might think that this were an area where the United Kingdom would quickly move to restore self-rule. And yet global intellectual property rights are intimately associated with the incentive system of the Knowledge Economy writ large. Moreover, intellectual property mediates the infrastructure of the modern—global—business environment. We conclude that, not only are some of the supposed sovereignty gains of Brexit unlikely to be realized by the United Kingdom (because of the web of international, regional and bilateral obligations that exist in the field) but that many of the efficiency gains of harmonization that flowed from EU membership have been vitally important to the climate for innovation in the United Kingdom. If wholly jettisoned, they would adversely affect that climate in the EU. Thus, we explore how such gains might be reconstructed in a post-Brexit environment. We foresee some room for national experimentation. But we also predict an increased importance of transnational private ordering as means of efficiency gains, the rise of “technocratic” harmonisation, and the development of different forms of political convergence. While our study is limited to Intellectual Property, we believe that many of the features that we discuss are true of other areas of law as well.
  • G Dinwoodie, 'A Comparative Analysis of the Secondary Liability of Online Service Providers' in G Dinwoodie (ed), Secondary Liability of Internet Service Providers (Springer 2017)
    This Chapter analyzes the secondary liability of online service providers from a comparative perspective, drawing on national reports on the question submitted to the Annual Congress of the International Academy of Comparative Law. The Chapter highlights two different approaches to establishing the circumstances when an intermediary might be liable: a “positive” or “negative” definition of the scope of liability. The former flows from the standards for establishing liability; the latter grows out of the different safe harbour provisions that immunize intermediaries operating in particular ways, although there can obviously be connections between the standard for liability and the conditions for immunity. The Chapter also considers the mechanism (“Notice and Takedown”) that in practice has come in many countries to mediate the responsibilities of right owners and service providers for a range of unlawful conduct that occurs using the facilities of the service providers. This mechanism typically reflects OSP responses to potential secondary liability, and have developed both in contexts when that liability is defined positively and when it is framed in negative terms. But regardless of the varying impetus for the mechanisms, they are largely implemented through private ordering (with some of the concerns that attends any such activity) that is subject to differing level of public structuring and scrutiny. The Chapter also addresses the concept of (judicially-enforceable) “responsibility without liability”, a growing feature of the landscape in this area, especially but not exclusively in the EU. Service providers in several fields, most notably intellectual property law, are being required actively to assist in preventing wrongdoing by third parties regardless of their own fault (but for example, engaging in so-called “web-blocking” of allegedly infringing sites). These mechanisms, found in several legislative instruments but developed in greater detail by courts through applications in private litigation, operate to create a quasi-regulatory network of obligations without imposition of full monetary liability. The Chapter concludes by considering briefly whether generally applicable principles can be derived from, and extended beyond, the specific context in which they first arose. This analysis leads to two central propositions, which it is argued hold true descriptively and warrant endorsement prescriptively. First, an assessment of secondary liability cannot be divorced from (and indeed must be informed by) the scope of primary liability or other legal devices by which the conduct of service providers or their customers is regulated. And, second, despite the claims that secondary liability is simply the application of general principles of tort law, secondary liability is rarely a subject-neutral allocation of responsibility among different potential defendants according to autonomous principles of fault; rather, it maps in part to the policy objectives of the different bodies of law where the claim of (secondary) liability arises.
    ISBN: 978-3-319-55030-5
  • G Dinwoodie and M Richardson, 'Publicity Right, Personality Right, or Just Confusion?' in M Richardson and S Ricketson (eds), Research Handbook on Intellectual Property in Media and Entertainment (Edward Elgar 2017)
    There is little consensus internationally as to whether and how the law should respond when celebrities find themselves subjected to unwanted public discussions of their private lives in the media (increasingly on a global basis online), and when their personal attributes are referenced without their consent in certain kinds of advertising and trade. A number of commentators have characterized such intrusions on a celebrity’s personal dignity or autonomy as simply falling among the minor inconveniences of being a celebrity, insufficient to warrant legal protection given important social values such as freedom of speech and cultural pluralism. The lack of consensus is reflected in the uncertain shifting legal lines drawn around celebrity protection, especially in common law jurisdictions which, unlike many civil law jurisdictions, do not adhere to the idea of a full-scale personality right. In this chapter, we canvass the diverse devices that the common law courts have deployed to deal with the grant of celebrity rights. We note and support the messy multivalence we find recognised in common law approaches given the range of dynamic interests that are at play. Such heterogeneity of values might also be relevant to the curtailment of celebrity rights. Thus, we equally support a flexible approach to the limitations, defences and other points at which discretion may be exercised by judges to find a balance between the interests/rights that may be claimed for celebrities (human and otherwise) in controlling the uses of their personal attributes in advertising and trade, and the countervailing interests/rights that others may seek to maintain including in freedom of speech and cultural pluralism.
  • G Dinwoodie, 'Territorial Overlaps in Trademark Law: The Evolving European Model' (2017) 92 Notre Dame Law review 1669
    This is a contribution to a symposium on overlapping intellectual property rights. Trademark law has to address “overlapping” rights in a number of contexts. This Article tackles the territorial overlap of competing trademark rights. One cause of the increasing conflict between overlapping trademark rights is the trend in international trademark law to develop (mostly, but not entirely, administrative) mechanisms designed to extend rights more easily and more quickly beyond the borders of a single nation state. These efforts reflect pressures caused by global trade and digital commerce. But these mechanisms, purportedly prompted by and designed to further international trade, can cause problems that both hinder trade and arguably undermine competing social and economic norms (especially as the normative effects of unthinking internationalisation are increasingly questioned). The difficulties caused are particularly acute when rights have been granted in systems that do not require use in order to secure a trademark registration, and where registrations are of ever greater reach. This is true of the European Union Trade Mark system, which is one such mechanism designed to extend the geographic scope of rights beyond the nation-state. Under that arrangement, a single application can secure a right valid throughout the entire territory of the European Union and that can be enforced in one proceeding via the grant of an EU-wide injunction even without the plaintiff having used its mark. The application can be filed without even an intent to use the mark in question and the territorial scope of the resulting European Union Trade Mark (or EUTM, formerly called a Community Trade Mark or CTM) is defined by the external political boundaries of the EU, which now encompasses twenty-eight member states. Despite this, courts in the European Union have in a number of recent cases resisted some of the innovations of the EU system and have affirmed the enduring pull of a different conception of territoriality. This Article defends many of these acts of resistance, and supports further modifications of the EU model, in part because of the increased problem of overlapping rights. That increased overlap requires a critical reading of these innovative mechanisms and attention to a broader range of values in implementing the model. These propositions are supported both by a more theoretically complex conception of trademark territoriality and a richer normative account of the European project. The Article endorses the role of national (or at least sub-Union) rights not simply as a necessary irritant flowing from the nature of trademarks. Rather, they should perhaps be embraced normatively as part of a trademark agenda that blends regard for economic expansion, free movement of goods, consumer protection, and economic efficiency (encompassing transaction costs) as well as the maintenance of diverse social, cultural, and linguistic traditions within Europe.
  • G Dinwoodie, L Bently, R Arnold and E Derclaye, 'The Legal Consequences of Brexit Through the Lens of IP Law' (2017) 101 Judicature 64
    This paper discusses the consequences on the main intellectual property rights (patent, copyright, trade marks and designs) as well as on trade secrets of a hard Brexit, namely an exit of the United Kingdom from the European Union which means that it will not longer be bound by EU law.
  • G Dinwoodie, 'Diversifying Perspectives of the International Intellectual Property System' in C Geiger (ed), The Intellectual Property System in a Time of Change: European and International Perspectives (Lexis Nexis 2016)
    The Essay is a contribution to the volume celebrating the 50th Anniversary of CEIPI. It considers the future to development of the international intellectual property system by looking at how intellectual property is framed in international debates. The Essay contemplates the role of economics, trade, development, culture and human rights, and highlights the different approaches to the relationship between intellectual property and these different fields of knowledge. It argues that we must be pluralistic about the ways in which these five frames or bodies of knowledge interact with intellectual property law. That is because these different frames possess varying characteristics, and will operate effectively in different institutional settings. Indeed, we might not expect or want each frame to have equal weight in every setting.
  • D S Gangjee, 'Proving Provenance? Geographical Indications Certification and its Ambiguities' (2016) World Development (forthcoming)
    With their historic links to a specific region, GIs are increasingly valued for their endogenous development potential. But precisely what does legal recognition as a GI guarantee? Drawing on the EU's registration system as a model, this paper investigates the certification of provenance and authenticity by public authorities. Recent empirical findings reveal that considerable flexibility exists within the certification process, which permits the loosening of linkages to a region and dilutes the certification guarantee. The present over-reliance on the system’s ability to certify could be usefully remedied if greater attention is paid to the individual product specification design.
  • D S Gangjee, 'Geographical Indications and Cultural Rights: The Intangible Cultural Heritage Connection?' in Christophe Geiger (ed), Research Handbook on Human Rights and Intellectual Property (Edward Elgar 2015)
    Can the protection of Geographical Indications (GIs) – signs which indicate the regional provenance of products such as Prosciutto di Parma, Darjeeling and Cognac – be integrated within a cultural rights framework? Since there has been recent interest in GIs as a potential vector for achieving cultural heritage goals, this suggests an affinity with cultural rights. To develop this line of enquiry, this chapter focuses on two threshold issues: (1) To what extent can the notion of cultural heritage act as a bridge or link between GI and cultural rights protection paradigms? (2) Alternatively, moving beyond a conventional human rights framework, are there parallels between GIs and the notion of intangible cultural heritage (ICH) – as recognised in international legal instruments by UNESCO in particular – which could be more fruitfully developed?
  • G Dinwoodie (ed), Intellectual Property And General Legal Principles: Is IP A Lex Specialis? (Edward Elgar Publishing 2015)
  • Mysoor, 'Protecting the Unprotected Database' (2015) 131 Law Quarterly Review 557 [Case Note]
  • G B Dinwoodie and D S Gangjee, 'The Image of the Consumer in European Trade Mark Law' in Dorota Leczykiewicz and Steve Weatherill (eds), The Image(s) of the Consumer in EU Law (Hart 2015)
    This chapter contributes to a book on the image of the consumer in EU law by exploring the role of the average consumer in European trade mark law. There is in fact a variable concept of the consumer within European trade mark law and the chapter first sets itself the task of mapping these variations. We suggest that for structural reasons European trade mark law may be compelled to work with a differentiated concept of the consumer. However these variations should be approached relationally, with an awareness of the points of difference and their basis. In particular, we suggest that most efforts by courts to identify or construct consumers and the marketplace they inhabit are blended exercises that are part-empirical and part-normative. Explicitly recognising this blend will, we believe, enable a richer debate about the role played by the consumer in European trade mark law and the evidence or considerations to which courts might have regard. It also allows us to explore whether trade mark law in Europe ought — either to achieve its own objectives or to contribute to the broader European project — to adopt an approach to the consumer that is more empirically or normatively grounded as required by the legal context and whether different national courts are (despite different methodological traditions that survive European harmonisation) converging on a common approach to the ‘trade mark consumer’.
  • G Dinwoodie and Dev S. Gangjee, 'The Image of the Consumer in European Trade Mark Law' in Dorota Leczykiewicz and Stephen Weatherill (eds), The Image(s) of the Consumer in EU Law (Hart Publishing 2015)
    This chapter contributes to a book on the image of the consumer in EU law by exploring the role of the average consumer in European trade mark law. There is in fact a variable concept of the consumer within European trade mark law and the chapter first sets itself the task of mapping these variations. We suggest that for structural reasons European trade mark law may be compelled to work with a differentiated concept of the consumer. However these variations should be approached relationally, with an awareness of the points of difference and their basis. In particular, we suggest that most efforts by courts to identify or construct consumers and the marketplace they inhabit are blended exercises that are part-empirical and part-normative. Explicitly recognising this blend will, we believe, enable a richer debate about the role played by the consumer in European trade mark law and the evidence or considerations to which courts might have regard. It also allows us to explore whether trade mark law in Europe ought — either to achieve its own objectives or to contribute to the broader European project — to adopt an approach to the consumer that is more empirically or normatively grounded as required by the legal context and whether different national courts are (despite different methodological traditions that survive European harmonisation) converging on a common approach to the ‘trade mark consumer’
  • D S Gangjee, 'Trade Mark Dilution in India' in Daniel Bereskin (ed), International Trademark Dilution (Thomson Reuters 2015)
  • G Dinwoodie and Mark D. Janis, 'A Century of Trademark Law Scholarship' in Graeme B. Dinwoodie and Mark D. Janis (eds), Trademark And Unfair Competition Law: Themes And Theories (Critical Concepts In Intellectual Property Series) (Edward Elgar Publishing 2014)
  • Mysoor, 'A Pirate Too Needs to be Heard: Procedural Compromises in Online Copyright Infringement Cases in the UK' (2014) 3 Laws 553
  • G Dinwoodie and Rochelle Dreyfuss, 'An International Acquis: Integrating Regimes and Restoring Balance' in Daniel Gervais (ed), International Intellectual Property: A Handbook Of Contemporary Research (Edward Elgar Publishing 2014)
  • G Dinwoodie, 'Dilution as Unfair Competition: European Echoes' in Rochelle Dreyfuss and Jane Ginsburg (eds), Intellectual Property At The Edge: The Contested Contours Of IP (Cambridge University Press 2014)
    This response to Barton Beebe explores whether contemporary experience in Europe supports the central arguments advanced by Beebe in The Supressed Misappropriation Origins of Trademark Antidilution Law. The development of E.U. law is largely consistent with the idea that dilution law is in part an effort to install a misappropriation regime, at least insofar as the objects of protection are trademarks with a reputation (increasingly, a smaller caveat as the scope of potential trademark subject matter expands and the reputation threshold falls). This has important local consequences: if dilution law is in truth is a law against misappropriation, the Court of Justice of the European Union has greater scope to contribute to the creation of a nascent European law of unfair competition. But examining recent European case law also suggests that understanding misappropriation as part of a broader system of unfair competition may moderate the formalist critique of misappropriation as wholly indeterminate and unlimited. Understood in its unfair competition milieu, a misappropriation-based concept of dilution retains some potential for measured delineation of the edges of protection.
  • Mysoor, 'Of Bollywood Songs, Film Producers and Collecting Societies: Locating the Rights of the Composers' (2014) 10 Indian Journal of Law and Technology 60
  • G Dinwoodie, 'Secondary Liability for Online Trademark Infringement: The International Landscape' (2014) 36 Columbia Journal of Law and the Arts 463
    In U.S. law, the term “secondary liability” is an umbrella term encompassing a number of different types of trademark infringement claim. Its essence is that liability does not turn on the defendant itself using the plaintiff’s mark, but rather on the defendant being held responsible for the infringements occasioned by the use of the plaintiff’s mark by a third party infringer. Secondary liability claims might be strategically preferable to trade mark owners over bringing actions against the primary infringer. The advent of the Internet has only enhanced some of these strategic benefits. However, secondary liability also creates the spectre of highly intrusive regulation of the business of intermediaries operating in the online environment. In these cases, we must balance the rights of the mark owner with enabling legitimate development of innovative technologies that allow new ways of trading in goods. The online context of many contemporary uses of marks has also, as in other areas of intellectual property law, prompted a demand for international solutions to the potential liability of online intermediaries for secondary trademark infringement. And indeed most countries have long recognised a cause of action for engaging in conduct that U.S. law would call secondary trade mark infringement. This Article assesses the international treatment of these causes of action, first by looking at international law principles conventionally understood, namely, state to state obligations regarding the content of domestic law. There is little of relevance to the secondary liability question if the international landscape is understood in those terms. Thus, the Article proceeds also to analyse commercial practices that are contributing to soft transnational law and to compare the regimes adopted by the United States and the European Union as leading examples of approaches to the secondary liability question. The Article focuses on parallel fact patterns that have been litigated to appellate level in a number of countries. Thus, the paradigmatic cases considered are (1) claims brought against online auction sites, each essentially alleging that the auction site could have done more to stop the sale of counterfeit and other allegedly infringing items by third parties on its web site; (2) claims brought against search engines alleging that the sale of keyword advertising consisting of the trademarks of parties other than the mark owner resulted in infringement (normally, by causing actionable confusion).
  • G Dinwoodie and Mark Janis (eds), Trademark and Unfair Competition Law: Doctrinal Debates (Edward Elgar Publishing 2014)

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