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  • E Stanková, 'Human Inventorship in European Patent Law' (2021) The Cambridge Law Journal
    This article uses the advancements in artificial intelligence as the starting point for consideration of the role of human inventorship in European patent law. It argues that human inventorship is a necessary condition for the existence of an invention and inventive step, with the result that only products of human inventorship merit European patents. It identifies failings of European authorities to reflect this adequately in their approaches to determining patentability. Finally, it recommends recognising human inventorship as an implicit patentability requirement being an aspect of the statutory requirements for an invention and inventive step and extending applicant's disclosure duties correspondingly.
  • P Mysoor, Implied Licences in Copyright Law (Oxford University Press 2021)
    A person can lawfully engage in an act restricted by copyright if they have the licence of the copyright owner or if their actions are covered by a statutory exception. However, if a person has the benefit of neither of these, it may still be possible to imply a copyright licence to respond to copyright infringement. In contrast to the rigidity of the statutory exceptions, implied licences are more malleable in being able to respond to a diverse set of circumstances, as the need arises. Thus, implied licences can serve as a flexible and targeted mechanism to balance competing interests, including those of the copyright owners and content users, especially in today's dynamic technological environment. However, implication as a process is contentious, and there are no established principles for implying copyright licences. The resulting uncertainty has prevented implied licences from being embraced more readily by the courts. Therefore, this book develops a methodical and transparent way of implying copyright licences, based on three sources: the consent of the copyright owner; an established custom; and state intervention to achieve policy goals. The frameworks proposed are customised separately for implying bare and contractual licences, where relevant. The book goes on to analyse the existing case law in the light of these frameworks to demonstrate how the court's reasoning can be made methodical and transparent. Underscoring the contemporary relevance of implied licences, this book tests and validates the methodology in relation to three essential and ubiquitous functions on the internet - browsing, hyperlinking, and indexing.
    ISBN: 9780198858195
  • D S Gangjee, 'Trade Marks and Innovation?' in Graeme Dinwoodie and Mark Janis (eds), Trademark Law and Theory II: Reform of Trademark Law (Edward Elgar 2021) (forthcoming)
    Until relatively recently, there was a stable consensus: trade mark law had no necessary connection with innovation. This consensus was based on the origin indicating function of trade marks. There is no requirement for either the sign or the underlying product to be innovative and many protected marks consist of pre-existing words or images, such as the surnames Ford or McDonald.Trade mark law has therefore not only been historically indifferent to innovation, it has also actively policed this boundary with patent law. However cracks are beginning to appear in the consensus, for three inter-related reasons. (1) It has been suggested that successful branding generates a feedback cycle, which helps firms to recoup investments in R&D, while also encouraging such investments in the future. (2) Trade mark registrations are analysed as indirect and complementary indicators of innovation. They help to identify patterns of innovation, which can be useful for policy formulation. (3) Trade marks also help to protect and reward forms of innovation which cannot be accommodated in other fields of IP, such as service or marketing innovation. This chapter critically engages with these claims, to assess their normative implications (if any).
  • P Mysoor, 'When the Infringer is a Contractual Licensee' (2021) 43 European Intellectual Property Review 7
    Copyright infringement in the UK is defined as the doing of a restricted act without the licence of the owner of the copyright. It is also an infringement of copyright if a person does have the licence of the copyright owner, but violates its terms. When a contractual licensee violates a term of the contractual licence, it does not automatically become a copyright infringement. While there are terms the violation of which results in an action for copyright infringement, there are also those that result only in an action for breach of contract – a classic example of the latter being the term stipulating the payment of a licence fee. However, this general distinction between these causes of action has an honourable exception. The violation of a term which may otherwise have resulted only in breach of contract results also in copyright infringement if there is a repudiatory breach. This article explores this relatively obscure area.
  • P Mysoor, ''Form' in conceptualising copyright as a property right' (2020) Journal of Copyright Society of the USA
    In the UK, all works need to be recorded in some manner for copyright to subsist. While scholars acknowledge that this requirement exists, its teleological significance is not appreciated. This article argues that the need for record is a fundamental requirement in conceptualising copyright as a property right, which gives the content of copyright subject matter a form, demarcating its boundaries and triggering property protection. It analyses the rules governing form, which are sometimes expressly and sometimes impliedly stated in the statute, but not necessarily understood independently from other requirements of copyright subsistence. It goes on to explain why the need for form exists at all and why it exists as a precondition to copyright subsistence, unlike authors’ rights regimes, going on to argue that the need for form is compatible with EU law.
  • P Mysoor, 'Capturing the Dynamism of Fairness – A Common Law Perspective' in Daniel Gervais (ed), Fairness, Morality and Ordre Public in Intellectual Property (Edward Elgar Publishing 2020) (forthcoming)
  • D S Gangjee, 'Eye, Robot: Artificial Intelligence and Trade Mark Registers' in N. Bruun, G. Dinwoodie, M. Levin & A. Ohly (ed), Transition and Coherence in Intellectual Property Law (Cambridge University Press 2020) (forthcoming)
    Trade mark registration systems exist to provide useful information. Registers tell us who owns what. Until recently, it was axiomatic that registers for marks were directed at human readers – an applicant for a trade mark, trade mark registry examiners, vigilant competitors, employees of search and watching agencies as well as the occasional judge. This list now has a new entrant. What are the implications for the registered trade mark ecosystem, when algorithms begin to efficiently and comprehensively read trade mark registers? This chapter outlines the adoption of AI-enabled similarity assessment technology by search agencies, trade mark registries and watching agencies. Building on recent improvements in semantic and image searches, these algorithms identify conflicts between marks at the registry level. They provide a heuristically helpful (upstream) snapshot of conflict risks, based on two dimensions of similarity: marks and goods. However this simplified assessment may unintentionally edge out the more complex multi-factor likelihood of confusion test in a wider range of situations, including trade mark infringement analysis. The limits of these algorithms must be borne in mind.
  • S Samtani, 'International Law, Access to Courts and Non-Retrogression: Law Society v. President of RSA' (2020) 10 Constitutional Court Review (forthcoming)
    In 2014, the President of the Republic of South Africa, signed a Protocol to the SADC Tribunal which aimed at stripping the Tribunal of its individual jurisdiction. This, along with the President’s 2010 decision to effectively suspend the operations of the SADC Tribunal, was challenged at the Constitutional Court in Law Society v. President of RSA. The Court held that the President’s conduct was irrational, unlawful and unconstitutional on three grounds. In this article, I focus on the ground that the President’s conduct violated or threatened to violate the Bill of Rights and was therefore held to be unconstitutional. The right of access to justice is guaranteed through the right of access to courts under s 34 and the right to the enforcement of the Bill of Rights under s 38 of the Constitution. The right of access to courts ensures that rights-bearers have an effective remedy through the formal systems of justice. In Law Society, the Court engages in an expansive interpretation of s 34, to apply the right of access to courts to international tribunals. The Court held that South Africans have a right guaranteed by the Bill of Rights to access the SADC Tribunal. The President, in stripping the Tribunal of its individual jurisdiction, breached his duty to respect, protect, promote and fulfil the right under s 7(2). The reasoning behind this conclusion, however, is sparse. This leaves several unanswered questions about the implications of the judgment and the relationship between international law and domestic law. In this article, whilst agreeing with the outcome, I point to the gaps in the Court’s reasoning. I go on to highlight how the Constitution offers a framework for these gaps to be filled, and I briefly trace the various reasons that could have been employed by the Court in justifying its decision. In doing so, I split my analysis into three parts: first, I locate and analyse the Court’s holding in relation to s 34 and its extended application to the international plane. Second, I analyse the finding that there is a directly applicable ‘Treaty right’ that emerges from the SADC Treaty and its attendant 2000 Protocol in two ways: first, as a free-standing application of a provision of an international treaty under s 231, and second, as the application of international law as an interpretive framework under s 39(1)(b) for the proper interpretation of the right in s 34. I then go on to analyse the corresponding duty that arises from a proper interpretation of s 34 and the contours of this duty. I argue that although the Court does not explicitly invoke the principle of non-retrogression, Law Society employed a novel application of the principle to hold the President accountable under s 7(2). I explore the extent and limits of this holding, and explain how it is arguably in line with existing constitutional commitments. Finally, I discuss the implications of the Law Society judgment: for international dispute resolution mechanisms created by ratified treaties, the relationship between international and domestic law in South Africa, and access to justice.
  • Robert Burrell, 'Is Trade Mark Law Fit for Purpose? ' in A. Johnston and L. Talbot (eds), Great Debates in Commercial and Corporate Law (Macmillan 2020)
  • Robert Burrell and Michael Handler, 'Keyword Advertising and Actionable Consumer Confusion' in T. Aplin (ed), Research Handbook on Intellectual Property and Digital Technologies (Edward Elgar 2020)
  • D S Gangjee, 'Making a Place for Place-Based IP: WIPO and Geographical Indications' in Sam Ricketson (ed), Research Handbook on the World Intellectual Property Organization: The First 50 Years and Beyond (Edward Elgar 2020)
    Building on developments at the national level, WIPO has played a key role in creating Geographical Indications (GIs) as a contemporary field of intellectual property (IP). Three main initiatives of WIPO have been influential in this regard. First, WIPO served as the forum for refining the GI concept eventually incorporated into Article 22.1 of the TRIPS Agreement, where it remains the international reference point. Secondly, commencing in 1988, dedicated WIPO symposia have identified topics which both reflect and inform the grammar and structure of international GI negotiations. These symposia form part of a broader pattern of activity, alongside reports for the Standing Committee on Trademarks (SCT), technical assistance programmes and the development of informational resources. Thirdly, WIPO is responsible for the operation of the Lisbon system for the international registration and protection of appellations of origin. The recent expansion of this system, culminating in the Geneva Act of 2015, exposed fundamental tensions relating to who has a say in multilateral law making and the extent to which specialized interests can be cross-subsidized by WIPO’s general membership. Disputes relating to the reform of Lisbon go to the heart of WIPO’s constitutional framework.
  • Robert Burrell, 'Rethinking the Relationship between Registered and Unregistered Trade Marks' in G Austin et al. (ed), Across Intellectual Property: Essays in Honour of Sam Ricketson (CUP 2020)
  • D S Gangjee, 'Sui Generis or Independent Geographical Indications Protection' in Irene Calboli and Jane Ginsburg (eds), The Cambridge Handbook of International and Comparative Trademark Law (Cambridge University Press 2020)
    Geographical indications (GIs) signal provenance for regional products and function as valuable collective brands. They are increasingly protected by 'sui generis' or independent protection systems, which require the registration of a product specification. Over several decades the functions and features of these independent regimes have stabilized, forming recognizable patterns. This chapter unpacks what we mean by sui generis protection for GIs. It argues that sui generis GI registration and protection systems are important sites where GI theory meets GI practice. Traces of the distinctive, foundational normative commitments of GI protection can be seen in the architecture of sui generis GI protection.
  • Robert Burrell and Michael Handler, 'Trademark Transactions in Common Law Countries: Liberalisation and Its Limits' in I. Calboli and J. Ginsburg (eds), Cambridge Handbook of International and Comparative Trademark Law (CUP 2020)
    ISBN: 978-1-108-42309-0
  • D S Gangjee, 'Champagne' in Claudy Op Den Kamp and Dan Hunter (eds), A History of Intellectual Property in 50 Objects (CUP 2019)
  • P Mysoor, 'Does UK Really Have a ‘Closed’ List of Works Protected by Copyright?' (2019) European Intellectual Property Review 474
    It is often claimed that the UK has a ‘closed list’ of works protected by copyright. While the Copyright Designs and Patents Act, 1988 does categorise works to determine their eligibility for copyright protection, does the very existence of categories make the list closed? Does it not depend on how open-ended each category is, before a conclusion on its exhaustive nature can be drawn? This article examines these questions taking a closer look at the textual aspects of the CDPA and explores using interpretive techniques what it means to use the inherent flexibilities of the CDPA to their fullest extent within the statutory framework.
  • P Mysoor, Implied Licence instead of “New Public”?, paper presented at EPIP, Oxford, 2016
  • P Mysoor, 'Review of Enrico Bonadio and Nicola Lucchi (eds), Non-Conventional Copyright, Edward Elgar Publishing, Cheltenham, 2018' (2019) Modern Law Review [Review] (forthcoming)
  • P Mysoor, Searching for Certainty Implying a Copyright Licence, paper presented at 19th Annual Intellectual Property Scholars Conference, Chicago, August 2019
    A person infringes copyright if he exercises an exclusive right without the licence of the copyright owner. Copyright law in most jurisdictions also provides for statutory exceptions to balance competing interests addressing specific instances of permitted uses of copyright works to achieve specific policy objectives. US law also has broader and more flexible fair use provision. If a person’s actions are not covered by an express licence, by the statutory exceptions or by fair use provision, in common law countries it may be possible to imply a licence to cover these actions. In contrast to the rigidity of statutory exceptions, implied licences are characterised by their malleability to address more diverse circumstances as the need arises, achieving a fairer balance in allocation of interests. However, implication as a process is contentious and there are no established rules for implying a copyright licence. The uncertainty surrounding implying a copyright licence lies in not knowing the legitimate bases for implication and the extent to which the implied licence can extend under the given circumstances, resulting in courts not embracing implied licences as readily as they should. I argue that to allay the fears of uncertainty, one must address the process of implication itself, and make it more methodical and transparent. I draw inspiration from contract law, and in particular, the English common law rules of implication of a term into a contract, to guide the process of implying a copyright licence. Although much controversy also surrounds contractual rules of implication, contract law can inspire the legitimate bases for implication of a copyright licence. A term can be implied into a contract based on (a) the unexpressed joint intention of the parties to the contract; (b) a custom or usage in a particular trade; and (c) public policy to achieve broader objectives regardless of the intention of the parties. Applying these to copyright, a copyright licence can be implied based on (a) the unexpressed consent of the copyright owner ascertained from her conduct; (b) a custom or usage; and (c) public policy to achieve broader objectives. Having thus classified implied copyright licences based on the underlying justification for implication, at the next level certain frameworks can be developed under each basis for implication, in order to make the process of implication methodical and transparent, bringing certainty into the process of implication.
  • I Simon Fhima and D S Gangjee, The Confusion Test in European Trade Mark Law (OUP 2019)
    Historically, likelihood of confusion has been the core infringement test for trade mark law, and it remains the most frequently applied test in infringement actions by far. However, there are noticeable differences in how it is applied by the Court of Justice of the European Union (CJEU), the General Court, and national courts; and questionable outcomes when it is applied in novel situations. This book is the first comprehensive and systematic account of the confusion test within the harmonised European trade mark system. It considers how the test is applied by national trade mark registries across EU member states, by the European Union Intellectual Property Office, by national courts, and by the CJEU. It offers practical guidance, while also evaluating more recent developments such as initial-interest confusion, post-sale confusion, the infringement of non-traditional marks and consumer responses to uses of trade marks on the internet.
  • Robert Burrell, 'Unpacking Constitutional Protection for Trade Marks: The Plain Packaging Disputes before National Courts ' in C. Heath and A. Kamperman Sanders (eds), Intellectual Property and International Dispute Resolution (Kluwer 2019)