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  • 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.
  • 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.
  • 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.
  • 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.
  • S Samtani, 'Deporting Rohingya Refugees: Indian Supreme Court Violates Principle of Non-refoulement' (2018) Oxford Human Rights Hub Blog
    On 4 October 2018, a three judge bench of the Supreme Court of India refused to stay the deportation of seven Rohingya refugees from India to Myanmar. These men were arrested and incarcerated in 2012 for the offence of entering the country without valid documentation. After having served their three-month sentence, they were detained for an additional period of six years. This deportation is a flagrant violation of India’s international human rights obligations.
  • P Mysoor, 'Exhaustion, Non-Exhaustion and Implied Licence' (2018) International Review of Intellectual Property and Competition Law 656
    DOI: 10.1007/s40319-018-0721-3
    This article explores how exhaustion and non-exhaustion of certain rights can be more coherently explained using the common law doctrine of implied licence. Exhaustion, as the name suggests, only focuses on the effect of the first sale or other transfer of ownership of the original or the copy of the work on the copyright owner, namely the consumption of the distribution right. Although the consumption is distinctly for the benefit of the transferee of the original or the copy, the provisions in the directives on exhaustion do not reveal the effect of exhaustion on these transferees, nor the policy justifications that drive such consumption. These provisions only provide simplistically that the distribution of goods exhausts, but the provision of services does not. This leads to certain misconceptions that exhaustion cannot occur if the copy of the work is not in a tangible medium and that for all provision of services authorisation is required. The doctrine of implied licence can help address these concerns. Instead of regarding exhaustion as a statutory phenomenon, reframing it as a licence implied by statute changes the focus from the right lost by the copyright owner to the permission gained by the transferee. Further, the doctrine of implied licence is sensitive to the justifications that drive the implication of the licence, addressing the question as to why exhaustion must occur. Therefore, a framework called the Implied Licence Framework for Exhaustion is proposed here, which not only offers a better explanation for exhaustion and nonexhaustion, but also dispels the misconceptions.
  • S Samtani, 'Global South: India decriminalises homosexuality through Supreme Court verdict' (2018) Southern African Liaison Office
    On 6 September 2018, after over twenty-four years of litigation, and several more of advocacy, the Supreme Court of India declared section 377 of the Indian Penal Code unconstitutional to the extent to which it criminalised homosexuality. A constitutional bench of the Court, comprising Justices Malhotra, Nariman, Khanwilkar, Chandrachud, and Chief Justice Misra, held that the criminal provision was used to prosecute, harass, and blackmail the LGBTI+ community, including people who engaged in consensual sexual acts with same-sex partners, and it therefore flagrantly violated the equality, dignity and privacy guarantees of the Constitution of India.
  • L Bently, B Sherman, D S Gangjee and P Johnson, Intellectual Property Law (5th edn OUP 2018)
    Intellectual Property Law is the definitive textbook on this subject - an all-embracing and detailed guide to intellectual property law. It clearly sets out the law in relation to copyright, patents, trade marks, passing off and confidentiality, whilst enlivening the text with illustrations and diagrams. (NB: Dev Gangjee has taken responsibility for Section IV: Trade Marks and Passing Off from the 5th ed.)
  • D S Gangjee, 'Paying the Price for Admission: Non-Traditional Marks across Registration and Enforcement' in I Calboli and M Senftleben (eds), Non-Conventional Marks: Critical Perspectives (OUP 2018) (forthcoming)
    This chapter makes the case for joined-up thinking when approaching non-traditional signs in trademark law. Over the past three decades, trade mark registration has moved from up-front exclusions for certain categories of signs (no shapes, no colours) towards cautious and incremental acceptance. However the policy concerns generated by the grant of legal monopolies in such signs remain equally relevant today. The grant of an abstract colour mark to one trader closes off a part of the colour spectrum to others. Can we therefore allow such signs in to the system while successfully managing the tensions generated by their admission? Responding to this challenge, this chapter explores two potential responses. First, when permitting such marks to be registered, should we correlate the mark as characterised at the time of registration—agreeably modest in its scope and ambitions—with the mark as deployed in an enforcement context, where it otherwise tends to be read more generously? Second, when it comes to regulating non-traditional marks, should we move beyond historic upstream solutions—in the form of exclusions from registrability—and proactively consider additional scope limitation mechanisms when applying infringement tests and defences? Drawing on a range of EU and US decisions across various categories of non-traditional marks, the chapter argues that both questions should be answered affirmatively. Section II reviews the manner in which non-traditional marks came to be accommodated within trademark registration systems. Section III focuses closely on the characterisation of the mark at the time of registration. Trademark registration calls for a non-traditional mark to be depicted or represented (always), described (often) and classified according to type (where possible). This characterisation has profound consequences, as the ongoing Louboutin (C-163/16) red-soled shoes litigation before the Court of Justice demonstrates. Once characterised, the mark is then channelled into the relevant stream of substantive examination analysis. Since characterisation matters, applicants have learned to adapt, in order to overcome obstacles to registration. However where characterisation techniques have been used to subvert substantive criteria, registries and courts have responded by overriding the applicant’s own preferred characterisation with an objective assessment of the mark’s content. Section IV outlines the importance of consciously connecting the scope of the mark as characterised for the purposes of registration with its scope for the purposes of infringement. Section V concludes.
  • P Mysoor, 'Proprietary Estoppel and Copyright Law' (2018) King's Law Journal 470
    In the copyright context, courts have applied proprietary estoppel to assess whether an implied bare copyright licence has become irrevocable. In doing so, courts have derived principles of proprietary estoppel developed in land law. However, in the land law context, in the last few decades, courts have moved towards a unified approach to proprietary estoppel, resulting in a loss of nuance. In particular, the acquiescence-strand of proprietary estoppel has fallen been neglected in this process of unification. This article argues that in order to do justice in copyright cases, the acquiescence-strand of proprietary estoppel must be resurrected, and the trend in land law towards a unified approach must be reversed, bringing more nuance into the assessment of proprietary estoppel in copyright cases.
  • P Mysoor, Reflecting the dynamism of ‘fairness’ in copyright law: a users’ rights perspective, paper presented at ATRIP, Helsinki, August 2018
    Copyright law takes a formalistic approach to fairness, especially in relation to the users’ rights. There is a presumption of fairness in the protection of the owners’ rights. In the circumstances where it is fairer for the users’ rights to be given effect to as opposed to the owner’s rights, this formalistic approach finds expression in most jurisdictions, in specifically crafted and narrowly defined statutory limitations and exceptions. Even if these exceptions have some open-endedness in the form of fair dealing provisions in most jurisdictions, there is an underlying mandate as to the circumstances within which the use should be found fair – such as research, review or criticism. Further, certain jurisdictions such as the EU declare in their laws that the list of statutory limitations and exceptions is a closed list. However, fairness may not always lie within the four corners of the express provisions of the limitations and exceptions. Fairness is far too dynamic to be captured within the statutory provisions or the legislative process, especially in the current technological milieu. In this vein, section 171(3) of the UK Copyright, Designs and Patents Act, 1988 had been enacted to preserve the open-ended powers of the common law judges to prevent or restrict copyright enforcement in public interest. An historical review of cases reveals that the judges have exercised this power to achieve a fair result where no other statutory limitation or exception could assist. Some commentators believe that the implementation in the UK of the Information Society Directive (2001/29) requiring the list of statutory limitations and exceptions to be a closed list has reduced the scope of s 171(3). This paper explores the scope of the common law powers under this provision, its legislative history, its survival since the enactment of the Information Society Directive and its potential role upon Brexit.
  • D S Gangjee, 'Trade Marks and Allied Rights' in R Dreyfuss and J Pila (eds), The Oxford Handbook of Intellectual Property Law (OUP 2018)
    This chapter outlines the principal features of trade mark protection regimes, drawing primarily on EU and US materials to illustrate the underlying legal issues. It includes an outline of the principal allied rights; namely (i) unfair competition, (ii) passing off, (iii) publicity rights, (iv) geographical indications, and (v) domain names. The overview traces the incremental re-orientation of trade mark regimes in recent decades as they have moved beyond their traditional remit of origin-indication protection in response to claims that brand image needs to be better accommodated. In some cases, the ensuing broader scope of protection can have a detrimental impact on speech and inhibit marketplace competition. A draft is available at: