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  • 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)
  • 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, '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: https://papers.ssrn.com/sol3/papers.cfm?abstract_id=2923890
  • 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
  • D S Gangjee, 'From Geography to History: Geographical Indications and the Reputational Link' in I Calboli and WL Ng-Loy (eds), Geographical Indications at the Crossroads of Trade, Development, and Culture in the Asia-Pacific (CUP 2017)
    For well over a century, the notion of a distinctive link between regional products and their places of origin has been articulated in the language of terroir. This type of causal relationship – where the physical geography factors within a region leave their distinctive traces upon the end product – is reflected in the definition of a geographical indication (GI) found in Article 22.1 of TRIPS. However this chapter focuses on the underdeveloped, yet increasingly utilised possibility of a link between product and place resting on a ‘reputation… that is essentially attributable to its geographic origin’. As GI subject matter expands beyond wines, spirits and agricultural products to encompass confectionaries, charcuterie, cheese and crafts, a deterministic ‘physical geography’ explanation loses traction. This chapter proposes that historical evidence can complement that of geography, allowing us to more meaningfully answer the question of when a product’s reputation can be said to be essentially attributable to its geographical origin.
  • D S Gangjee, 'GIs beyond Wine: Time to Rethink the Link' (2017) International Review of Intellectual Property and Competition Law 129
    DOI: https://doi.org/10.1007/s40319-017-0556-3
    The prototype of wine has undeniably shaped the norms, form and substance of sui generis GI systems. In epistemological terms, it has been ‘‘in vino veritas’’ for some time. A question which remains (strategically) neglected is this: to what extent can a regime designed around the particularities of wine be adapted to accommodate cheese, charcuterie, coffee as well as crafts and textiles? With exquisite irony, GI law lacks a reliable map when it comes to appropriate subject matter. This essay explores some of the tensions this generates.
  • S Fredman, M Campbell, S Atrey, N Ramalekana, S Samtani and J Brickhill, OxHRH Submission to the Committee on the Convention on the Rights of Persons with Disabilites (Oxford Human Rights Hub 2017)
    Under the auspices of the Oxford Human Rights Hub, Director Sandra Fredman (Oxford) and Deputy-Director Meghan Campbell (Birmingham) joined with Shreya Atrey (Bristol) and Oxford DPhil Candidates Sanya Samtani (OxHRH Associate), Jason Brickhill (OxHRH Research Director) and Nomfundo Ramalekana (OxHRH Blog Editor) have made a submission to the CRPD Committee on the Article 5 of the Convention. The report recommends that: the meaning of equality in the Convention needs to be clearly defined and consistently applied. We recommend that the Committee adopt the four dimensional model of transformative equality; specific measures need to be considered an essential element of achieving transformative equality; intersectional discrimination be defined as being based on two or more grounds that is inextricably synergistic and cannot be separated out into discrimination based on each ground individually; and reasonable accommodation and undue burden need to be assessed from the perspective of the persons with disabilities. The Committee’s draft General Comment is an important chance to contribute to the evolution as equality in international human rights law and we welcome the opportunity to participate in this development.
  • D S Gangjee, 'Proving Provenance? Geographical Indications Certification and its Ambiguities' (2017) World Development 12
    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.
  • 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.

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