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Thursday, 4 September 2014

Never mind the monkey: IP ownership problems and overlaps in Europe

Nuno de Araujo Sousa e Silva's The Ownership Problems of Overlaps in European Intellectual Property is a slender book, the cover of which is decidedly bluer than the illustration on the right.  A regular contributor of book reviews and Current Intelligence notes to the Journal of Intellectual Property Law & Practice (JIPLP), Nuno, who belongs to the Portuguese Catholic University - Porto; Instituto Superior de Contabilidade e Administração do Porto, wrote this work following his pursuit of a Masters programme last year at the Munich Intellectual Property Law Center (MIPLC), an organisation which is an adventurous offshoot of that city's Max Planck Institute for Innovation and Competition.

The publisher doesn't provide a web-blurb, but the corresponding paper on SSRN conveniently provides the following abstract:
Due to a variety of factors, Intellectual Property rights are expanding and, as a result, overlapping more than ever before. This phenomenon poses a wide array of problems and challenges to a system which was initially devised as comprising a set of isolated compartments, each with its defined purpose, object, and specific set of rules. As no careful thought on the interaction of these rights in cases of overlapping protection seems to have been given by the legislators yet, the solutions to the arising questions are far from obvious or established [alas, this is not the only area in which the legislators appear not to have given thought, though the subject in general is now receiving far more scholarly and professional attention: the publication last year of two books on overlapping rights, both reviewed here, and the focus of the forthcoming INTA conference in Munich this December testify to this].

Among the diverging rules between IPRs the ones concerning ownership and entitlement can easily lead to situations where different rights on the same object are owned by different persons. Thus the question emerges: what happens when two (or more) different people own different rights whose object is the same? How to solve the situation where objective cumulation is not mirrored by subjective cumulation?

If a professor creates an original database and is accordingly entitled to copyright and her employer, the University, has put substantial investment in its creation, owning the sui generis right therein, how can exploitation occur? What rules regulate the conflict between the creator of a logo and the company that registers and uses it as a trade mark?

These questions are analysed under European law, focusing on the existing corpus of EU primary and secondary legislation and jurisprudence. When the EU body of law provides no guidance or a national example is required, that analysis focuses on three countries: Germany, France and the UK, other jurisdictions being also considered.

The book starts by describing the occurrence of overlaps and the dangers deriving from split ownership. A study of the diverging rules of copyright ownership is necessary in order to define some operative concepts. The issue is then considered in five specific cases of overlapping protection: trade marks and designs, trade marks and copyright, designs and copyright, database sui generis right and copyright and, finally, copyright and patents in the field of computer programs.

From the analysis of these cases some conclusion are drawn regarding the way legal rules answer to the split ownership problem and to what extent the existing approach is commendable.

The book ponders and suggests some solutions to the problem, namely the convergence of ownership rules, the avoidance of overlaps tout court, the prevalence of the closest regime, abuse of rights, implied licences, and expanding copyright solutions by analogy. It is suggested that the latter is the best approach even though a combination of some of the mechanisms described is to be expected. It concludes by considering possible legislative intervention and the form it might take.
This Kat agrees that the lack of congruity of ownership rules in the case of overlap is a problem, and he is curious to see how the possible legislative solution suggested by Nuno might pan out.  Merpel however is not convinced at all that the existence of a problem is itself an argument for legislative intervention. Given the number of situations in which IP rights overlap, together with the circumstances of their creation and exploitation, it seems to him that any law that addresses and seeks to resolve the problems in full is likely to cause fresh problems of its own.  Given the fact that, in a world where there seem to be almost as many IP rights as microbes, she wonders if the fact that there are relatively so few litigated cases involving this area leads to the conclusion that the best thing to do with this problem is to leave it alone.

Bibliographic data: paperback, 116 pages. ISBN print: 978-3-8487-1395-0; ISBN online: 978-3-8452-5449-4.  Price for the printed version: 29 euro. Rupture factor: none. Book's web page here.


Anonymous said...

My apologies for what may seem a banal question, but why is overlap a problem?

Real property has long dealt with overlap in the form of join tenancy and mortgagers - many other areas of law have a series of rights owners without "a calamity" being declared.

Much ado about nothing here...?

Anonymous said...

Chat alors !

Nuno Sousa e Silva said...

Overlaps are not necessarily a problem. But overlapping IPRs might generate some problems. For instance, (most) IPRs are limited in time (and for a good reason). If we allow overlaps (e.g. copyright + designs) this might create a problem of allowing extension of protection beyond 25 years (thus, a bigger restriction in competition).

When it comes to ownership, there are two things to be distinguished here. One is two people owning the same thing (joint tenancy). Another one is two persons having different IPRs that are independent but overlap. The book focuses on the latter. But even with the former it does not seem so simple to use rules that were conceived with "real" property in mind to goods that are non-rivalrous.

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