IPKAT IN OXFORD

Today the IPKat attended Professsor Gerald Dworkin's talk, "Unfair Competition: Is the Common Law in Need of a Loose Cannon?", hosted by the Oxford Intellectual Property Research Centre at St Peter's College. The focus was on the breadth of the unfair competition action at common law and on the place of misappropriation within in it. He began by identifying three possible ingredients of an unfair competition tort: Confusion (or Misrepresentation); Attack (on another trader) and Theft (or Misappropriation) a.k.a. CAT or MAT. The first two of these ingredients were enshrined in Art 10bis of the Paris Convention, while the third - misappropriation - was not. Nor was misappropriation singled out in Art 39 of TRIPs. However, this did not mean that there was no place for misappropriation within unfair competition doctrine.

Professor Dworkin described the manner in which passing off law in the UK had expanded the concepts of goodwill, confusion and damage so as to address new forms of unfair competition and changing trade practices. Nonetheless, passing off has not been stretched so far that it will provide relief against misappropriation alone in the absence of misrepresentation. This was not always the case in the US, where misappropriation without confusion was recognised in the 1918 Supreme Court case of INS v Associated Press. However, this decision was never fully accepted and was later restricted to the protection of "hot news" in NBA v Motorola.

After reviewing the ad hoc protection accorded to acts of misappropriation in perceived "problem cases" such as semi-conductor chips and database rights, he went on to consider why the common law is reluctant to grant protection against misappropriation per se and how certain other jurisdictions were coping with the same issue. He noted that while countries such as France, Germany and Switzerland ostensibly provide protection against misappropriation, they employ an "X factor" to distinguish deserving cases from undeserving cases.

In concluding, Professor Dworkin conceded that before any doctrine of misappropriation was recognised, it would be necessary to consider the economic arguments for and against such an expansion. He also pointed out that new forms of action and new rights e.g. the EU unregistered design right, were already eating into the territory where such relief may be desirable.

The IPKat says that this is an area that needs further investigation. While the prospect of competitors being able to take a "free ride" on the efforts of others is instinctively unappealing, the risk of measures that would stifle competition is equally unattractive.

Cat mat here, here and here
Unfair competition here and here