Book reviews

Intellectual Property in Government Contracts: Protecting and Enforcing IP at the State and Federal Level, is an intriguing book by the trilogy of James G McEwen, David S Bloch and Richard M Gray. The first two named authors are in private practice, while the third has the grand title of Associate General Counsel (Acquisition & Logistics), Department of Defense. One imagines the different perspectives which their careers must have conferred upon them, and the habits of thought which must separate the approaches of the procurer and the procuree. The web-blurb, from the New York desk of revered British publishers Oxford University Press, is unusually short for a book costing so many dollars:

"This book provides a unique comprehensive survey of U.S. federal intellectual property procurement laws as well as a detailed analysis of state procurement rules. Encompassing the concerns of the private and government sectors, this book is a groundbreaking, valuable resource for both sectors. It gives an extensive overview of U.S. federal and state procurement systems, and strategies for handling government misuse of private-sector IP rights.

The book is intended for an expanding audience of academics, government lawyers, in-house and outside private attorneys specializing in procurement law, and practitioners of international and intellectual property litigation".

Given the large scale of US Federal military research and its potential for both military and civilian exploitation (something this reviewer first discovered to his immense and lasting astonishment at an LES meeting over 20 years ago), it is not surprising that this book is long and detailed (it would have been longer, were it not for the lean, clean prose). What was unexpected, though, was the amount of government IP activity that takes place at State level, occupying far more than half the book. Copyright is a culprit here, with contracts relating to computer programs playing an important role. A further surprise, given the foreigner's belief that Americans prefer to spend all their spare time in court, is the relative dearth of case law in the footnotes. But given the application of principles of sovereign immunity and the facility to slip a provision into a contract calling for a more discreet form of dispute resolution where appropriate, it's not a surprise after all.

Bibliographic details: xiv + 596 pages, soft covers. ISBN13: 9780195338560, ISBN 10: 0195338561. Price US$185. Book's web page here. Rupture factor: low.

*** *** *** *** *** *** ***

Also on contracts, but a very different book, is Modern Licensing Law, this being the 2009-2010 edition of the classic by West. Authored by Raymond T. Nimmer (Profesor, University of Houston) and Jeff C. Dodd (partner in Texas law firm Andrews Kurth LLP), it is of recent provenance but sound pedigree. According to publishers West:

"This new work treats licensing law as a distinct body of law. The authors discuss the laws, decisions, traditions, and practices that comprise the law of licensing as it is practiced today. Discussions include contract, property, and public policy doctrines. This comprehensive treatment of contemporary case law and statutory provisions gives you a solid foundation for dealing with today's licensing questions.

Features

• Coverage of financing intellectual property assets, including new developments in UCC Article 9;
• Discusses both contract law [well, that's a relief ...] and antitrust considerations [... every silver lining has a cloud?] in licensing;
• Emphasis is placed on modern law developments;
• Includes an extensive discussion of licensing in digital and online industries [this is probably its strongest selling point. Lawyers with ample experience and/or good memories can get by pretty well with basic principles in some areas of IP licensing, but the IPKat says this doesn't work here -- basically if you're still doing now what you were doing three years ago, you should be asking why];
• Prepared by two leading experts in licensing law and practice".

There's actually a lot more than just licensing law in this work, since the authors take the reader way past the conclusion of the IP licence, into the courtroom (there's some good content on both pecuniary and non-pecuniary relief for breach) and beyond, into bankruptcy, death and oblivion ... Much of the second volume is taken up with antitrust issues, but we live in an imperfect world in which IP licensees, and groups of IP-driven businesses, cannot be trusted to play with their monopoly toys without special legal provisions to prevent them hurting others.

Bibliographic details: . Price: US$462. Book's web page here. Rupture factor: if you take the two volumes together, substantial -- though each by itself handles well.