Book review: ‘Rethinking Intellectual Property – Balancing Conflicts of Interest in the Constitutional Paradigm’

In ‘Rethinking Intellectual Property – Balancing Conflicts of Interest inthe Constitution Paradigm’, Gustavo Ghidini reviews the conflicts between various intellectual property rights holders from a constitutional standpoint. More particularly, Ghidini explores how the legal models of patent, trade mark and copyright have evolved over time against the backdrop of the shifting tensions between the right to be excluded and the right to access. These rights, conferred both to the right holders and users of protected content, have secured constitutional protection in various ways (such as through the human right to intellectual property, the freedom of expression and the freedom of economic enterprise). Despite the slew of reforms in IP law that have taken place during the last decades, international and national legislators have contributed little in the form of a constitutional test to resolve these conflicts.

Ghidini  stresses that this matter is further complicated by the fact that patent, copyright and trade mark laws have all evolved in silos, thereby offering little coherence or consistency across the various systems. This overspecialism of IP means that each area has responded in a different way to the common question explored by Ghidini: how to reconcile of conflict between the constitutional right to IP protection and the constitutional right to access protected material.

The author proposes ‘a dual concentric systemic perspective’ to address conflicts of constitutional rights in intellectual property law (p. 50-51). Do not be scared by the academic jargon, as the phrase refers to a more straight-forward, two-prong process than might seem. Ghidini invites scholars (and judges?) to interpret intellectual property rights in a manner which is, first, consistent with other intellectual property regimes (forming the first circle), and second, with other legal principles of ‘constitutional rank’ (forming the second circle) (p. 51). Ghidini explains that the respective norms forming the firm circles (i.e. consistency with the core principles pertinent to other IP regimes) should be used to prevent (there other views that disagree) the extension of an expired right through its registration under another type of IP protection, taking the example of ‘shape marks’ amongst others (p. 311).

Circle you said?

Ghidini’s ‘first circle’ [my own terminology, not his] seems to be at odds [which is a good thing!] with the position recently espoused by the EFTA court in the Municipality of Oslo case [see here and here], supported by the European Copyright Society [here]. In the context of this dispute, the judges and scholars of the EFTA Court, and the European Copyright Society, respectively, were asked whether out-of-protection copyright works could be subject to trade mark registration. Whilst some advocated against this interpretation of the law, both the Court and the European Copyright Society concluded that nothing in the letter of the law prevented such an interpretation (here, p. 3). 

The European Copyright Society stressed that it was preferable not to invite an ‘external norm’ to solve these questions, but to stick to a ‘robust application of the basic principles’ of individual fields (in this case trade mark law). This case may be the best illustration of the over-specialism of each area of intellectual property law, leading to disparate outcomes in the application of their core principles. By contrast, and in line with Ghidini’s proposal, the late U.S. Supreme Court Justice Scalia J did rely on the constitutional nature of ‘the right to copy’ to reject a claim under the Lanham Act in Dastar (here). Scalia J stressed that the constitutional ‘right to copy’ rises from the limits to copyright protection, and he refused to create ‘copyright mutants’ by allowing an expansive interpretation of the Lanham Act provisions in this case.

Kat-circle

As far as the second circle is concerned, Ghidini reminds us that not all constitutional principles or rights are born equal (p. 53). Indeed, a constitutional right can trump another within the confine of proportionality by virtue of the hierarchy of constitutional principles. Proportionality implicates the application of two requirements: (1) that the reduction of a constitutional right is necessary for the satisfaction of a general interest recognised as such by law; and (2) that the reduction of a constitutional right does not ‘sacrifice the essential function of the lesser right’ (p. 57).

In the description of this test, Ghidini expects the conflict of rights, and the outcome of the test outlined above, will differ significantly depending upon whether users seek ‘access for exploitation’ of protected material or ‘access for knowledge’ under patent, copyright or trade mark law. It is not clear from Ghidini’s description of the dual concentric approach which circle is to come first: consistency within intellectual property regimes, or respect of constitutional hierarchy, but this may be because the order in which one addresses the conflict will ultimately not impact the outcome of the analysis.

Where most books on the balancing of rights explore this question from the perspective of only one sub-field of IP, Ghidini develops his perspective across all three (patent, copyright and trade mark), dedicating a chapter to each (Chapter 2, 3 and 4 respectively). This makes this book a useful starting point for researchers (scholars and students alike) in mapping out the field and latest research on this topic. Still, despite the title of the book, it is not a monograph on constitutional law. Instead, it brings to bear several principles of constitutionally protected freedoms as they interact with various IP rights. Within this framework, the author's discussion contributes to our understanding of IP law.

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Gustavo Ghidini, Rethinking Intellectual Property - Balancing Conflicts of Interest in the Constitutional Paradigm (Edward Elgar, 2018) Extent: 432 pp; Hardback Price: £100.00 Web: £90.00; ISBN: 978 1 78347 800 2; Availability: In Stock – more information here.