Book Review: The Subject Matter of Intellectual Property

In this book, The Subject Matter of Intellectual Property, Justine Pila (University of Oxford) undertakes a word:thing exercise in IP. Studying terms such as 'invention', 'authorial work', 'trade mark', and 'design' in context of their use by legal officials, the book offers a definition of each of the terms with reference to objects which they denote. 

Pila suggests that scholarly attention has focused heavily on the way that IP law mediates seeks to mediate competing rights. Those who have considered the subject matter of IP have tended to do so within a discrete category. Therefore, this book is the first and only study on protectable subject matter across the range of intellectual property rights and systems.

Why hasn't anyone thought of this before, I hear you ask? Pila suggests that perhaps it is reasons such as words such as art and literature being described as undefinable; the tendency for legislators to believe that definitions are a matter for the court; and in turn the courts abstaining from making such definitions, believing that it would be unproductive
However, Pila argues that IP can only benefit from attempts to define directly the terms used to denotes the subject matter of IP. She argues that this would provide transparency as well as providing a tool for ordering, clarifying and explicating legal principles.

The immediate purpose of defining exercise in the book, says Pila, is to understand the ways in which the legal terms denoting the subject matter protectable by IP rights have recently been used by legal authorities in the field. As such, the aim is not to find a defining terminology, but to identify and understand the objects denoted by the terms in practice..

The definitional exercise proceeds in three stages. The first stage is undertaken in Chapter 2, titled: An Overview of Intellectual Property Rights and Systems. It focuses on the nature, aims, and values of IP rights and systems in EU and UK, such as “intellectual creation”.

The second stage is developed in chapter 3, titled: A Framework for Thinking About Intellectual Property Subject Matter. A theoretical framework for thinking about the subject matter protectable by IP is proposed, using devises such as the category, the property, the type/token distinction, and the artefact which are utilised as a road map in the form of four questions. 

The third stage considers official’s use of the legislative terms that denote the subject matter protectable by IP regimes with reference to the objects that they denote, focusing in Invention and Plant Variety (chapter 4); The Authorial Work (5) Trade Mark, Other Product Designations, and Goodwil (6) and Design (7). Each of these chapters conclude by addressing the questions from the second stage.

Wondering if Self-Organisation / Spontaneous Order
would produce the same results?
Photo: Schwar

Pila undertakes a bold and ambitious challenge, which manifests in an interesting, but not an easy, read. It is certainly thought-provoking and a gift to those looking for certainty in concrete definitions of subject matter protectable by IP. 

This Kats is curious if such definitions, derived from their use in practice, might cement how they appear, rather than how they ought to be. And in doing so, do we colonise subject matters to creators? Thinking in particular about copyright, would such a categorical conception be detrimental to exceptions, free use, and the public domain? Perhaps the beauty of IP is the grey areas that provide flexibility to mitigate unforeseeable developments in technology, culture and society. But, perhaps, as Pila argues, I am one of those who fall within the "academic sensibility to the historical contingency of IP by reason on its basis in he social, intellectual, economic and technological contexts of particular times and places, and to the complex ways in which the law and its definitions influence the interpretation of cultural forms..."

This book has been nominated for IPKat book of the year, voting still open here

Hardback £75.00, available from Oxford University Press, here 

ISBN: 9780199688616
320 Pages