Book review: Cambridge Handbook of Technical Standardization Law, Further Intersections of Public and Private Law

This book review is kindly provided by Vicente Zafrilla Díaz-Marta, who is a PhD Researcher at the Max Planck Institute for Innovation and Competition in the framework of EIPIN Innovation Society  program funded by the European Commission (H2020- Marie Skłodowska-Curie Action) and member of the Spanish IP blog lvcentinvs.es. Here's the review: 

Prof. Jorge Contreras, University of Utah,  is arguably one of the most prolific scholars in the field of standardisation law. Two years after the publication of his "Cambridge Handbook of Technical Standardization Law: competition, antitrust and patents" he has edited a new volume “Cambridge Handbook of Technical Standardization Law: Further Intersections of Public and Private Law” that, despite sharing the title, includes a series of aspects related to standardisation which were not included in its older brother.

The book opens with a section on “Standardisation and the State”. Chapter 1, authored by Panagiotis Delimatsis, is titled “International Trade Law and Technical Standardisation Law”. In the chapter, Prof. Delimatsis analyses technical standards from the perspective of non-tariff barriers to trade and concludes that certain standards might have been unduly benefit from the exception of article 2 WTO Agreement on Technical Barriers to Trade (TBT). Hence the WTO should take a more demanding approach towards standards.

Chapter 2 “Government use of the standards in the United States and abroad” (abroad means EU) analyses the standardisation process from the perspective of the involvement of governmental bodies in the process. Emily S. Bremer concludes that in the US the standardisation tends to be more decentralised and market driven and the participation of public entities participate in standardisation in equal footing as any other stakeholder, whereas in the EU there is a higher degree of governmental involvement at all levels, including funding of standardisation activities. The development of European Standards (ES) is a paradigmatic example of the EU approach, which results on a partial externalisation of regulatory competences.

Part II “Standardisation, health, safety and liability” starts with Chapter 3 “Technical standards in health and safety regulation: risk regimes, the new administrative and food safety governance” where Timothy D. Lytton discusses the trends associated to the mixed regulatory governance (public and private) regime. The author considers that administrative law poses (legal) obstacles to the development of the standards but also can contribute to their legitimation, and therefore administrative law should be more permeable to the principles and practices stemming from private standardisation.

Paul Verbruggen addresses in Chapter 4 the topic of “Tort Liability for Standards Development in the United States and European Union”. The author considers that in the US, liability can arise from a duty to care – depending on the degree of foreseeability of harm and the degree of control of the SDO over the implementation of the standard – from the voluntary undertaking rule – limited by the scope of the undertaking – and on the basis of negligent representation. In the UE, on the other hand, civil liability of SDOs has been a marginal topic while liability derived from distortions of the internal market seems more promising.

Part III focuses in the frequently oversighted interaction between “Copyright and Standards” Pamela Samuelson and Kathryn Hashimoto analyse in Chapter 5 the protectability of standards – understood as systems – by means of copyright – from a US perspective. The authors argue that codes and “other systematic organizations of information” are not eligible for copyright protection if “dictated by rules or functionality”. In addition, they understand that both the scenes a faire and merger doctrines can render the standards unprotectable. Finally, the chapter focuses on the need of ensuring access to standards which are adopted as laws and on the policy considerations which should be considered to discard the incentives-based arguments that support granting copyright protection to standards.

In Chapter 6 “Integrating Technical Standards into Federal Regulations: Incorporation by Reference”, deals with the “incorporation by reference” of standards into regulations in the US. Daniel S. Sheffner approaches the topic from different angles, including its genesis, its legal basis and the problems derived from the conflict between copyright protection – still an open question – and the public-access requirement. The Chapter finishes with an overview of the solutions that public and private stakeholders have proposed to address the public access problem.

Björn Lundqvist offers a comprehensive EU perspective to the interaction copyright-standards by analysing the CJUE´s James Elliot case in Chapter 7 “Public Law, European Constitutionalism and Copyright in Standards” which left open the question on whether there is an actual delegation of the European Commission to the SDOs which might affect to (harmonised) standards’ copyright protection. The author complements the analysis by reflecting upon the consequences of the James Elliot case for standards from a competition law perspective and, ultimately, from a free trade (internal market) perspective – with a special reference to the Fra.bo case.

Jorge L. Contreras and Andrew T. Hernacki change slightly the focus: their Chapter 8 “Termination of Copyright Transfers and Technical Standards” analyses the (very) specific issue of termination of copyright transfers in US. While advocating for an explicit exclusion of standards from such right of transfers´ termination, the authors argue that such right of termination is not of application to most standards insofar they are joint works and arguably works-for-hire.

Part IV “Standards and software” begins with Chapter 9 “Open Standards” where Jay P. Kesan, after reviewing the successive attempts to arrive to an Open Standard definition, explain the rationales for governmental bodies to opt for open standards to finalise with the consequences of the adoption of open standards: the (vendor) lock-in effects, the need for interoperability – also at governmental level – and the need of developing standards that are capable of being used by many implementations.

Martin Husovec´s Chapter 10 “Standardization, Open Source and Innovation: Sketching the Effect of IPR Policies” dives into the (more and more relevant) interaction of standards and open source, characterised as two pro-innovation processes that do not necessarily conflict. By analysing the specification/implementation dynamics, the author sketches some examples of fruitful interactions between both realities. Nevertheless, the author points at the (sometimes apparent) conflict among IPR rules – both at legal and business level – as one of the most important barriers for a seamless cooperation.

This is Louis waiting for the publication
of a "Pawbook of Standardisation Law"

Closely related to the prior one, Chapter 11 – authored by David J. Kappos – “OSS and SDO: Symbiotic Functions in the Innovation Equation” highlights the complementary role of Open Source Standards and Standard Developing organizations to promote innovation. The author argues that FRAND terms are useful for both governance models and, moreover, that OS terms are compatible with FRAND terms. Thus, there are not grounds to advocate for a modification of the SDOs´ IPR policies.

Last but not least, Part V, “Trademarks, Certification Marks and Standards” starts with Chapter 12 “Trademarks, Certification Marks and Technical Standards” authored by Jorge L. Contreras analyses the role of trademarks linked to standards for consumers. The Chapter includes a review of some basic aspects of trademarks and certification marks, an explanation of how trademarks are using in standardisation – including the distinctive use of standard names such as Bluetooth or WiFi and its use as certification marks – and, finally the different approaches of SDOs to the authorisation of use of their standards´ names.

Jeanne C. Fromer offers in Chapter 13 “The Unregulated Certification Mark(et)” an analysis of some of the problematics associated to certification marks, in particular that the lack (reduced level) of regulation of certification marks can lead to results which are not aligned with the competition and welfare promotion function of trademarks. For the author, more demanding requirements for certifiers and antitrust scrutiny can contribute to a better functioning of the certification mark system.

Finally, Chapter 14 “The Certification Paradox” by Jonathan M. Barnett concludes that the certification system succeeds on its role of bridging the asymmetries of information in the market, yet occasionally fail. Prof. Barnett suggests that rather than targeting the certifiers´ level of diligence, a closer control over the organizational form of certifiers can contribute to reduce the number of failures.

In conclusion, the book complements the (already wide) range of topics covered by its older brother and it is a breath of fresh air for those which are interested in standardisation and do not want to hear about hold-up or hold-out for a while. The book is a must for those that research in standardisation law beyond the patent and antitrust issues and deals with some topics of growing importance, such as the interface of Open Source and standardisation or the intersection of standards and trade. Nevertheless, this Handbook might not be the best option to have a first contact with standardisation law (and economics) or for having general taste of the hot topics in the field: the first volume suits better either of these aims.

Published by: Cambridge University Press

Hardback Price: £150.00

eBook: eBooks.com €190.00

Publication Date: 2019

ISBN: 9781316416785

304 pages