Book review: Research Handbook on IP & Digital Technologies

Edward Elgar’s Research Handbooks in Intellectual Property Series, is edited by none other than the IPKat’s founding father Jeremy Phillips. This Research Handbook on Intellectual Property and Digital Technologies, edited by Tanya Aplin, Professor of Intellectual Property Law, Dickson Poon School of Law, King's College London. 

The handbook provides 27 chapters and is organised in 4 parts. The first four parts cover 1) copyright and related rights, 2) patent and trade secret, 3) trade mark and design, which are then subdivided according to different types of digital technology. Part 4 – competition and enforcement – considers issues that cut across the areas of technology; including civil, criminal and technical measures. 

In the preface, Aplin sets out that the purpose of each chapter is to provide a scholarly account of the relationship better a particular type of technology and IP, to reflect on the normative dilemmas these relationships pose and to identify potential future challenges. And that it does, not to mention authored by a stella line up of contributors.  

Part I copyright and related rights

Chapter 1: Software and Graphical User Interfaces, is authored by Noam Shemtov (Reader at Queen Mary University London). Shemtov highlights the importance of graphical user interfaces (GUIs) as a major element of commercial value for software, the user-friendliness of which is crucial to the success of a software driven product or service. He delves into the extent to which copyright, patents, design and trade dress are able to provide protection for GUIs. After a thorough assessment, it appears that GUIs are stuck between a rock and a hard place when it comes to patent and design protection; lacking adequate technicality for a patent, whilst being considered as dictated solely by technical function missing the mark for design protection. Although there are more possibilities for protection under copyright and trade mark, Shemtov suggests that GUI developers should avoid being guided solely by functional considerations and include aesthetic appeal to avoid disappointment. 

Chapter 2: Copyright in Software: Functionality, is provided by Richard Arnold (Court of Appeal). This chapter consists of a thorough account of the current law, outlining the relevant International, EU and UK legislation, before considering decompilation and functionality. To decompile, means to convert object code of an existing program back into its source code, in order to understand how it works. This activity is only permissible under a narrow copyright exception, which Arnold notes has yet to be any UK or CJEU court, which may indicate that it is not much relied upon. Turning to functionality, Arnold provides a detailed account of the law from Navitaire v EasyJet, Nova v Mazooma and of course SAS v WPL. Arnold concludes that the law is now clear in some respects, but not others. This chapter builds conveniently on the content covered in chapter 1, referring also to unclear extent to which user interfaces are protectable. 

In Chapter 3: Copyright and Gaming, Yin Harn Lee (University of Bristol), highlights the areas of copyright law that are of the greatest significance for scholars with an interest in videogames, to provide an overview of the existing literature and suggest avenues for future research. The chapter touches on game cloning, second-hand sales, technical protection measures, videogame preservation, and user-generated content. 

Chapter 4: Databases and Copyright Protection, by Mark Davison (Monah University) addresses the test for subsistence of copyright in databases; the nature of the rights accorded to owners of copyright in databases; and exceptions to the rights of owners of databases. Tatiana Eleni Synodinou (University of Cyprus) covers rights and liabilities of data producers in chapter 5. Followed by a look at big data, and data appropriation in EU by Alain Strowel (UCLouvain) in chapter 6. 

In chapter 7: User Generated Content: Towards a New Use Privilege in EU Copyright Law, Martin Senftleben (Vrije Universiteit Amsterdam) argues for the adoption of a new use privilege for the creation and dissemination of user-generated content (UGC). The chapter proposes that if such a new use privilege was combined with the obligation to pay equitable remuneration, a new copyright limitation for UGC this would satisfy the three-step test. Moreover, Senftleben suggests that this could create a new revenue stream that could close the ‘value gap’ (defined by Senftleben as the argument that UGC platforms can generate income without sharing profits with producers of creative content).

Continuing the discussion on UGC, Marta Iljadica (University of Glasgow) considers the author perspective, in chapter 8. This chapter sets out to analyse the extent to which copyright law offers a suitable regulatory framework for UGC as a form of creativity that, Iljadica argues, has a closer affinity to a creative process than a creative product. It Highlights the difficulties in protecting forms of creativity that do not fit neatly into copyright’s categories, as well as copyright’s concepts of authorship and originality. 

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Jacqueline Lipton (University of Pittsburgh) covers mass digitization in the ebook market: copyright protections and exceptions in chapter 9. This is complemented by our own IPKat Eleonora Rosati’s chapter on the role of licensing in Ebooks and mass digitization projects. This chapter covers the subjects entitled to grant licenses for the use of their works, and analyses relevant CJEU case law on this point, digital exhaustion (or lack thereof), licensing of orphan works and evolution in the areas of consent and exploitation of content in the digital form. Rosati emphasises the significant roles played by legal, policy and business developments in the evolution of the digital licensing framework at EU level. 

The copyright Part of the book concludes with a chapter from Jane Ginsburg (Columbia University) and Alain Strowel (UCLouvain) on copyright liability for hyperlinking, followed by video streaming and the communication to the public right in the US and EU by Makeen Fouad Makeen (SOAS).

Part II patents and trade secrets 

Part II covers Patents and Trade Secrets in 5 chapters. Matthew Fisher (UCL) covers software-related inventions in chapter 13. Trevor Cook (WilmerHale LLP) looks at the prejudice against patenting business methods in chapter 14. Ryan Abbott (University of Surrey) considers computer generated works, asking: Are computers autonomously creating or investing or merely aiding human authors and inventors? Abbot argues that the law is overdue for establishing clear answers to this question. In chapter 16 Timothy Holbrook (Emory University) provides an overview of the challenges that US patent law will face in combating infringement via additive manufacturing (3D Printing). Trade secrets is covered in chapter 17 by Sharon Sandeen (Mitchell Hamline School of Law), who considers in particular the acquisition by improper means prong of US trade secret law.

PART III trade marks, designs and unfair competition

Part III covers trade marks, designs and unfair competition in 5 chapters; including trade mark protection for digital goods by Mark McKenna (University of Notre Dame) and Lucas Osborn (Campbell University), The Uniform Domain Name Dispute Resolution Policy (UDRP): not quite arbitration, but satisfying? By Ilhyung Lee (University of Bristol), Metatags ‘using’ third party trade marks on the Internet by David Llewelyn (King’s College London) and Prashant Reddy(NALSAR), Keyword advertising and actionable consumer confusion by Robert Burrell (University of Oxford) and Michael Handler and Fit for purpose? 3D printing and the implications for design law: opportunities and challenges by Dinusha Mendis (Bournemouth University). 

 Part IV competition and enforcement 

The book concludes with Part IV covering competition and enforcement in 5 chapters, including; competition in digital markets by Shubha Ghosh (Syracuse University), exhaustion of rights on digital content under EU copyright: positive and normative perspectives by from Stavroula Karapapa (Reading University), and enforcement in a digital context: intermediary liability by Ben Allgrove (Baker & McKenzie) and John Groom (Baker &McKenzie).

Kimberlee Weatherall (University of Sydney) looks at criminal sanctions as a tool against online infringement. It provides the copyright offenses in common law countries Australia, UK, New Zealand, US, and how they have expanded to adapt to the online environment. It highlights the interconnections between domestic and international copyright laws, general criminal law and mechanisms in internal law for transnational cooperation for criminal enforcement. 

In the last chapter, Frederick Mostert (King’s College London) considers the adoption of digital tools for online intellectual property enforcement and the norm setting consequences of such tools. Mostert highlights the need to develop a balanced approach to the implementation of new digital tools to ensure the equanimity of underlying fundamental interests. 

This handbook covers a wide range of digital technologies, from the perspective of the different areas of intellectual property. It certainly achieves its goal to set out the relationships between those technologies and the current law, whilst also identifying future challenges and areas for further research. This book is therefore an essential read for scholars and researchers in the area of digital IP.

Extent: 608 pp

ISBN: 978 1 78536 833 2 

Edward Elgar price £210.00

ebook: £48.00; eISBN: 978 1 78536 834 9