Book Review: Handbook of Intellectual Property Research [Part 1]

“What is the methodology behind your research?”. This is the question young IP researchers hear most during their first years in the academia. Conference after conference, one comes to realise that a robust research methodology may often be more important than any conclusions such research might yield. Yet, resources on how to design such methodology are scarce. This is why this Kat was pleased to see the “Handbook of Intellectual Property Research” (ed. by I. Calboli and M. Montagnani, OUP, 912 pp.), published recently in open access, with (all?) the right answers. The book consists of four parts, 52 chapters, and covers research methods in a variety of areas of law: privacy law, criminal law, popular culture research, or psychology, to name a few. In this post, this Kat will review the first two Parts, on intersections of IP with other areas of law and with the humanities. A follow-up review will cover the other two Parts of the book.

Part 1: Intersections between IP and other areas of law

In chapter 1, Henning Grosse Ruse-Khan sets the research framework for IP and international law. After discussing how to define "international IP law", Grosse Ruse-Khan elaborates on several fresh approaches for research, both in public and private international law of intellectual property. The topic of the intersection between private international law and IP law is continued in Chapter 2 by Graeme W. Austin. With a focus on common law jurisdictions, the author considers issues in cases of online IP disputes, including the Actavis v Lilly case, a textbook case in private international law textbooks.

Irene Calboli then discusses in Chapter 3 the classic research method of IP scholars – comparative legal analysis. In times of IP norm export through international and bilateral agreements, comparative legal analysis allows answering many IP research questions. Building on several examples of comparative IP research, Calboli concludes that while comparative methods are useful in many research areas, scholars will often have to complement them with other research methods, as a large part of “research iceberg” remains hidden.

Jacques de Werra follows with Chapter 4, where he discusses research perspectives on contract law and IP. As de Werra reminds, IP law is harmonised through various international agreements, while contract law remains mostly local. Their intersection offers various avenues for research, several of which are suggested in this chapter, e.g. . research questions related to licensing terms of standard essential patents (SEPs).

Chapter 5, authored by Giancarlo Frosio, considers the interrelation between IP law and extra-contractual liability. This topic has become increasingly relevant in recent years, especially with the development of online copyright and trade mark infringement (which has brought online intermediaries into the spotlight). While the issue remains unharmonized, Frosio discusses the approaches taken by the UK, French, German and Spanish courts. Further in the book (Chapter 10), Maria Lillà Montagnani, follows on with this topic, reviewing traditional methods and scholarship in this area of IP and IT law intersection. She then takes a look at more unconventional research methods, such as empirical studies of Youtube responses to complaints from right holders over copyright infringement, suggesting this as a promising approach to research.

Michael Grynberg addresses, in Chapter 6, how property law and IP relate. Grynberg opens with a discussion of how (or whether) IP rights fit within the property law paradigm, considering their intangible nature. He asks whether treating IP rights as property might offer answers as to how to limit their scope.

In Chapter 7, Laurent Manderieux reviews the intersections between IP and administrative law. Although IP rights are private rights, certain overlaps do exist (eg because patent office are administrative entities). Thus, as Manderieux reminds readers, researchers require knowledge of the basic principles and methods in administrative law, which are traced in this chapter.

Chapter 8 is dedicated to the (tense) relationship between IP and antitrust law. As Mariateresa Maggiolino and Laura Zoboli explain, while the former one creates monopolies, the latter one essentially fights against them. Basing the analysis on the EU and the US case-law on standard essential patents (SEPs), the authors discuss two divergent approaches to refusals to license. They set aside the reason for this divergence, leaving it up for further research.

IP and privacy law become more interrelated with the advent of the digital world, as we learn in Chapter 9. There, Megan Richardson, with a focus on common law jurisdictions and the EU, reviews how the two bodies of law are interconnected, as they both address exclusivity of information.

In Chapter 11, Joshua D. Sarnoff looks at IP and environmental law. He frames the choice of research methodologies through the choice of values. A researcher applies personal choices when deciding to address a given problem. Departing from that perspective, Sarnoff suggests historical, doctrinal, theoretical, and empirical methods for the analysis.

Peter K. Yu reflects on the methodology behind IP and human rights research in Chapter 12. Yu suggests a researcher should choose whether to focus on positivist or philosophical conception of human rights. He indicates possible areas of research in the field: protection of traditional knowledge and traditional cultural expressions, the right to science and culture, or the human rights issues behind artificial intelligence.

The relevance of criminal law in IP law research is addressed in Chapter 13. Here, Ajay K. Sharma and Dipa Dube look at IP rights through the lens of public policy and their impact on public interests (that is, the justification for criminal enforcement of IP rights, in themselves private). They offer a classification of IP infringement through the prism of typology of crimes. The chapter closes with a review of criminal enforcement provisions in international and bilateral agreements.

Chapter 14, the last one in Part 1, covers the intersection between IP and dispute resolution. Althaf Marsoof focuses on court-based adjudication and on alternative dispute resolution (ADR) as two means for resolving IP disputes. After thoroughly reviewing the main civil remedies under international IP law, the author suggests further areas of research, including the potential role artificial intelligence may play in adjudication of disputes.

Part 2: Intersections between IP law and the Humanities

Marketa Trimble opens Part 2 with a chapter on IP and geography. Relying on Montesquieu’s theory on dependence of law on the climate and nature of the soil, Trimble discusses two approaches to the topic: “geography in law” and “law in geography”. Geography in law studies how law develops in response to given geographical conditions, with research on geographical indications being the best example. Law in geography looks into how geography develops in response to law, for instance, in the post-colonial context.

Several chapters of Part 2 look at the intersections between IP and history from different angles. Michael Birnhack, in Chapter 16, suggests a research venue for legal historians: that of IP in a colonial context. Building on his own research on copyright and trademark law in Mandatory Palestine, Birnhack proposes how legal transplantation should be addressed in a post-colonial setting. In Chapter 17, Jose Bellido discusses the role of archives in IP research: any analysis of IP history, says Bellido, is evidently archival.

Maurizio Borghi, the author of Chapter 18, continues historical discussion by looking into the historical-philosophical roots of IP. He presents the reader with philosophical perspectives of Kant, Fichte, and Hegel on intellectual property. In Chapter 19, Jeremy N. Sheff addresses applications of philosophical analysis to IP. Traditional methods of research in IP law share modes of analysis and arguments with various branches of philosophy, such as analytic philosophy and consequentialism.

George Nicholas and Catherine Bell follow in Chapter 20, with research concerns and considerations on IP and archaeology. IP issues become relevant at several stages of archaeological studies. Some of the many research venues, suggested by the authors, are 3D scanning or printing of artefacts, and the protection of information uncovered by archaeologists as traditional knowledge (TK). The views on the issue are complemented by Chapter 21, where Fiona Macmillan looks into interdisciplinary approaches to research on IP and cultural heritage.

Chapters 22, 23 and 24 then address the research framework for IP and languages. In Chapter 22, Alan Durant and Jennifer Davis explain how linguistics may be applied in IP research: for instance, in judicial interpretation of certain legal terms, or in examining the distinctiveness of certain verbal signs. Law and literature in IP methodologies is the topic of Chapter 23, authored by Zahr K. Said. Said addresses how literature (such as Shakespeare’s Merchant of Venice) may be used in research, but also in the teaching of IP law. David Tan discusses, in Chapter 24, semiotic analysis in IP research. Semiotics being the study of signs, it can become a useful methodology for studying acquired distinctiveness of trade marks.

Part 2 closes with Chapter 25, where Arpan Banerjee provides an almost mathematical analysis of intersections between IP and popular culture [a topic dear to this Kat]. Banerjee also providers readers with a through literature review on the topic.

Published by Oxford University Press, August 2021

Format: Hardback and eBook

Extent: 912 pp.

ISBN: 9780198826743

RRP: $125.00 (Hardback), Open Access (eBook)