Book Review: Overlapping Intellectual Property Rights (Second Edition)

This Kat is pleased to review the “Overlapping Intellectual Property rights”, edited by Neil Wilkof [full disclosure: a member of the IPKat team], Shamnad Basheer, and Irene Calboli (OUP, 2023, 864 pp.).

Now in its second edition, the book offers a perspective on how one can address the overlap between intellectual property (IP) rights, either to reconcile them in whole or in part, or to pre-empt one over the other. The volume is a beautiful testimony to the work of late Shamnad Basheer, who co-edited the first edition.

The book consists of 21 chapters, each of which addresses a distinct pair of IP rights, where IP is given a broad swathe of meaning.

The chapters are: (i) utility patents and copyrights; (ii) patents and designs: (iii) patents and trade secrets; (iv) plant intellectual property; (v) patents and utility models; (vi) patents and regulatory data exclusivity; (vii) copyright and trade marks; (viii) the design/copyright overlap; (ix) copyright, right of publicity, and personality rights; (x) overlapping protection for databases; (xi) moral rights and economic rights under copyright; (xii) trade marks and passing off; (xiii) designs, trade marks, and trade dress; (xiv) trade marks and geographic indications; ( xv) domain names and trade marks: (xvi) trade marks, common law rights, and rights of publicity; (xvii) trade marks and unfair competition (xviii) trade marks, certification marks, and collective marks; (xix) IP rights and competition law; (xx) trade secrets and privacy: (xxi) IP rights and traditional knowledge.

All chapters share a similar structure, whereby the reader is introduced to a hypothetical case on the matter, before discussing the particular overlap and then bringing the discussion to bear on the issues raised in the hypothetical case. The organizing principles for both the contents of the books and the organization of chapter clusters are set out in the Introduction.

This is followed by comparative tables for 17 countries, in each of which the legal position for the 21 pairs of overlapping rights discussed in the book is summarized for that specific country. These countries are: (i) Australia; (ii) Brazil; (iii) Canada; (iv) China; (v) France; (vi) Germany; (vii) India; (viii) Israel; (ix) Japan; (x) Korea; (xi) Mexico; (xii) Netherlands; (xiii) Russia; (xiv) Singapore; (xv) South Africa; (xvi) Turkey; (xvii) United Arab Emirates.

The second edition offers revised, or wholly rewritten chapters to the overlaps discussed in the first edition so as to reflect recent developments, as well as to include new chapters (the overlap between privacy and copyright law; privacy and secrecy; trademarks certification marks and collective marks; and IP and traditional knowledge). While, due to the book’s length, it would be impossible to discuss all of the book's chapters in this post, this Kat has selected several that particularly captured her attention.

Chapter 2, authored by David Musker, considers the overlaps between patents and designs. The chapter is based on the case of a circular beach towel, protected by a US utility patent and a US design patent, which caused this Kat to recall her MA studies, where Musker lectured on this case [Merpel notes, "I guess this hypothetical was more grounded in reality."].

The case serves as the springboard for a discussion on whether owning both rights may put the rightsholder at risk. For instance, the existence of a patent may be used by competitors to argue that the design is dictated by function and should therefore be ineligible for protection. With a focus on EU and US approaches to the issue, Musker suggests arguments that may be useful to litigants in similar situations.

In Chapter 5, Robert Harrison focuses on the interactions between patents and utility models. The hypothetical case is an invention for a diagnostic device and method, all with the use of an artificial intelligence network to analyse data. The fictitious German inventors want to commercialise their invention, yet do not have sufficient funds to seek patent registration.

The first part of the chapter offers valuable insights into the historical background of utility models, in Germany and elsewhere. He also explains the history of why utility models never became an EU-wide right. In the second part, Harrison gradually unfolds the case. In a legally instructive, yet intuitive way, Harrison discusses the hypothetical invention to consider whether utility model protection would provide a cost-effective means for legal protection for the inventors.

Tyler T. Ochoa authors Chapter 9, which is devoted to the overlaps between copyright and the rights of publicity or personality rights. The hypothetical for this chapter is the case of paparazzi taking a picture of a celebrity and selling it for merchandising use. The analysis is offered from the US, the UK, and the EU perspectives.

This Kat was particularly caught by the discussion of the Von Hannover v Germany cases in front of the European Court of Human Rights (ECtHR). Ochoa concludes that while the jurisdictions analysed in the chapter have different approaches to the issue, they all seem to reach similar results in terms of protection.

In Chapter 10, Jonathan Band and Brandon Butler look at overlapping forms of protection for databases. The discussion revolves around the protection available for a sports league schedule, assembled by a sports website based on available information. The authors look at the issue from the perspective of US and EU approaches to database protection. Their analysis is especially relevant in light of the criticism of the EU sui generis database rights and recent plans to revisit the EU Database Directive.

Mira T. Sundara Rajan devotes Chapter 11 to the overlap between moral and economic rights of authors. The hypothetical is set in the art world: a painter makes posters of his works, which are lawfully bought by an art gallery. The art gallery then transfers inks from the posters to a canvas and sells those canvas for a significantly lower price than the painter’s original work.

Being taken from an actual instance of Canadian litigation, the hypothetical allows Sundara Rajan to address differences in treatment of moral rights between civil law and common law countries. And even within civil law, as Sundara Rajan elaborates, the approaches historically vary in France and Germany, two leading European jurisdictions.

In Chapter 14, Dev Gangjee looks into the overlap between trade marks and geographical indications (GIs). In doing so, he seeks to answer the question of whether GIs are fully overlapping with trade marks, and thus perhaps even redundant (as is sometimes suggested in the literature). The chapter’s case study is based on a fictional beer, “Glugwiser”. Glugwiser is a traditional regional beer in country A. It is also part of a trade mark for beers, “Glorious Glugwiser”, in country B.

Using this case, Gangjee discusses US and EU approaches to GIs, conflicts between GIs and trade marks, and the genericity of GIs. After a through discussion of relevant legislation, Gangjee reaches two different outcomes for his case study: this would depend on whether the conflict is taking place in the US or in the EU.

Chapter 15, authored by Mark V. B. Partridge, offers a view on the overlaps between trade marks and domain names. While, as Partridge explains, the need to register domain names was not obvious to brand owners at first, they soon resorted to litigation over the ownership of domain names that included their trade marks.

The chapter is focused on the US jurisprudence and the rules of Domain Name Dispute Resolution at the World Intellectual Property Organisation. As Partridge aptly reminds at the end of the chapter, the same word may be registered by several trade mark owners for different products, yet only one domain name with this word would be available.

In Chapter 18, Irene Calboli discusses the interaction between trade marks and service marks, on one hand, and collective and certification marks, on the other. Rather than overlapping, Calboli argues, these rights may complement each other: having different functions, they are frequently used together.

Calboli observes the absence of international norms with regard to collective and certification marks (which may be due to their overlap with GIs). She then proceeds with discussing US and EU legislation with regards to collective and certification marks. One of the important differences is that the US protects geographical indications through certification marks, while the same is expressly prohibited under EU law.

Chapter 20, by Maximilian Becker, addresses the overlap between trade secrets and privacy. Becker places his case study in the context of the platform economy: an online shopping app tracks its users to offer them a personalised shopping experience, as well as to sell them a “personality development” plan for an additional fee.

The chapter discusses how the users’ right to data portability and to access the data collected about them may conflict with the app’s trade secrets rights. Becker starts with a conceptual discussion on the German origins of the EU concept of privacy. He then suggests possible solutions to the case study, explaining how users’ and app’s rights and freedoms would interact in light of the EU’s Trade Secrets Directive and of the General Data Protection Regulation (GDPR).

The book closes with Chapter 21 by Susy Frankel, focusing on the interactions between IP and traditional knowledge (TK). Frankel’s hypothetical discusses a music band that, for their tracks, uses the recordings of traditional songs from a tribe in the Pacific Islands, which said band downloaded from the UNESCO website.

The case unpacks a series of overlaps between the private nature of IP and the collective nature of TK, the “novelty” concept of IP, and the perceived “public domain” nature of TK. The author considers how various types of IP rights may be used to protect traditional knowledge, and then suggests mechanisms to avoid overlaps. Both lawyers, who prepare their cases, and professors, who prepare their classes, and any one in between will find in this volume replete with useful discussion, as well as containing practical tips on how to deal with the challenge of overlapping IP rights.