INTELLECTUAL
PROPERTY Omnipresent, Distracting, Irrelevant?
William Cornish
Clarendon
Law Lectures.
Oxford
University Press. London. 2004.
ISBN
0199263078,
£35
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| DOI: 10.2966/scrip.010204.350 | ||
Introduction
Intellectual
property itself, in its historical and dialectical foundation,
presents an intriguing persona - that which bestrides the two spheres
of the esoteric and the mundane. Having evolved from relative
obscurity, its tentacles are ever stretching whilst its tenets have
remained steadfast. The creative enterprise in its various genres has
always managed to thrive within the paradigm of intellectual
property, though in some instances not without agitation. It can be
safely asserted that WR Cornish’s 114 page Clarendon Law
Lecture explores this dynamic in rich and vivid detail. In a
characteristically clear narrative, devoid of the rigidly textual
framework that other authors sometimes tend to use, Cornish conducts
a comprehensive discourse on the many important issues in
intellectual property. He adopts a conceptual framework expressed in
a tripartite structure - “Inventing” for patents,
“Creating” for copyright and “Branding” for
trademark- that captures the entire breadth of intellectual property.
Cornish states that ‘Intellectual property may now be a
convenient genus, but its various species remain distinct”1.
Keeping with that analogy, the author explores and contrasts the
trajectory of the three realms and provides an invaluable insight
into the development and current landscape of intellectual property
law in the emerging global order. He traverses important landmarks:
the pressure for increased protection as the by-product of
globalization; the impact of the expanding frontiers of biotechnology
and genetics; the aesthetics and functions of the new branding
patterns; and the impact of digital technology. More than ever, the
developmental and policy concerns which these issues raise shape the
evolution of the law. The author obviously appreciates that
intellectual property stands at a threshold in its contemporary
importance, a state of affairs which he elucidates in the three major
Parts of this book.
‘Inventing’ in Patents
The
first Part of the book deals with patenting. Interestingly, it is in
this part that the history of intellectual property is traced. The
learned author discusses the importance of intellectual property and
its role in the emergence of the developed economies. This
development has resulted in the internationalisation of protection
and increased pressure for acceptable global standards of
intellectual property protection, which has led to the TRIPS
Agreement. Cornish situates the prosperity of the patent-intensive
industries within the ‘omniprescence’ of inventive
activity since Chief Justice Burger’s famous (or some may say
infamous) protestation that patents can be available for “everything
under the sun made by man”2.
Intellectual property and the patent system have not known better
days, but the bitter side is that developing countries have yet to
see better days with the promise of development associated with
TRIPS. Affirming the boom of patenting activities and the dynamics of
patent policy, Cornish identifies what he calls the “Six
observations” on the objectives of patent systems.3
Patents and the accompanying exclusive rights of exploitation have
fostered major advances in pharmaceutical and agro-chemical
industries and in the treatment for cancer, the HIV/AIDS pandemic and
other debilitating human conditions. The development of gene research
with the progress in human genomics and biotechnology has found
expression in the patent system, and the leading pharmaceutical and
biotech firms have emerged as the ultimate benefactors. The
compulsory licensing regime has offered a window of opportunity for
the less developed countries and the victims of AIDS, the world’s
most dreaded virus. The dictates of compulsory licenses have not been
altogether compelling with the notorious Article 40 of the TRIPS
Agreement and problems in implementing paragraph 6 of the Doha
Declaration4.
It is well known that most developing countries lack pharmaceutical
manufacturing capacity, with imports dominating consumption. Access
to life-saving medicaments remains a major problem to the large
population who cannot afford the cost of the drugs. Whether the
patent system is directly responsible or not, it should play a role
in the amelioration of the situation. Therefore, strong patent
protection may not be desirable in poor and developing countries.
Perhaps Cornish’s realisation of the inequity underscores his
blaming patenting for the impossible prices in developing countries.
He reminds us how the rules of competition against the abuse of
dominant position have imposed compulsory licenses over intellectual
property rights.5
However, despite TRIPS’ advances at Doha, the ultimate hold of
the world’s patent owners has remained largely unchecked.
Cornish asks rhetorically “who can tell what the present wave
of discontents over the power generated by the most successful IP
will bring”.6
On that note, Cornish laments the unfaltering grip of the
intellectual property regime.
Comparing
European patent law with the US, he examines the scope of the
experimental use exception and its impact on the
research-commercialization dichotomy. Acknowledging the often
intensive levels of investment in experimentation, particularly in
biotechnology, Cornish attempts to strike a balance between avoiding
‘clogging the advance of knowledge’ by patents and
presenting a ‘strong case for IPRS’ as a market incentive
on investment. Though tendentious, Cornish nevertheless wears the cap
of a ‘generalist’. The author also notes the triumph of
commercial prospecting for exclusive market rights in all the
industrial fields which rely most heavily on patenting;
pharmaceuticals, genetics, biotechnology. The question of who
determines patent policy, like the whole intellectual property field,
has always been of central importance. Cornish examines the question
in the context of the capacity of the patent system to reinvent
itself in the world of competing interests. He identifies the roles
of different elements that make up the System – legislation,
litigation, technology and examination (administration) within their
respective sentiments in a way that would make an archetypal ‘world
patent’ an illusion7.
The European problem in forging a homogeneous patent system is a
polite microcosm of the North-South debacle in the TRIPS. One cannot
therefore agree more with Cornish that ‘we are still stuck with
national systems, governed by local interest.’ Though this may
appear pessimistic, it paints a true and fair picture of the current
situation.8
In the last section, the author examines the second – tier
protection with respect to petty patents (otherwise known as ‘Utility
Models’) and Database rights, which have featured prominently
in the intellectual property laws of European countries (with the UK
as the leading exception), Cornish justifies the underlying rationale
for petty patents and databases, but suggests that we exercise
caution in their implementation.
Understandably, considering their amorphous nature in the sphere of genetics and biotechnology, the author concludes this Part of his lecture with more questions on the overall socio-economic utility of patents. Citing the Malchup model, Cornish’s pro-patent advocacy is measurably sustained, yet balanced by his argument for a careful and systematic demarcation of the boundaries of patent law in the face of the current genetic and digital revolutions.9 Indeed, in view of the many concerns discussed, this writer agrees with Cornish’s assertion that ‘patents now deserve a somewhat more sanguine appraisal’ if they are to fulfill their utilitarian promise.
‘Creating’ in Copyright
Cornish
begins his discussion of the subject of copyright with a historical
survey and an elucidation of the challenges posed by modern
technologies and the Internet to industries which rely extensively on
copyright. He escorts the reader along a comparative discourse of the
copyright-patent synthesis, advocating a convergence of protection in
the light of today’s digital revolution through the calibration
of the terms of protection in proportion to the strength of
commercial use. In the metamorphosis described by Cornish,
copyright has an enviable heritage hidden in the deification of the
Author - a ‘Romantic Hero’ of sorts - whose ‘personhood’
or rights have managed to emerge from the centuries of rapacious
incursions by both man and machine. Though, he has emerged, he has
nevertheless been scratched and bruised by the “harsh
realities” of modern technology-driven exploitation. Tracing
the historical impact of industrial players on the development of the
law, Cornish observes that the old English stationers, printing,
copying technologies, record and film producers, have all affected
the artery of Anglo-Saxon and Continental copyright traditions. In a
similar fashion in the modern age, the titans of Hollywood, Silicon
Valley and their leading industrial powerhouses like Microsoft and
OALTimeWarner have also worn the robes of the law maker on a number
of key occasions.
The
relatively stable copyright and media industries – publishing,
music, entertainment whilst still grappling with the recent
audio-visual technologies - are now endangered by the omniscience of
the Internet and its exponential potential for the distribution of
information, entertainment and even knowledge’10
The fact that copyright today faces the threat of the digital
revolution engages the attention of the author throughout the length
of the discourse. Of course, this is where the allusion to the term
“distraction” comes in. Cornish lists the litany of
“digitized works” culminating in the Internet and asserts
their threat to the future and furtherance of copyright.11
Indeed, the digital revolution is personified in the face of the
Internet. Cornish revisits the Napster and KazaA stories and compares
the US position with the UK, drawing an interesting parallel with the
much earlier UK decision in CBS Songs. v. Amstrad.12
Indeed, it could be said that the major casualty lies in the
threshold of ‘authorising’ or ‘contributory’
liability that has been greatly impaired in the “anarchic flow”
of the virtual environment. Copyright law has not yet found the
answer to this problem. Under the subheadings “Answers within
the Technology”, “Legitimate Materials”,
“Unlicensed provisions of copyright material” and
“Permissible uses of Copyright Material”, Cornish weaves
an unending paradox between copyright and the Internet. In it, he
lays a foundation for the answer to his thematic question “Will
copyright become irrelevant?” Part of his answer with respect
to the Internet problem is technical control or anti-circumvention
technology, wherein he expounds two principles, namely, the
“technology of legitimate access’ and the ‘technology
of policing”.13
Cornish advocates the amalgamation of the legal process and
technology as part of the ‘digital agenda’ that would
help save copyright from the brink of irrelevance. Citing the Digital
Millennium Copyright Act of 1998 in the United States, the European
Directive on Copyright in the Information Society of 2001 and the two
WIPO treaties of 1996 as veritable legal instruments, he balances the
calculus of anti-circumvention between the rights of protectors of
digitised copyright materials and the users entitled to access
information. In the same breath, he examines what he terms the
‘blanket of liability’ that has enveloped the field of
content providers, service providers, the line of servers as well as
end users, though with exemptions, to show how ‘traumatised’
the copyright-based industries are by the Internet. Cornish also
discusses the most intriguing aspect of the nature of the Internet -
the absence of government. His critical evaluation of salient issues
– the virtues of free movement and access, and the removal of
the monopolisation of digitised programs - compels him to lend
measured support to legal protection for technical control which has
an embedded potential for optimal efficiency. It is in the balance of
property ownership, a hallmark of intellectual property protection,
and open access, one of the Internet’s clichés, that
Cornish locates the omniscience of the law. Cornish’s survey of
the functions and powers of collecting societies has not exactly
helped revive the commercial sustenance of copyright in the digital
environment. His concluding remark clearly reveals where his sympathy
lies – with the cause of the author in the midst of this ‘new
and perfect’ highway called the Internet.
‘Branding’ in Trade marks
The
last Part of the book deals with “Branding” where the
author traverses the foundations of trademark jurisprudence. Indeed,
trademark on the one hand has been viewed as conferring economic
monopolies on their owners with the accompanying incidence of
limitation on the freedom of traders, whilst on the other hand has
proved to be a useful instrument of consumer protection by shielding
the unwary public against the imperialist tendencies of trademark
owners.14
Yet in its historical evolution, trademark law has somehow managed to
bestride those two postulates which epitomise the dual rationale for
trademark protection. It is from this point that Cornish’s
discourse deals with the very different matters that have arisen in
the development of trademark law: registration systems; trademark
function analysis; trading and marketing ethos; and structure of
trademark rights. With the categorisation of two schools of thought –
‘Red-lighters’ and the ‘Green lighters’-
representing the two ends of trademark protectionism, Cornish,
somewhat dramatically captures the full horizon of some of the legal
and policy concerns that have shaped current development. While
Green-lighters argue for more extensive protection, Red-lighters
argue for limited and controlled protection. Although, right from the
outset, Cornish is quick to point out that he belongs to the Red
corner, in many specific instances the author nevertheless assumes
the role of umpire.15
Viewing branding as an economic co-efficient in the marketplace which
contributes significantly to business functioning and general
welfare, Cornish discusses the culture of branding with all its
platonic trappings and the much trodden function analysis in
trademark legal thinking. Cornish proceeds with a critical
examination of the role of trademark registers that have been
established in most jurisdictions, deriding the registered trademark
as a mere contrivance of convenience. He explores the tension and the
burdens of protection that exist in the penumbra of rights in the
mark by ‘trading’, those which arise by ‘registering’
and the interaction between the general law of unfair competition and
trademark law properly so called. Cornish examines the growing
practice of branding and advertising through trademark as part of the
driving force in current free-market economies. From the analysis,
trademark has been strongly linked with the trends in monopoly and
invariably features in any commercial regulatory process16.
Cornish cites the case of Coca Cola’s trademark, where Lord
Templeman refused registration for the shape of the coca cola bottle
- an important Red lighter’s authority - to curb the monopoly
that trademarks could engender17.
It was in that case that Lord Templeman’s famous remark was
made on that issue, that “This is another attempt to expand the
boundaries of intellectual property and to convert a protective law
into a source of monopoly”. However, the counter argument,
which has been fairly settled is that the nature of the trademark
right is only to exclude others from using the same or similar name
as trademark and does not prevent another entity from putting its own
product or services on the market. Therefore, the registration system
as part of the potentially monopolistic tendencies in branding
immediately engages the author’s attention.18
According to Cornish, the two extreme views are: first, that all
marks should be registrable without prior use, reflecting the Green
light opinion; and second, that prior registration is useful,
representing the Red light standpoint. Hence, the rules for the
functioning of trademark registers – registrability of mark,
use vis-à-vis non-use, maintenance by renewal etc - that have
evolved under different systems including the EC, US Lanham Act, UK
and other jurisdictions have significantly helped in regulating the
monopoly-competition calculus in trademark protection, particularly
in problematic cases involving descriptive, laudatory or geographical
words.19
‘Proportional Geometry’ is the term which Cornish adopts
to reflect upon the balance of confusion vis-à-vis association
in the subsistence of trademark rights.20
Cornish acknowledges how unsettled and unsettling the state of the
law is both in the courts and the Registries.21
Cornish’s
discussion of function analysis strikes at the very core of the much
trodden subject. He examines the three theories of trademark
functions, namely, origin/source, quality/guarantee and
advertising/investment. He further extracts two important postulates:
first, that the three functions, though distinct, are interwoven; and
second, that consumer expectations play a primary role in legal
protection, particularly in the quality-via-source axis. In a sense,
his functional synthesis of the trademark function has the
unanticipated effect of reducing the traditional distinctions of the
functions to a moot point. Irrespective of the Red or Green or the
Ruiz-Jabaro arguments, the main thrust of Cornish’s
extrapolation tends toward a controlled proliferation of trademark
rights. Registrations involving colours, smells, sounds even surnames
and shapes therefore must require clear evidence of distinctiveness.
However, when it comes to enforcing validly registered marks, Cornish
examines the change of scheme that ensues. He contends that, there is
a paradigm shift from the question “what should be registered”
to the question “for what is it registered” which strikes
at the underlying purpose the function analysis is meant to achieve.
Arsenal FC v. Reed22
provides a convenient but controversial exemplification of that
shift. Cornish’s critical discourse of Arsenal underscores the
juridical validity of the interplay of trade mark functions in the
scheme of protection, as much as the questions Mr Justice Laddie
referred to the European Court of Justice, whether the use of mark,
other than as an indication of source, constituted an infringement.
Or better still, whether or not to limit trademark function primarily
to that of indication of trade origin reflects the correct status of
the law23.
Origin function may appear to be the primary function, but Cornish’s
articulation of five compelling factors for legal protection broadens
the horizon of an otherwise narrow analysis24.
Cornish uses the Australian Dunedin’s Duff case,25
and once again the Baby-Dry case, to further bring out some of the
important factors in defining the legal protection of trademark -
factors such as: competitive freedom among traders; consumer interest
such as intellectual property in their brands; correct information
about source and qualities of goods or services; and promotion and
market definition. In drawing the line from the multiplicity of
critical factors, Cornish posits that appropriate legal protection is
that which “confines the exclusive rights within the limits of
what are necessary for honest practices”26.
The author finally draws the curtain with a brief discussion of the
tensions that have ensued in the notion of cummulation and
convergence of intellectual property rights vis-à-vis the
creation of sui generis rights. The relationship between
trademark registration and passing off which precedes it presents
that tension within the trademark sphere. Cornish acknowledges the
coincidence of the two forms of liability. However, he treats
trademark registration as a ‘preferred category’.27
Cornish’s
lecture comprehensively addresses the influence of the rapid
socio-economic and technological development that has taken place in
the last four or five decades on intellectual property, challenging
as it were, the development of the law as a creation of positive law.
The Lecture undoubtedly makes an invaluable contribution to legal
science and to both policy and normative debates in intellectual
property jurisprudence.
Adebambo Adewopo
Senior Lecturer
Faculty of Law, Lagos State University, Nigeria.
1 Wlilliam Cornish, Intellectual Property Omnipresent Distracting Irrelevant, at page 5
2 Diamond V. Chakrabarty, 100 S. Ct. 2204 (1980) at 2208.
3 Pages 7-10
4 See Reference Article 40 of the TRIPS Agreement and paragraph 6 of the Doha Declaration on TRIPS and Public Health.
5 Page 26 – 28
6 Page 28
7 page 35.
8 Ibid
9 See pages 39 - 40
10 Page 41
11 0p. cit
13 In the former, we find encryption techniques and all the measures to restrict access to sites containing authorized copyright material, and the latter are the presence of electronic watermarks and identifiers deployed for digitized recordings of music, films and multimedia.
14 In this sense, the role of trademark in regulating behaviour in the consumer society is admitted. The author cites Neil McCormick, “On the very idea of Intellectual Property: An Essay according to the Institutionalist Theory of Law”(2002) IPQ1
15 Page 77, Footnote 13, with respect to rights that exists to stop trade rivals or competitors from doing certain things or that is, between rights between competitors, Cornish belongs to the Green corner because of his choice for wider protection against each competitor.
16 See also “Holly Hobbie” TM [1986] RPC 421, HL
17 However, the shape of coca cola had been accepted as registrable under the Patent & Designs Act 1909.
18 See pages 83-88, 105-110 where Cornish devote considerable length of space in discussing the issue.
19 Or “stockpiling of marks” to use Cornish’s own words. See Page 86 where Cornish cites the famous “Perfection” “Chiemse” and “Baby-Dry” cases.
20 Page 86-88.
21 Ibid. @ 86
22 [2003] ETML 227, ECJ
23 at page 92-94
24 See pages 97-101. The following five factors are enumerated; protection against parallel import, protection of exclusive distributorships, protection against specific comparative advertising, protection of image promotion of celebrities and their organization and protection against association and dilution, all of which are eminently capable of aligning trademark principle with the wider economic issues.
25 Twentieth Century Fox v. South Australian Brewing [1996] ATPR 42,004
26 See page 105
27 Page 107