IP special issue
(2018) 15:2 SCRIPTed 170–348

Full issue PDF Issue DOI: 10.2966/scrip.150218

Cover image



  • Brexit and the Unitary Patent Package: A Further Compromised Future?
    Aisling McMahon, pp. 175-208
    Full text PDF

    Developing a unitary patent system for Europe has been debated for over 50 years but never achieved. Nonetheless, a unitary patent package (UPP) for the current 25 EU Member States who wish to participate is now within grasp. However, as this system neared completion, the UK voted to leave the EU by referendum on 23 June 2016. The UK subsequently triggered Article 50 TEU on 29 March 2017 commencing its withdrawal from the EU (Brexit) in a process expected to take two years. Beyond the broader legal and political questions which Brexit gives rise to, it raises a key question for patent lawyers, namely, whether, and under what circumstances, the UK can continue to participate in the Unified Patent Court (UPCt) system and European Patent with Unitary Effect (EPUE) when it leaves the EU? In November 2016, despite the Brexit vote, the UK government confirmed its intention to join the Agreement on the Unified Patent Court (AUPC) — and subsequently ratified the AUPC on 26 April 2018. However, this article argues that in light of the complex relationship the UPCt has with the EU, including, the primacy of EU law in the operation of the UPCt and links between the UPCt and the Court of Justice of the European Union (CJEU), joining the AUPC at this point is a curious move and one which is inconsistent with the UK’s previous more general statements on Brexit. In particular, in February 2017 Theresa May while outlining key facets of Brexit stated that the UK would not be subject to the jurisdiction of the CJEU once it leaves the EU. The article highlights the difficulties with ameliorating this position with the UK’s continued participation in the UPP post-Brexit. It argues that Brexit will likely sound the death knell for the UK’s membership of EPUE. Moreover, although UK participation in the UPCt seems more likely there remains considerable challenges to tackle in this respect. Furthermore, the question mark that exists over the UK’s participation in the UPCt and EPUE post-Brexit has attendant consequences for the general feasibility of the UPP. Accordingly, this article argues that instead of focusing on how to keep the UK within the currently devised system, Brexit provides further impetus to pause and consider whether the current proposal is still worthwhile given that it will create a more complex and fragmented European patent landscape at the supranational level. Instead, it echoes calls that a better solution would be to consider ways to modify the current system or redesign a new system to include not just the UK but also other European Patent Convention states which are not in the EU.

    Keywords: Unitary Patent, Brexit, European Patent Convention, United Kingdom

  • Trade Marks and the Consumer Society
    Andrew Griffiths, pp. 209-241
    Full text PDF

    This article considers how trade marks have increased the ability of some firms to attract demand to their products through exploiting the transformation of the nature of consumption associated with the rise of the “consumer society” or “consumerism”. This has involved trends such as the rise of advertising and brand-based marketing, a greater emphasis on the presentation, design and other aesthetics of products, the marketing of “novelty” in various forms along with the rapid upgrading of products and the cultivation of brands as focal points for “values, attitudes and lifestyles” (“VALs”) marketing. As the legal platform for branding, trade mark law has enabled some firms to engage in these practices and attract demand to their products despite the space that may lie between them and consumers in the age of market globalisation. The paper considers the social value of this contribution and relates it to broader issues of business ethics and social responsibility.

    Keywords: Trade marks, brands, consumerism, marketing, waste, social responsibility

  • Digitalisation and Intermediaries in the Music Industry: The Rise of the Entrepreneur?
    Morten Hviid, Sofia Izquierdo-Sanchez, and Sabine Jacques, pp. 242-276
    Full text PDF

    Prior to digitalisation, the vertical structure of the market for recorded music could be described as a large number of creators (composers, lyricists and musicians) supplying creative expressions to a small number of larger record labels and publishers. These funded, produced, and marketed the resulting recorded music and subsequently sold these works to consumers through a fragmented retail sector. We argue that digitalisation has led to a new structure in which the retail segment has also become concentrated. Such a structure, with successive oligopolistic segments, can lead to higher consumer prices through double marginalisation. We further question whether a combination of disintermediation of the record labels function combined with ‘self-publishing’ by creators, will lead to the demise of powerful firms in the record label segment. If so, this would shift market power from the record label and publisher segment to the retail segment (and new intermediaries such as ISPs), rather than increasing the number of segments with market power.

    Keywords: Copyright, music industry, self-publishing, retailers

  • An Empirical Study of the Use of Automated Anti-Piracy Systems and Their Consequences for Cultural Diversity
    Sabine Jacques, Krzysztof Garstka, Morten Hviid, and John Street, pp. 277-312
    Full text PDF

    EU policy makers are currently debating copyright reforms which aim to provide an ecosystem for the effective combatting of online infringements through the use of algorithms while fostering, amongst other things, cultural diversity. As the goals set by the EU Commission for the Digital Single Market Strategy will only be met if cultural diversity is adequately preserved and promoted, it is important to analyse how algorithms operate as copyright enforcement mechanisms. This article provides an empirical analytical framework on how cultural diversity can be measured in the context of copyright reform suited for the digital environment.

    Keywords: Intermediaries, liability, safe harbour, copyright, cultural diversity, algorithms, EU, United Kingdom, freedom of expression, parody

  • Territoriality in Intellectual Property Law: Examining the Tension between Securing Societal Goals and Treating Intellectual Property as an Investment Asset
    Emmanuel Kolawole Oke, pp. 313-348
    Full text PDF

    The principle of territoriality is one of the foundational principles of International Intellectual Property Law. This principle allows countries to design their intellectual property laws in a manner that facilitates the achievement of specific societal goals. However, while it is true that this principle has managed to survive the incorporation of intellectual property into the international trade law system (via the WTO’s TRIPS Agreement), some scholars have expressed concern that the incorporation of intellectual property into the international investment law system via investment agreements (such as bilateral investment treaties) constitutes a potential threat to the principle of territoriality in the international intellectual property system. This paper will investigate the tension between the principle of territoriality and the global harmonisation of intellectual property standards in the context of the current iteration of intellectual property as an asset in investment agreements. Specifically, it will critically examine how this tension was resolved in two recent investment arbitration disputes. The first is the dispute between Philip Morris and Uruguay which concerned the latter’s implementation of certain measures to curb the consumption of tobacco products in its country but which Philip Morris construed as an expropriation of its trademarks. The second is the dispute between Eli Lilly and Canada which concerned the interpretation of the utility requirement under Canadian patent law. These cases will be used to assess whether there is still scope for the preservation of the principle of territoriality within the investor-state dispute settlement system.

    Keywords: International intellectual property law, international investment law, investor-state dispute settlement system, Uruguay, Canada, Philip Morris