Editors' Note

In the week we wrote this editorial, former US Vice PresidentAl Gore accepted the Nobel Peace Prize for his environmentalwork with the words "We, the human race, are confronting a planetaryemergency—a threat to the survival of our civilisationthat is gathering ominous and destructive potential even aswe gather here". What, you may ask, has this to do with a Journalsuch as this, concerned with     

Jerome Gilson

Distinguished US lawyer Jerome Gilson has practised trade markand unfair competition law for more than 40 years. He is bestknown in the US and internationally as the original author ofTrademark Protection and Practice (LexisNexis/Matthew Bender),which was renamed Gilson on Trademarks in 2007. How did you first become interested in IP? Five years into general practice, I sent a Time article about     

Philip Grubb

Dr Philip Grubb, the distinguished patent specialist and authorfound time to answer questions put to him by JIPLP. How did you first become interested in IP? In 1971, I was working as a research scientist at the CorporateResearch Laboratory of ICI in Runcorn, looking for alternativesto a lifetime career in research. A job in the small patentdepartment there was advertised internally. I considered thisbut thought ‘patentssounds difficult, you have to study     

In Person

Arnaud Folliard-Monguiral is a lawyer in OHIM's Industrial PropertyLitigation Unit. He is the regular contributor, with David Rogers,of the JIPLP annual Community trade mark case law round up.JIPLP managed to catch up with him for long enough to ask afew questions... How did you first become interested in IP? When I was finishing my law studies in the early 90s, IP wasbeing revolutionized     

Adam Liberman

Adam Liberman, one of Australia's leading IP lawyers, is nowGeneral Counsel of CSIRO, Australia's national science agency.Also an established IP author, here he found time to answerquestions put to him by JIPLP. How did you first become interested in IP? Various unrelated strands formed my IP interest. The first waswhen I read Charles     

Editors' Note

So, what do our readers think? Is the state of the capital marketsa blip or is it the start of a slowdown? As your Editors penthis note, it sure is a little choppy out there. Whichever way you would place your bet on where it all goesfrom here, it would be difficult for any of us to complain aboutthe deal flow over the period that Capital     

A growing field

Ten years ago, you would have been hard-pressed to find a legaltextbook, even in the IP field, specifically referring to brands,branding, or brand protection. Today, however, the shelves ofspecialist legal booksellers contain a wide variety of booksrelating to branding covering the spectrum, from academic analysisof the differences between brands and trade marks to so-calledpractitioner guides on strategic protection issues. The growthin this field reflects the spread of IP rights generally inthe commercial arena and its strategic importance to businesseslarge and small. Like      

Profit Neutrality in Licensing: The Boundary Between Antitrust Law and Patent Law

We address the patent/antitrust conflict in licensing and developthree guiding principles for deciding acceptable terms of license.Profit neutrality holds that patent rewards should not dependon the rightholder’s ability to work the patent himself.Derived reward holds that the patentholder’s profits shouldbe earned, if at all, from the social value created by the invention.Minimalism holds that licenses should not be more restrictivethan necessary to achieve neutrality. We argue that these principlesare economically sound and rationalize some key decisions ofthe twentieth century such as General Electric and Line Material.     

Commercial Practices Directive: draft UK regulations published

The proposed implementation of the Unfair Commercial PracticesDirective (2005/29/EC) by the draft Consumer Protection fromUnfair Trading Regulations 2007 is unlikely to improve the existingUK IPR enforcement regime.     

Overcoming the challenges posted by technology to traditional copyright law: from Betamax to Grokster

Legal context: Dual use technology, or technology which can be used for bothinfringing and non-infringing uses, raises interesting issuesin the area of copyright law. This note analyses inter aliathe two US Supreme Court decisions on dual use technology, separatedby a gap of over 20 years—Sony v Universal Studios (1984)and MGM v Grokster (2005). Key points: Sony lays down the famous ‘Betamax’ defence—ifthe technology is ‘capable of substantial non-infringinguses’, then it cannot be challenged as infringing. Thistest had stood the test of time, and it is only recently inGrokster that there arose an occasion to reconsider its application.The Court in Grokster, borrowing from the jurisprudence developedin Patent law, recognized a novel test of liability—basedon the active ‘inducement’ to infringe. The flawin Grokster is that despite its attempt to develop new standardsfor a digital age, the ruling leaves areas of uncertainty. Practical significance: Dual use technology has become ubiquitous in this age—fromthe iPod to YouTube to P2P software, all are capable of beingused in lawful as well as unlawful ways. Legal pronouncementshave the potential to impact not just the development of law,but also innovation in technology. Some believe that the ‘brightline’ of Sony has been muddled thereby threatening technologicalinnovation. Others, me included, believe that Sony is inapplicablein the face of new technology, and hail the decision in Groksteras a positive step forward in what it actually decides. However,in what it does not decide, Grokster still represents a lostopportunity by the Court to clear up the muddled waters.     

The no-conflict rule: the acceptance of traditional equitable values?

Boardman v Phipps is a leading authority on the no-conflictrule. The House of Lords maintained the strict rule that historicallyequity has imposed on a fiduciary. This article explores howthe dissenting judgment of Lord Upjohn in Boardman v Phippshas been preferred by the lower courts and why the courts haveadopted such a position. This has fuelled a more general debateas to whether the no-conflict rule should be harsh or more flexible.Recent cases including Bhullar v Bhullar are discussed to illustratethe present approach of the courts to the recurring issues surroundingpossible applications of the no-conflict rule.     

'Trade mark use' in Europe: revisiting Arsenal in the light of Opel and Picasso

Legal context: The European Court of Justice (ECJ) decision in the case ofArsenal Football Club v. Reed led to uncertainty regarding thepractical scope of a trade mark proprietor's property rights. Key points: The uncertainty resulted from a failure of the ECJ to addressclearly the issue of what constitutes infringing trade markuse. The ECJ ignored the question of the High Court as to whetheruse of a trade mark as an indication of origin is necessaryfor establishing infringement. They instead established an ambiguousstandard for what constitutes infringing trade mark use, suggestingthat only use that jeopardises the essential function of a trademark is an infringing use. This ambiguity has had problematicimplications for subsequent interpretations of trade mark law,particularly in the Court of Appeal in Arsenal and the Houseof Lords in R v Johnstone. Two relatively new ECJ cases may help clarify the issue. InOPEL, the ECJ suggested that infringing use of a trade markmust be use that is perceived by the relevant public as a designationof origin. The Picasso decision limits the effect of the Arsenaldecision on the relevance of confusion in non-sale situationsto the facts of Arsenal. In particular, it stresses the pointthat when assessing likelihood of confusion in the context ofan opposition to an application for registration the court shouldfocus on the perception of the relevant public at the pointof sale. Practical significance: The benefit of these two cases is that they create some clarityfor legal practitioners and the Courts when addressing the questionof what constitutes infringing trade mark use.     

Database rights' subsistence: under starter's orders

Legal context. The criteria for database rights' subsistenceset out in the Directive on the Legal Protection of Databasesare largely undefined. Guidance on their interpretation hasbeen provided by the ECJ and its guidance on qualifying investmentactivities was applied by the Court of Appeal in the BHB case. Key points. The article comments upon the guidance on the subsistencecriteria for database rights provided by the Advocate Generaland the ECJ in the BHB and Fixtures Marketing cases and analysesthe Court of Appeal's application of the production-processingdichotomy in the BHB case. It offers thoughts on thorny issuessuch as the avoidance of a double benefit for database developersin copyright and database right, the role of investments intechnology, and the effect of the production-processing dichotomyon the risk of monopolies over facts. Practical significance. Database developers seeking databaserights' protection should keep the subsistence criteria in mindwhen devising their processing arrangements, designing theirdatabases, and recording their investment activities associatedwith database development.     

The Spanish Constitutional Tribunal's Decision in Guatemalan Generals: Unconditional Universality is Back

On 26 September 2005, the Spanish Constitutional Tribunal reversedthe decisions of the Audiencia Nacional and the High Court (TribunalSupremo) in the case of the Guatemalan Generals. According tothe two judicial bodies, the exercise of universal jurisdictionover international crimes required a link between the crimeor the victims or the offender and Spain, such as the presenceof the offender on Spanish territory or the Spanish nationalityof the victims. The Constitutional Tribunal held, instead, thatthese requirements are contrary to the principle pro actione,i.e. they result in an unjustified restriction of the constitutionalright to effective judicial protection. The Tribunal also clarifiedthat universal jurisdiction, whose aim is fighting impunity,does not require any link other than the universal characterof the values protected by the provisions criminalizing themost serious violations of international law. The presence ofthe accused in Spain is merely a condition for trial, not adistinct ground of jurisdiction; in other words, the accusedmust be in Spain for the trial to begin, but jurisdiction maybe exercised even in his absence, for example for the issuanceof a request for extradition. The only condition to which theexercise of universal jurisdiction is subject is that the stateof the locus commissi delicti is not already investigating andprosecuting the case effectively.     

TRIGGERING INSPECTIONS EX OFFICIO: MOVING BEYOND A PASSIVE EU CARTEL POLICY

The implementation of leniency programs is considered a successboth at a EU Community level and in individual member states.The paper discusses the value of ex officio investigations forcartel detection in light of leniency and complaint-based cases.Are ex officio investigations still needed? Should a competitionauthority concentrate its scarce resources exclusively on theprosecution of leniency or complaint-based cases or follow aproactive market monitoring policy? It is argued that investigationstriggered ex officio are an important complementary enforcementtool to the other passive instruments available to a competitionauthority. A bottom-up methodology for triggering inspectionsbased on economic criteria is presented allowing for a moreproactive cartel policy.     

Ricketson and Ginsburg: Berne baby, Berne...

‘A book may be good for nothing; or there may be onlyone thing in it worth knowing; are we to read it all through?’(Samuel Johnson) This section is dedicated to the review ofideas, articles, books, films and other media. It will includereplies (and rejoinders) to articles, the evaluation of newideas or proposals, and reviews of books and articles both directlyand indirectly related to intellectual property law.

International Copyright and Neighbouring Rights: The Berne Conventionand Beyond 2nd Edition By Sam Ricketson and Jane Ginsburg, 2006,Oxford University Press Price: £225, Hardback, ISBN: 0-19-825946-8pp lxxxvii + 1540, 2 Volumes   The praise     

NEXT STEPS IN THE EVOLUTION OF ANTITRUST LAW: WHAT TO EXPECT FROM THE ROBERTS COURT

Under the leadership of Chief Justice John G. Roberts, Jr.,the Supreme Court has demonstrated a willingness to cast asidethe Court's prior antitrust decisions. The qualified per serule applicable to tying surely will not survive much longer,but what else might be in store is more speculative. This essayidentifies four decisions relating to competitor collaborationin which the Court's prior application of the per se rule doesnot comport with its modern decisions. In two of the cases,the conduct likely would be found lawful today; while in theother two, the conduct most likely still would be condemnedbut only after an abbreviated application of the rule of reason.This essay also identifies three legal doctrines ready for retirement.They are the absolute requirement of market delineation as apredicate for merger analysis, the outmoded approach to marketdelineation of Brown Shoe, and the unhelpful formulation ofthe monopolization offense in Grinnell.     

The Bosphorus Ruling of the European Court of Human Rights: Fundamental Rights and Blurred Boundaries in Europe

The recent case of Bosphorus Airlines v Ireland provided theEuropean Court of Human Rights (ECtHR) with an opportunity torefine further its relationship with the EU. In particular,the ECtHR was called upon to clarify when States could be heldresponsible for actions taken under the banner of the EU. Thisarticle examines the status quo prior to the Bosphorus judgment,and then scrutinises the judgment itself, focusing particularlyon the use and scope of the doctrine of ‘equivalent protection’to determine State responsibility. The doctrine as outlinedin Bosphorus is applied to some likely scenarios involving EUaction and its relative merits and disadvantages are discussed.The article also briefly addresses the further global implicationsof the judgment, namely for the legal accountability of theUN Security Council and the ongoing issue of responsibilityof international organisations under international law.     

Regarding/Disregarding: The Judicial Rhetoric of President Barak and the International Court of Justice's Wall Advisory Opinion

In Mara'abe v. Prime Minister of Israel (September 2005), Israel'sHigh Court addressed the effect which it should give to theInternational Court's Legal consequences of the constructionof a wall in Occupied Palestinian Territory advisory opinion.This had declared the wall illegal but, while affirming thatit shared the International Court of Justice's normative rulings,the High Court reiterated that it thought the wall a lawfulsecurity measure. Rather than dissect the substantive treatmentof the issues involved, this article examines the structureand rhetorical techniques employed by President Barak in hisleading judgment in Mara'abe. He effected a skilful practicaldisregard of the International Court's normative findings throughan elision of argument by relying on the doctrine of res judicata—aconcept that has no relevance whatsoever to advisory opinions.     

UNITED STATES COURTS AND THE OPTIMAL DETERRENCE OF INTERNATIONAL CARTELS: A WELFARIST PERSPECTIVE ON EMPAGRAN

E. Hoffmann–La Roche Ltd. v. Empagran S.A. concerned aprivate antitrust suit for damages against a global vitaminscartel. The central issue in the litigation was whether foreignplaintiffs injured by the cartel's conduct abroad could bringsuit in U.S. court, an issue that was ultimately resolved inthe negative. We take a welfarist perspective on this issueand inquire whether optimal deterrence requires U.S. courtsto take subject matter jurisdiction under U.S. law for claimssuch as those in Empagran. Our analysis considers, in particular,the arguments of various economist amici in favor of jurisdictionand arguments of the U.S. and foreign government amici againstjurisdiction. We explain why the issue is difficult to resolve,and identify several economic concerns that the amici donot address, which may counsel against jurisdiction. We alsoanalyze the legal standard enunciated by the Supreme Court andapplied on remand by the D.C. Circuit, and we argue that itsfocus on "independent" harms and "proximate" causation is problematicand does not provide an adequate economic foundation for resolvingthe underlying legal issues.