LANDMARK CASES IN INTELLECTUAL PROPERTY LAW – Borghi Review

Vol. 10 No. 1 (September 2020) pp. 1-5 

LANDMARK CASES IN INTELLECTUAL PROPERTY LAW, edited by Jose Bellido.
Hart Publishing, 2017. pp. xxv + 381, Hardcover, $108. 

Reviewed by Maurizio Borghi 
Centre for Intellectual Property Policy & Management (CIPPM), Bournemouth University 
mborghi@bournemouth.ac.uk 

This is how you make a footnote.¹ Carry on. 

Intellectual property is probably one of the most contentious fields of contemporary legal studies, but it is at the same time, to a large extent, a discipline still in search of identity. Not surprisingly, the historical and theoretical foundations of intellectual property have attracted increasing attention from researchers, within and beyond the boundaries of law. Not more than fifteen years ago, the essential bibliography on copyright history in English language could have been wrapped up in one single footnote, and a long footnote could have accommodated the main literature on the history of all intellectual property rights as such. This is certainly no longer the case today. Historical research on the legal, theoretical, and social foundations of intellectual property has proliferated in many directions. It has transformed from an ancillary subject at the periphery of the intellectual property debate into one that attracts the foremost scholars in the field. 

The book LANDMARK CASES IN INTELLECTUAL PROPERTY LAW, edited by Jose Bellido, inscribes itself into this fertile ground of scholarship. It stands out, first of all, for the quality of the contributors, who are authors of some of the most authoritative and most-cited works on intellectual property history. Although first-hand research into litigation has been part and parcel of this field for a long time, not many works have systematically collected original contributions along the common thread of case law analysis. The most significant precedent in this genre is probably the remarkable collection of essays on leading US cases edited by Jane Ginsburg and Rochelle Cooper Dreyfuss over a decade ago.² 

The interpretation of intellectual property history through the lenses of institutional and commercial practices, such as licensing and litigation strategies, is one of the distinctive features of Jose Bellido’s scholarship.³ The “case studies” methodology that defines this book shares the same rationale, namely – as Bellido puts it in his chapter – that “there is much to be gained in looking at the background of the dispute, its emergence, and how it is litigated by the protagonists.” (p. 206). 

The thirteen cases selected for this book are all by British courts, with one exception for a decision coming from the European Court of Justice. The time span starts in the 1600s, when patents were still called “monopolies” and copyright was not yet even a word, and ends in the present days, under the growing influence of European Union law (still formally binding in the United Kingdom at the moment of writing this review). What makes the selected cases landmarks in intellectual property law? 

As acknowledged by Jose Bellido in his preface, there are a number of reasons why a particular legal dispute marks an historical turning-point. In the most classical sense, it is so because of the disputes’ enduring legacy as legal precedent, typically due to the way in which a particular legal principle has been established. Alternatively, the landmark quality may depend on the matter around which the controversy arose, for example when a new technology or business practice challenges established norms. In a more general sense, a case stands out if it has something crucial to say that goes beyond the facts of the litigation, and perhaps also beyond the boundaries of law. 

A glance at the table of contents reveals that the choice of cases corresponds only partially to the typical reading list of IP courses. Evidently, the editor and the contributors were less preoccupied with ticking the boxes of an ideal list than to make an original and unique contribution to scholarship. There are typically two ways of advancing knowledge and understanding in a legal discipline through case studies: either you raise the attention to cases that have not yet received adequate consideration, or you tackle well-known cases from a fresh perspective. The book does both of these things. On the one side, it challenges the acquired assumptions on classical authorities and, on the other, it expands the notional catalogue of benchmark cases by pointing to “unorthodox” and less researched authorities. 

Taken as a whole, these thirteen cases traversing five centuries of British history tell a story with many layers of meaning. First, and more obviously, there is a story of legal disputes and litigation, with their tangled backgrounds of business and personal micro-histories that frequently intertwine with the broader societal, cultural, and economic dimensions. This story entails also a narrative of legal strategies adopted by counsels, and how these strategies succeeded or failed, thereby influencing the development of the discipline. On another level, this same litigation describes a discipline in search of identity: different legal threads with diverse statutory or common law origins that only at a very late stage converge under the common umbrella construct of “intellectual property”. This narrative seems to suggest that such convergence is not just the outcome of contingent factual circumstances, but unfolds a pattern that is deeply entrenched in the specific British legal tradition. Indeed, it is in this tradition that “property” emerged more prominently as the common thread that unites interests as diverse as those of authors, inventors, and trade mark owners. In this connection, there is at least another layer of meaning, which remains largely implicit in the book: it is the story of how different legal traditions, across the world, have shaped the fundamental principles of the discipline and how these traditions have influenced each other over the years. 

The book is a treasure trove of insights into all of these layers. It begins by revisiting the impact of early statutory law on “monopolies”, with Sean Bottomley’s enlightening reading of Mansell v Bunger (1626), and then embarks in a long epistemological journey with a number of direct and indirect cross-references. 

In the course of this journey, the book is not afraid of reopening some of the most prominent “dossiers” of intellectual property history and theory. One of these is the 18th Century’s “literary property debate”, revolving around the question of whether there is an authors’ property right protected at common law that precedes and exceeds the limited right created by the statute. Because of its vast implications on the origin, purpose, and limits of copyright, the question continues to attract attention from copyright historians and theorists alike.⁴ The chapter by H. Tomás Gómez-Arostegui on Stationers v Seymour (1677) contributes to a better understanding of the debate. Based on the analysis of newly discovered manuscript reports and records, Gómez-Arostegui makes a convincing case that the reliance on this precedent by supporters of the subsistence of a common law intangible right vested in authors was by no means wrong. “In short,” Gómez-Arostegui tells us, “a number of lawyers and judges in the late seventeenth century believed that an author’s right in literary property was a plausible basis for argument, even though no statue expressly mentioned authors’ rights before 1710.” (p. 54). This means that “the notion of an antecedent [authors’] right at common law was not fanciful or novel.” (p. 54). 

To be sure, this finding does not change the fact that the notion of a perpetual authors’ right at common-law, and the related narrative of the author as proprietor of a transferable object of property, was largely instrumental to the interests of publishers, to whom the alleged right could be transferred.⁵ This story, which has been elsewhere described as the “latent story about commodification of knowledge”,⁶ seems to be confirmed by the other copyright cases discussed in the book. Indeed, perhaps not surprisingly, in none of these cases are the authors’ personal interests the driving cause or the main issue at stake. 

The argument developed in Gómez-Arostegui’s chapter is echoed in Barbara Lauriat’s discussion of a later case, widely acknowledged as seminal in Anglo-American copyright law, namely the House of Lords decision in Walter v Lane (1900). The case revolved around newspaper reports of oral speeches. Although the focus was on copyright subsistence in these reports, the question of whether oral speeches as such attract common law copyright was at the background of the litigation. Lauriat’s thorough reconstruction of the facts seems to suggest that the litigation may not have happened, should the author of the speeches (the Earl of Rosebery) not have wrongly assumed that he did not own any copyright to assert against Lane to prevent the publication of his addresses. Yet the chapter makes an even more important point, which sheds new light into the persisting legacy of this case as an authority for the British concept of originality. This authority, argues Lauriat, is questionable, not because of its incompatibility with the modern, “higher” standard developed at the European level, but because it is not to be regarded as a case on originality in the first place. It is, rather, a case on authorship. The teaching of the case is not that reports qualify as “original” literary works, but that reports attract copyright despite not being original works of authorship – and this is because “there was nothing in the statute that suggested only an ‘original composition’ would gain copyright protection.” (p. 168). 

The divorce between authors’ interests and the actual operation of copyright law is perhaps another “latent history” that the book helps unveil. In fact, the dispute in Walter v Lane was carried out in complete disregard of the author’s reluctance to be dragged into a lawsuit. In Sayer v Moore (1785), the first of a series of cases on alleged copyright infringement in maps and charts thoroughly discussed by Isabella Alexander (pp. 59-86), cartographers played a major role, but only as expert witnesses of the court. The representation of the author of the Popeye comic strip and his heir is a controversial aspect of King Feature Syndicate (1940), as presented by Jose Bellido. This case is best remembered for the emergence of copyright “as an economic and social platform for licensing and merchandising activities” where syndication, and not authorship, was “the basis of the intangible property rights.”(p. 230). 

There is another landmark element in the King Feature case, namely the role played by the counsel’s strategy in pursuing a test case with very uncertain results. The choice of the court in which to bring proceedings is a distinctive point of interest in Day v Day, Day and Martin (1816), a litigation that “signalled a shift in trademark enforcement practice.” (p. 87) and that forms the basis of Lionel Bently’s insightful discussion of early trademark history. One century later, in R v Johnstone (2003), a case involving counterfeited CDs, the plaintiff’s counsel sued on trade mark infringement grounds, instead on the more logical copyright infringement grounds, because of the stronger criminal sanctions then available under the Trade Marks Act of 1994. In this case, however, the strategy did not pay off, as the House of Lords famously concluded that the use of registered trademarks such as “Bon Jovi” in the front cover of bootlegged CDs was not a “use as a trade mark”. In her analysis, Elena Cooper focuses on a further element of interest of this ruling, namely the relationship between civil and criminal law in intellectual property, and explains why the court rightly refrained from establishing “closer analogies between intellectual property crime and the law of theft.” (p. 343). 

The precedent set by R v Johnston as to the trade mark function had short life due to the subsequent jurisprudence of the European Court of Justice, whose landmark ruling on functionality in Lego Juris v OHIM (2010) is the focus of the last chapter of the book. Alain Pottage contextualizes the case on the background of the aggressive strategy pursued by the Danish company to extend its expired patent rights. “The [Lego] brick is so thoroughly implicated in the history of intellectual property law – Pottage tells us – that one could imagine taking it as the vehicle of an engaging and expansive course in intellectual property law” (p. 347). Pottage takes the brick as a vehicle for the understanding of how the nature and operation of trade mark law has evolved at the interface between EU and national jurisprudence. 

However, the area of intellectual property where British jurisprudence has engaged more intensively with doctrines and principles from other European traditions is probably patent law. The three chapters on the modern patent system cover systematically the foundational elements of the law, namely subject matter qualification, obviousness, and construction of the scope of the claims. The latter is discussed extensively in Seymour Mauskopf’s chapter on Nobel Explosives Company v Anderson (1894), which digs critically into the origin of the British approach to claim interpretation. The contentious issue of subject matter eligibility is tackled by Brad Sherman with reference to Slee & Harris’s Application (1966), one of the earliest decisions on computer programs. Another controversial subject matter, biotech inventions, is at the centre stage of Biogen v Medeva (1996). Luke McDonagh provides a critical re-reading Lord Hoffmann’s judgment on obviousness and sufficiency in the context of the emergence of a disruptive technology. 

The book pays the right tribute to common-law intellectual property in two of its chapters. Hazel Carty presents an elegant and articulated analysis of Spalding v Gamage (1915), the leading authority on the law of passing-off. The widespread legacy of Coco v Clark (1969) for the law of breach of confidence is discussed in Tanya Aplin’s chapter. The surprising influence of this lower court decision across different jurisdictions is examined by a systematic quantitative and qualitative analysis of citations, which provides remarkable insights into the many trajectories followed by this legacy. 

In its diversity of approaches, directions, and methodologies, the book offers a thoughtful opportunity to rethink the foundations of intellectual property, as well as its purpose and future. It will be an indispensable work of reference for research in the years to come. 

Suggested Citation: 10 The IP Law Book Review 1 (2020).

© 2020 Maurizio Borghi

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1. Footnote content.
2. INTELLECTUAL PROPERTY STORIES, Jane C. Ginsburg and Rochelle Cooper Dreyfuss, eds. (Foundation Press, 2006).
3. See e.g. Jose Bellido and Fiona Macmillan, Music Copyright after Collectivisation, I.P.Q. 231-246 (2016); Jose Bellido and Kathy Bowrey, From the Author to the Proprietor: Newspaper Copyright and The Times (1842-1956), 6 J. of Media Law, 206-233 (2014); Jose Bellido, Codified Anxieties: Literary Copyright in Mid-Nineteenth Century Spain, in RESEARCH HANDBOOK ON THE HISTORY OF COPYRIGHT LAW, Isabella Alexander and H. Tomás Gómez-Arostegui, eds. (Edward Elgar, 2016), 423-443.
4. See in particular Mark Rose, AUTHORS AND OWNERS. THE INVENTION OF COPYRIGHT (Harvard University Press, 1993), 92-101; Brad Sherman and Lionel Bently, THE MAKING OF MODERN INTELLECTUAL PROPERTY LAW (Cambridge University Press, 1999), 9-19; Ronan Deazley, RETHINKING COPYRIGHT: HISTORY, THEORY, LANGUAGE (Edward Elgar, 2006), 16-25; Abraham Drassinower, WHAT’S WRONG WITH COPYING? (Harvard University Press, 2015), 152-155.
5. See Mark Rose, AUTHORS AND OWNERS, 111-112.
6. Abraham Drassinower, WHAT’S WRONG WITH COPYING?, 155.