Book review: Copyright Law and Derivative Works by Omri Rachum-Twaig

Calling a work "derivative" is not a compliment, but there has been a tendency (since at least the Gowers Review) to consider the way that copyright laws treat derivative works as too restrictive. The author's starting point is the proposition that copyright regulates creativity: indeed, "regulating creativity" appears as a sub-title on the front cover. It seems to me that exploring creativity through the prism of derivative works is the wrong starting point, but I don't think it detracts from this fascinating and important book.
It seems customary these days to explain that one has been given a review copy of a book, so let me start by stating (though it seems pretty obvious to me) that I have been given a review copy of this book, published recently by Routledge at the eye-watering price of £115 - that being the main reason that declaring the gift of a review copy is surely redundant. I wouldn't go so far as to say that it's worth £115 of anybody's money, but it will be worth that much of some people's money, and it is a very interesting not-so-little (190 pages of real text) monograph, not padded out with lots of front- and back-matter.
After considering matters of quantum, always the first thing I notice about a book, I start to wonder about the author. He is, the book tells me, an adjunct professor of law at the University of Tel Aviv. The Internet tells me more, and I was particularly interested to read that his first degree is a Bachelor of Music and that he has had an impressive orchestral career already. That might have been his route into copyright law, but if it was it doesn't show in this book, and I found that slightly disappointing: but it doesn't claim to be a book about music copyright, so my disappointment is probably misplaced anyway.
The work, my reservations about the focus on derivative works notwithstanding, is an exploration of how well copyright understands creativity, compared with other fields of study: so, despite the title, it is quite light on black-letter copyright law - and more interesting for it, IMHO. It uses derivative works to inform its discussion of creativity, considering whether the law's treatment of the right to make derivative works (and its inclusion, generally, in the bundle of exclusive rights that the copyright owner enjoys) is compatible with what other disciplines teach us. The author examines the cognitive aspects of creativity before going on to look at genre theories (with an interesting discussion of how Sherlock Holmes derives from the work of Edgar Allen Poe) and the justifications for what he calls the "derivative works right", though I am not convinced of the need to identify it as a distinct instance of copyright protection - reproduction right ought to do the job.
But perhaps that remark just shows me to be unsympathetic to the argument that copyright, in the interest of encouraging creativity, should be more liberal in its treatment of derivative works: surely "derivative" is the opposite of "creative" or "original", and where a later creator wants to use another's copyright material it is a transaction that should be resolved by licensing, not by permitting otherwise infringing acts. A transformative work is another matter, and to my mind copyright should be encouraging the creation of such works rather than engaging in a sterile argument about creating space to make derivative works, space which already exists and is regulated by the requirement that making them requires the copyright owner.

Guest book review: Intellectual Property in Israel

I am delighted to present a review of Intellectual Property Law and Practice in Israel by Eran Liss and Dan Adin, Oxford University Press, 2012), a guest post by my good friend Mehmet Artemel, of Bogazici University, Istanbul. The rest of this post is his work ...

The book is published by Oxford University Press with the following particulars: OUP USA, 676 pages, 235x156mm, ISBN13 978-0-19-991741-9 / ISBN10: 0-19-991741-8; Paperback; 31 May 2012.

Existing reviews and references:
To the best of this reviewer’s knowledge, save for the publishers’ blurb and the promotional message on the website of the authors’ firm, Adin-Liss Law Offices, commentaries hitherto made on the book have been located in the following sources:

• On the back cover; by Dr. Amir H. Khoury, Senior Lecturer, Faculty of Law, Tel Aviv University and Professor Jeremy Phillips, Editor, Journal of Intellectual Property Law & Practice.
• On The IPKat weblog by Jeremy Phillips.
• On The IP Factor weblog by Dr. Michael Factor, posted (in chronological order) on 29 April 2012, on 15 July 2012 (also quoted in its entirety on 16 July 2012), and on 22 July 2012).

Scope and breadth:
A page count of each one of the 11 chapters attests to the authors’ contention that “[t]his book provides a comprehensive view of the laws and case law in the entire range of intellectual property laws in Israel” (p. xxiii, Preface).

Perhaps, the most striking first impression one gets from a cursory flip through the book before undertaking a detailed reading of this hefty volume is the scope and comprehensive nature of the contents. Indeed, as noted by all three eminent reviewers, the book’s “length reflects its comprehensiveness” (Michael Factor), while “the breadth of coverage and depth of analysis” (Amir Khoury) gives one the impression that the authors “have written the definitive text” (Jeremy Phillips).

The book as the authors put it “includes very detailed chapters on the three main branches of intellectual property laws: patent, trademark, and copyright laws” (p. xxiii, Preface). Perhaps at the expense of an imbalance between chapter lengths, the above three areas are covered in minutiae. While chapter 2 on “Patents”, chapter 4 on “Trademarks and Passing Off”, and chapter 5 on “Copyright” span 134, 164 and 140 pages, respectively, the length of the remaining substantive chapters, range between a minimum of 3 pages (“Introduction to the Israeli Legal System”, chapter 1) and 58 pages (“Major Issues in the Information Technology Context”, chapter 9). In view of its brevity, it might have been an idea not to have numbered the 3-page synopsis on the Israeli legal system, as chapter 1, but perhaps simply to have presented it as a condensed overview on a par with the Preface.

Chapter headings and subject-matters
The authors have achieved a remarkable feat by managing to cover in a single volume the entire spectrum of IP fields as well as complementary rights and obligations under chapter 6 (“Unjust Enrichment”) and chapter 7 (“Trade secrets”). Moreover, having incorporated two sector-specific chapters on IT and the Pharmaceutical industries, in both of which Israel boasts an impressive performance, the authors provide a rare insight into the dynamics of IP as they feature within the context of these sectors in the country. One is almost left wishing that there could have been room for the authors to cover other specialist industries, such as biotechnology and nanotechnology in which Israel equally excels or perhaps technology transfer and commercialisation of R&D output within the framework of industry and academia collaborations, where Israeli success stories enjoy worldwide acclaim.   

“Related Rights”, however, as a choice of title for chapter 8, where seemingly incongruous areas including “Appellation of Origin” and “Geographical Indications” (sections 8.1 and 8.2, respectively), “Plant Breeders’ Rights (section 8.3), “Right of Publicity” (section 8.4) and “Unfair Intervention” (section 8.5) have been examined, could possibly occasion slight confusion among those readers who have come to associate the use of the expression ‘related rights’ as a term of art, exclusively in connection with copyright such as “neighbouring rights”.

The first (“Introduction to the Israeli Legal System”, ch. 1) and the final chapters (“Enforcement of IP Rights”, ch. 11) of the book should be treated, in this reviewer’s opinion, as being of paramount significance for non-Israeli readers who may not be familiar with the Israeli legal system, which is a reflection of “the profusion of legal and business cultures” as aptly expressed by Jeremy Phillips (see back cover) and upon which the Israeli intellectual property jurisprudence is built. Therefore, while an excellent overview of the Israeli judicial system is provided under section 11.1.1, one wonders whether that information might have been a welcome addition to the introductory chapter 1 on the Israeli legal system. For readers who set out to read the book from cover to cover as in the case of this reviewer or indeed for those who intend to benefit from the text as a reference source and consult the desired sections as and when needed, it might be advisable to read chapter 11 first, or at the very least section 11.1.1, before delving into other chapters which, as the authors put it “... deal with substantive issues in IP law” (p. 600, para. 1).

Since a list of abbreviations which would have been a helpful addition at the beginning of the book, is unfortunately missing, it is suggested that either chapter 1 or 11 might have been an appropriate place where some explanation about the case citation style adopted in the text by the authors could have been given (see further below under ‘Case law and legal citations’).

Liss and Adin provide readers, in each chapter, with a brief historical account of the IP legislation introduced in Israel when the latter was subject to the British Mandate between 1922 and 1947. Notwithstanding that “[m]any of the intellectual property statutes in Israel find their roots in British Mandatory law”, as noted in WIPO’s Document by the Advisory Committee on Enforcement, the Israeli IP legislation forms part of a complex legal system inherited from the past (“The Protection of Intellectual Property Rights in Israel: A Survey of Legislation, the Court System, Enforcement and Public Awareness Programs”, Second Session, Annex, p.4, WIPO/ACE/2/12, June 25, 2004). The abridged legal history of Israel as presented in chapter 1, therefore, may be excessively terse for non-Israeli readers to appreciate the country’s immensely rich legal heritage and culture. In fact, as Dr. Michal Tamir (Associate Professor at Shaárei Mishpat College of Law, Hod Hasharon, Israel) remarks, “[a]lthough influenced by both common law and civil law, the Israeli legal system has its own special characteristics” (“A Guide to Legal Research in Israel”, GlobaLex, August 2006, http://www.nyulawglobal.org/Globalex/israel.htm; the guide as updated by  Ms. Esther Mann Snyder is available at http://www.nyulawglobal.org/Globalex/israel1.htm).

Tamir goes on to explain the eclectic nature of the Israeli legal system as follows:

Three layers of law, reflecting the historical background of Israel, can be identified in various degrees in contemporary law: Ottoman, British Mandatory and Israeli.

Between the years 1517–1917 Palestine was ruled by the Turks as part of the Ottoman Empire. The local law was dominated by codes. The Mejelle, an Ottoman codification of civil law, held a major role. Drafted by Moslem scholars, it was influenced by Napoleon’s Code Civil and published in1867-1877 by the Ottoman Sultan. It consisted of legal provisions for obligations, torts, property, commerce, corporation and procedure, and was liberally illustrated by examples. The Mejelle was rescinded in 1984 by a special Israeli law. The Mandate and the subsequent Israeli legislature rescinded most of the Ottoman laws, leaving only a few remainders that still exist today. For example, articles 80-82 of the Ottoman Civil Procedure Law (1879) are a part of Israel’s evidence law. The contemporary significance of the Ottoman legal system arises from the basic legal rule by which a legal system does not deny rights previously given by a former legal system. Thus, although the Israeli Real Estate Law rescinded the Ottoman Real Estate Law, it protected rights that had been gained according to it.

Ruth Levush (Senior Legal Specialist at the Eastern Law Division, Directorate of Legal Research, Law Library of Congress, Washington DC, USA) provides an equally colourful and comprehensive account of Israel’s rich legal history. (see Levush, “A Guide to the Israeli Legal System”, LLRX.com, http://www.llrx.com/features/israel.htm; see also Legal Research Guide: Israel, Library of Congress, http://www.loc.gov/law/help/israel.php, which is by and large an abbreviated version of the text at LLRX.com.

Despite the detailed scope of the information provided, the authors manage to preserve a practical slant which is conveyed in a vivacious tone that is reinforced by terse affirmative phrases in the form of single sentence paragraphs,  e.g. “We shall discuss both aspects” (p. 301, above section 4.11.3.2), “We shall discuss each of these remedies” (p. 310, just above section 4.12.2)  or brief rhetorical questions which read like FAQs that are interspersed throughout the text,  e.g. “What happens if an applicant seeks to amend the specification in the course of opposition proceedings?”  (p. 62, para. 2), “What must the license include?” (p. 244, section 4.8.5.4). These short phrases and questions help maintain the reader focused and ensure the book’s standing as a handy reference work for consultation. Perhaps, therefore, for purposes of providing citations from the work, a preference for numbered paragraphs over cumbersome subsection numbers (such as “4.9.3.4.2.6” at p.263) might have been more appropriate, in view of the fact that the book is likely to be a contender for being considered as an indispensable source of reference for practitioners and legal advisors on intellectual property law in Israel.

Typography:
Without going as far as Michael Factor according to whom “[u]nfortunately, the readability of the book suffers from the lack of professional editing” (http://blog.ipfactor.co.il/book-reviews/) it is impossible not to notice the presence of typographic errors and inconsistencies that appear to have made their way through to the published text.

Notwithstanding a predilection for American English spelling throughout the book, readers are occasionally likely to stumble upon a word that is spelt variably in British English (e.g. ‘defence’, p. 258, fn. 265 as opposed to ‘defense’, p. 284, section 4.9.5).   A selection of other inconsistencies and typos which seem to have slipped the editors’ attention is listed below:

• “L’oreal” spelt with lowercase ‘O’ at p. 557, as opposed to the correct form in capital ‘O’ as provided in the corresponding footnote 92. With respect to this case, it has also to be noted that (i) the order of the claimant/defendant has been reversed in the main text; and (ii) the case has been omitted in the Table of Cases. 
• Inconsistent spacing between hyphens, e.g. “Abstraction- Filtration-Comparison” at p. 373, last line; 
• Inconsistent use of certain legal phrases, e.g. “conditioned imprisonment” at p. 629, fn. 26, as opposed, perhaps, to “conditional (?) imprisonment”; “an acknowledge country” at p. 587, fn. 21, as opposed to “an acknowledged (?) country” as referred to in the main text at subsection (2); 
• Inconsistent use of capitals/lowercase letters for ‘trademark owner’, e.g. “Trademark Owner”, at p. 233, para. 2, where both initials are in capitals; “Trademark owner” at p. 237, section 4.8.1.1, para. 2, where the ‘T’ is in capital and ‘o’ lowercase letters; “trademark owner” at p. 239, penultimate paragraph, where both initials are in lowercase letters; 
• Inconsistent use of capitals/lowercase letters for ‘registered user’, e.g. “registered user” at p. 233, para.2; where both initials are in lowercase letters; “Registered User” at p. 245, first paragraph, third line, where both initials are capitalised; 
• Inconsistency in the use of bold fonts: It’s not clear as to why registration numbers cited at fn. 170 on p. 226 are in bold unlike others, e.g. at fn. 171. 
• Misspelling of the eponymous Anton Piller case: This would have been less conspicuous had it not been in a legal work, e.g. spelt as “Pillar” in the Index at p. 663 and in the introductory chapter 1 at p. 3, para. 2. 

Case law and legal citations
An excellent feature of the book is the abundance of references to the Israeli case law together with relevant quotes from judgments as well as accompanying comments by the authors. Several rulings that date from 2011 provide the reader with the reassurance that access to the current legal dynamics and trends in Israeli IP law is available at hand. Considering the paucity of reported Israeli decisions in English, the effort by the authors to compile, summarise, and quote judiciously from these cases is a commendable service to English-speaking readers.

As practising lawyers who have acted on behalf of their clients in a number of the cases cited, the authors provide readers with access to several unreported and unpublished cases (e.g. Pharma Israel v. The Ministry of Health, p. 589, fn. 24), which serve as a gateway to a legal treasure grove for scholars and practitioners in other jurisdictions.  That said, the use of acronyms, in the absence of a table of abbreviations at the beginning of the book containing information about the citation method adopted, might lead the reader to despair unless as fortunate as this reviewer to be able to resort to the counsel of Israeli legal experts. While it may not have been particularly necessary to indicate in brackets that “R&D” would stand for “Research and Development”, e.g. p. 9, para. 3 and p. 577, para. 2 or “POA” for “Power of Attorney” at p. 240, where in the latter case it may have been more appropriate to introduce the abbreviation at p. 200, para. 3 when first mentioned, the same can hardly be said of cryptic acronyms, highlighted in bold by the reviewer, that precede case names such as in those listed below, as quoted in the book:

C.A. 8802/06 Unipharm Ltd. v. SmithKline Beecham PLC et al (p.26, fn. 57):

C.A.: Civil Appeal

Above at p. 26, fn. 57, “Smith Kilne” stands as a typographic error which is replicated at p. 27, fn. 61.

At p. 590, fn. 32, the company name has been spelt as “Smith Kline” in the form of two distinct words. In the same footnote, the company is identified as a “PLC” whereas in the corresponding Table of Cases (p. 660) the company is spelt correctly in one word, it is this time indicated as “Co.”

While the year of the case is included at fn. 32, p. 590 and in the Table of Cases (p. 660), neither at fn. 57 (p. 26) or fn. 61 (p. 27) is there any such mention.  

C.C. 115/98 Microsoft Corp. V. Data Pool Ltd. et al. (p. 630, fn. 28):

C.C.: Criminal Case

C.F. (Haifa) 12313/04 Tzur Aviram et al. v. Komda Ltd. et al (p.368, fn. 165):

C.F.: Civil File (i.e. Civil Case)

M.A. (Tel Aviv) 1281/06 Amgen Fremount Inc. v. The Patent Registrar (p. 50, fn. 115)

M.A.: Miscellaneous Appeals -- an optimistic guesswork by the reviewer based on the reference to “Miscellaneous Appeals” at p. 520, fn. 1, where the case is referred to as “Miscellaneous Appeals (Tel Aviv) 501/80 Rozenthal Shunia v. The Patent Registrar”, while the same case is cited in full at p. 14, fn. 18 as “Miscellaneaous Appeals (Tel Aviv) 501/80 Rozenthal Shunia v. The Patent Registrar (p.m 1984 (3) 441)”. It should be noted that “p.m”, usually abbreviated as “P.M.” in capital letters, is the acronym for the case reporter i.e. Psakim Mehoziim in which the case was published.

MLA 1091/05 Issawi Achmad v. The State of Israel (p. 630, fn. 27):

MLA: Proving a particularly tough one to crack – stands for “Motion for Leave to Appeal” (see p. 222, section 4.6.5.5, para. 3)

SC 13729-11-09 Alon Koren Meidan v. Global Networks ICI Ltd. (p. 569, fn. 125):

SC: Small Claims (see also SC 15988-02-10 Boris Gale v. Cellcom Ltd., p. 569, fn. 126; SC 36975-03-10 Guy Mayor v. Tel Aviv University, p. 570, fn. 127

As in the above example of “MLA”, the reader is left to his own means if he truly wishes to discover the type of procedure by going back and forth between the index, the Table of Cases as well as trying to spot a clue either in the  text or most likely in the footnotes

O.M. 506/06 Matim Li Fashion Chain for Large Sizes Ltd. et al. v. Crazy Line Ltd. et al. -- as spelt in the Table of Cases at p. 644, which, probably is better than the citation at p. 546, fn. 69 where inconsistency in the use of capital letters prevails:

O.M.: Opening Motion: Not listed in the index but conversely mentioned in the Table of Contents and constituting the title of section 11.1.2.1 at p. 603.

Though this reviewer was able to decipher some of the acronyms thanks to the generous help and expertise of his friends and colleagues, Ms. Li Maor, Legal Consultant, Head of Israel Desk, Division for Certain Countries in Europe and Asia (DCEA) at WIPO in Geneva and Dr. Assaf Jacob, Lecturer in Law at the Interdisciplinary Center (IDC) in Herzliya, who could deduce the meaning of the acronyms that precede the cases cited, from the facts and procedural history of the dispute, it has to be admitted that some,  such as “MLA”,  seemed equally mystifying to them. It is, therefore, highly questionable whether the majority of readers will ever make any sense of them. These initials are all the more inaccessible when one considers that they neither follow the leading US nor UK standard citation guidelines for Israeli case law.

By way of illustration, in “C.C. 115/98 Microsoft Corp. V. Data Pool Ltd. et al.” (p. 630, fn. 28)”, C.C. could be taken to stand for either a ‘Civil Case’ or a ‘Criminal Case’. To make the distinction, in the Guide to Foreign and International Legal Citations of the Journal of International Law and Politics by New York University School of Law, authors are instructed to adopt “C.C.” for civil cases and “Cr.C.” in respect of criminal cases (section 3.1, p. 94, (http://www.law.nyu.edu/ecm_dlv1/groups/public/@nyu_law_website__library/documents/documents/ecm_dlv_006388.pdf). On the other hand, in its “Instructions for Contributors” for publications in the Israel Law Review by Cambridge Journals, civil cases are required to be abbreviated as “CC” and criminal cases to be cited as “CrimC” (p. 11, http://assets.cambridge.org/ISR/ISR_ifc.pdf). This particular style might have been a more befitting choice for the publishers of this book in view of the fact that the “Israel Law Review – albeit published by Cambridge University Press --  uses the style of citation formulated by the Oxford University Standard for Citation of Legal Authorities (OSCOLA)” (p. 3, B. 2. (a), ibid).

In view of the fact that the book is likely to attract the attention and interest of an international audience, it is, therefore, disappointing, that the publishers have not deemed it necessary to provide a comprehensive list of abbreviations at the beginning of the book.  

Nevo, the legal publishers:
It may, perhaps, have been helpful had some information been provided, at some point, on the local legal publishers for the benefit of readers who may not be familiar with Israeli legal resources, as Ruth Levush, or Dr. Michal Tamir, have done in their guides to the Israeli legal system (see above).
The date as of which Nevo -- an Israeli legal publishing house to which laconic references are made in brackets following a number of cases cited in the text (see e.g. C.F. 827/07 Erez Ben Simon v. Monitz Iro et al. (published in Nevo))” -- assumed the publication of the judgments of the Israeli Supreme Court,  which were previously published by the Israeli Bar, however, differs by a year in Levush and Tamir’s respective guides. Tamir maintains that Nevo began to report cases since 1997 (see section 8.8, ibid) whereas Levush pins the date at 1999 (see LLRX.com, ibid and Library of Congress, ibid, under “Official Case Reports (in Hebrew)”).
This reviewer is inclined to place his bet on the advice kindly offered by his friend Li Maor, according to whom, it was, actually, in the mid 1998 that Nevo Press began to report cases following a successful bid for tender and was duly licensed as the official publishers of the judgments of the Supreme Court.

Case/judgment dates:
Readers may find it disconcerting that dates relating to cases frequently appear to be missing. Unfortunately, phrases such as “As recently held by the Patent Registrar ...” (see p. 147, section 3.3, para. 3 and corresponding footnote 23) or “In the recently published guidelines for examination ...” (see p. 67, last para, and the corresponding footnote 152) without further precision as to the exact dates either in the text or in the corresponding footnotes, are not particularly helpful. For instance, in connection with the landmark JAFFA case which is covered under chapter 8 at p. 505, no dates are to be found either in the text or at footnote 4 where the case is cited in full or, for that matter, in the Table of Cases at p. 638. In a lucid and detailed article on the same decision by Neil Wilkof and Shir Uzrad in the Journal of Intellectual Property Law & Practice (“In the matter of the appellation of origin for ‘JAFFA’”, 2008, Vol.3, No. 1, doi:10.1093/jiplp/jpm222), the authors, by contrast, introduce their article with a citation that leaves not a shred of doubt as to the full particulars of the case not least the date: “The Citrus Division of the Plant Production and Marketing Board v Israel Commissioner of Patents and Trade Marks [2007] 1011/05, Appeal Board (Jerusalem), 12 July 2007” (at p.17).

Practical focus:
As might be expected from a text that is written by two litigation lawyers, the practical slant of the content is a pervasive feature of this book. Liss and Adin would, therefore, appear to have achieved what they set out to accomplish as stated in the Preface at pp. xxiii-xxiv:

Our aim is to provide the readers with a very practical overview, which includes all the relevant information: from instructions of how to register IP rights in Israel, to numerous illustrations of how Israeli Courts have ruled on pertinent issues, and a very extensive analysis of important case law.

The use of flow charts as in the case of the “standard” or “fast procedure” on pp. 617-18 and p. 620, respectively, within the context of procedural steps as prescribed by the Customs Guidelines, as well as illustrated comparisons of trade marks on pp. 177-79,  251-56,  264, and 267-68 are particularly helpful and informative.

Frequent commentaries and suggestions throughout the text, such as to the manner in which damages are assessed (at p. 311) may be welcome as useful complimentary legal advice to the foreign businessperson or legal advisor, as well as providing the non-practitioner with a deeper understanding of the underlying issues and the local jurisdiction. The authors do not hesitate to express their forthright criticisms of decisions with which they disagree (see e.g. p. 258, second paragraph or at p. 304, first line). In this respect, albeit written in English, one may surmise that the authors intend that the Israeli legislature (e.g. at p. 243, section 4.8.5.3, para. 3), the judiciary and the Israeli Patent Office be among the target audience for the book.

Sections of various IP legislation and passages from judgments, as quoted by the authors in English, in parts of the text appear to have been selected judiciously and in good measure. Though, unfortunately not made clear as to whether the English translations are those of the authors or the officially authorised version, they do help the reader to form an opinion which is not strictly influenced by the observations and objections that reflect the authors’ own views and deductions.

Comparative perspective:
In support of the virtues of comparative studies, this reviewer should like to quote from Henry H. Ehrmann:

Although the careful study of a single legal culture can yield valuable insights, only the analysis of a variety of legal cultures will recognize what is accidental rather than necessary, what is permanent rather than changeable in legal norms and legal agencies, and what characterizes the beliefs underlying both. (Comparative Legal Cultures, Prentice Hall Inc. Englewood Cliffs, New Jersey, 1976, p. 11)

The authors’ deliberate choice to adopt a comparative approach with references to the US, UK and the EU appears sagacious, as it thus has not only the potential to appeal to a wider audience but also to render Israeli IP jurisprudence more accessible to the foreign reader who may, by drawing comparisons, have a yardstick against which to judge and appreciate the nuances of another legal system.

At times, Liss and Adin simply consider the differences between two of the jurisdictions mentioned above such as the EU and Israel (e.g. at p. 169, final para. concerning the registration of single letter marks) or the UK and Israel (at p. 230, comparison between the position in the UK and Israel in the context of the use of a trade mark) and in other instances between all three, e.g. at chapter 9, on the subject of “software, e-commerce and business patents”, where the authors successively trace the developments in the US (at pp. 522-24, para. 9.1.1.2.1), the EU (at pp. 524-27, para. 9.1.1.2.2) and Israel (at pp. 527-31, 9.1.1.2.3).

Currency and reliability
Another of the book’s forte is the abundance of case law that helps put the law into context and observe how it is applied by the Israeli judiciary. Several cases that are cited are as recent as 2011, such  as the decision by the Israeli Supreme Court sitting as the Court of Appeal in the case of C.A. 3960/106 The Customs Authorities v. Christian Dior Couture (2011) (see p. 618).

The information is current and up-to-date. Petach Tikva, which became the sixth District Court of Israel in 2007 (see http://www.israelnationalnews.com/News/News.aspx/123435 as cited on http://en.wikipedia.org/wiki/Israeli_judicial_system) on top of the existing five, comprising Be’er Sheva, Haifa, Nazareth, Tel Aviv, and Jerusalem, is mentioned in chapter 9 at p. 602. It has to be noted that in this instance, Liss and Adin are one step ahead of the official website of the Israeli Foreign Ministry where the number of district courts still stands at five (see “Judiciary: The Court System”, under “District Courts” at http://www.mfa.gov.il/MFA/Government/Branches%20of%20Government/Judicial/The%20Judiciary-%20The%20Court%20System, as at 30 September 2012).

Concluding remark:
Despite some minor typographic and editorial lapses, the reviewer is assured that the book is an extremely valuable guide to Israeli intellectual property law and practice and, as a comprehensive textbook, is likely to appeal to the international academia, while at the same time serving as an authoritative reference source for the business world and the legal profession.

Book review: A Practical Guide to Working with TRIPS

A step back again in time as I get to grips with outstanding book reviews. This is an interesting little paperback by Antony Taubman, who as Director of the World Trade Organisation Intellectual Property Division (I assume the OUP website erred when it referred to the World Trace Organisation) is uniquely well-placed to write it.

The publisher's blurb tells us that this book "avoids extended legal analysis", an odd virtue in a book about law. But perhaps that is the point: it isn't a law book really, it's a guide to the topic for policymakers. Tellingly, the publishers don't reveal for whom it is thought to be essential reading (and publishers usually manage to make up a list that includes most literate members of the human race): they merely tell us who would be interested in this book. They include "legal practitioners operating in the international intellectual property field", but given the lack of heavy black-letter law in this slim (256 pages) and not-too-expensive (£44.95 - everything is relative: I just paid that for a pair of shoes) volume they are likely to need something a bit more substantial.

Nevertheless, I found it really interesting, which might tell you more about me than about the book but I hope counts as some sort of endorsement. And it's written with a light touch and entertaining style. Unlike most review books that come my way, this is one to read through from start to finish: it has something of a story to tell. And for most IP practitioners, TRIPS is an important part of the context rather than a substantive concern, something you need to know a bit about but the detail of which you can safely leave aside.

Of course, TRIPS is an instrument of absolutely central importance in the intellectual property world, the first attempt to create something coherent to replace what the author refers to as the "makeshift diplomatic assemblage" of GATT, and to replace diplomatic wrangling with a judicial process. It recognised properly for the first time the place of intellectual property in international trade law, but leaves the question (which I think remains unanswered) whether this approach would supplant the traditional IP model embodied in Berne, Paris and WIPO. The author asks whether the marriage of IP and trade law is one of convenience, or a shotgun affair. Is it a natural expression of policy convergence? Read Mr Taubman's book, and make up your own mind.

Another important question is whether TRIPS is a burden for developing countries with little benefit. The author ventures the opinion that because it sets out public policy goals for intellectual property it should be considered a Good Thing. Well, he doesn't say Good Thing, that was another pair of authors altogether, but that's the gist of it.

The TRIPS agreement also brings a bunch of other issues into the trade arena - traditional knowledge, human rights, property law. It has already led to a richer jurisprudence of international intellectual property, and as the original TRIPS agreement was never intended to be final word - it could hardly be that - it will continue to inform this area of law. IP enthusiasts, including most if not all practitioners, will continue to have an interest in where it takes us.

Book review: EU Electronic Communications Law

Subtitled "Competition & Regulation in the European Telecommunications Market", this is another second edition from OUP. The authors are Paul Nihoul, of the University of Louvain (a town with a particular place in my affections) and Peter Rodford, formerly of the European Commission. There are 536 pages and the prices is the same as the Fawcett and Torremans book reviewed earlier, £195. That makes it look rather less good value, doesn't it, half as many pages for the same money, but that's probably not the way to look at it - if EU telecommunications law floats your boat, an expression I can't resist on this great day for British Olympic rowing, the other work won't represent better value to you.

As it happens, EU electronic communications law doesn't do much for me, but that's not the way to look at it, either: as a practitioner, I generally deal with what comes along rather than what turns me on. I noticed (because it's something a decent reviewer needs to include) that it was published on 25 August 2011 - which means that my reviews are becoming just slightly more timely, but also causes me to wonder where the last year has gone. I don't know, except that exactly a year ago I added a part-time job to the existing portfolio, since when I have been acutely conscious of how one deals with the legal problems that come along rather than those one would like to handle. I guess my work tends to be client-led rather than confined to a particular area - and being in-house for a couple of days a week, that's certainly client-led.

None of my workload has anything to do with telecommunications law, though. Except in the sense in which many lawyers frequently encounter it, the area of what can broadly be called data protection and privacy, and that features in this book. And increasingly there is an important interface between competition law and regulation and the protection of intellectual property - the duties of carriers and service providers to take steps to prevent infringements. In short, in an era of convergence, the field described in this book is pretty close to the centre of things. So it's going to be something a lot of lawyers are likely to need.

Indeed, we all have online lives which become more and more significant, and electronic communications law in the broad sense is going to carry on growing like topsy. Quite apart from the legal side of things, though, we should try to keep a sense of proportion - to keep our online lives in the right place, as I was reminded by this excellent posting on John Hull's What about Clients? blog recently.

Regardless of the subject matter, though, this is a heavy piece of work. For one thing, it has only five chapters, plus an introduction sub-titled (ominously) "How to use this book". It is rich in headings of different levels, making it (as one of my lecturers at university, later editor of Newsweek, said of Karl Llewellyn's work) like reading a knitting pattern. But its purpose is to provide information, not to narrate or entertain, so while I might prefer more readable prose it's not a valid criticism of a utilitarian piece of writing. If you need a book to guide you through this particular legal maze, this is it, and if you don't think you need a guide to this maze you might have to think again.

Book review: Intellectual Property and Private International Law

I have not been as diligent about writing book reviews as I should have been, so I have a bit of catching up to do. I'll begin with the second edition of Intellectual Property and Private International Law, by the highly distinguished duo James Fawcett and Paul Torremans, published by OUP last year but up to date to June 2010, and offered by them for the princely sum of £195. (Why, I wonder, do we use "princely" to mean "substantial" in that context? Are princes assumed to be rich, or merely profligate? Is a King's ransom much greater, and therefore outside the prince's budget?) The first edition, which was the only treatment of this subject (the second edition retains this distinction), dated from 1998, and since then there have been several important changes in the law - the Brussels Convention has given way to the Brussels I Regulation, the Rules of the Supreme Court to the Civil Procedure Rules, and the Rome Convention on Applicable Law to the Rome I Regulation. Private international law has become, more and more, a matter of European Union law. The Court of Justice has explored the territory in the Roche and GAT cases (and more recently in DHL v Chronopost), and domestically the Court of Appeal has considered it in the Lucasfilm case (which the authors describe as "disappointing"). The Supreme Court judgment, of course, came too late to be covered, which is a shame because it presumably overcomes the authors' disappointment.

Back when I first studied intellectual property law - the Patents Act 1977 was not yet fully in force, the Trade Marks Act dated from 1938, and the Copyright Act from the year of my birth, and the Registered Designs Act 1949 was still in its first iteration - its interface with international law was vanishingly small. National rights were enforced in national courts, and even the European Community kept a respectful distance from the area. There were international conventions in the field, but they were concerned with the acquisition and content of intellectual property rights, not with their enforcement.

Now, since the first edition of this book, the Internet has introduced us to the notion of "ubiquitous infringement". Other factors have also combined to give intellectual property law a substantial international dimension, including the activities of parallel traders - indeed, the process of globalisation has opened up all kinds of cans of worms that had previously remained safely sealed, or even buried out of sight.

The law is being brought up to date - in so far as the law ever gets up to date with technology: Brussels I is being reformed, with intellectual property high on the agenda, and (at the time of writing of the book - this part has certainly been overtaken by events) there was much talk of unitary patent protection and the UPLS. The international exploitation of intellectual property rights is responsible for a bunch of new problems, because legislation is sparse and international treaties have (the authors say) failed unspectacularly.  There have been scholarly initiatives such as the ALI principles in the US and the CLIP principles in the EU, which influence the suggestions for reform put forward by the authors.

The book - a staggering 1,056 pages (I use the word advisedly - not only does it describe what I think about the authors' achievement but it also serves to characterise the experience of carrying a copy) - falls into three sections, the last of only one chapter. These cover jurisdiction, applicable law and recognition and enforcement of foreign judgments. Further details of what's in each section appear on the publisher's website (follow the link at the top of this posting). It doesn't, as intellectual property textbooks once used to do far too often, lead the reader by the hand through the well-known gardens of basic intellectual property law before heading off into the undergrowth of private international law, and thank goodness for that: it is too easy, too tempting, to bulk up a book by including egg-sucking instructions that one's grandmother would find redundant. It's all good, solid, meaty stuff and essential reference (the implication that it is not a book to sit and read through from cover to cover is quite intentional) for the practitioner interested in this little area, and who among IP practitioners is not interested in it these days?

Book review: Sudden Genius? by Andrew Robinson

The Journal of Intellectual Property Law and Practice has my review of this excellent and informative book in its latest edition: you can read it here. I seem to have carved out a niche, reviewing books for JIPLIP that aren't simply IP textbooks - probably a lot more interesting.

Book review: Working Within the Boundaries of Intellectual Property

I am a very fussy reader. I remember decades ago being appalled at a sentence in a best-selling book that, lacking a verb, made no sense. Years later, I had been enjoying Captain Corelli's Mandolin until Mr de Bernieres suggested that the Cyrillic alphabet was used in Greece. And more recently a friend's novel was spoilt for me by a mistake ("taught" instead of "taut") on the first page - his prose also turned out to be purple enough to make an Anglican bishop's outfit look colourless, which further detracted from a rather good story.

So when, also on the first page, in fact the third line, of this book - once I'd skimmed through the preliminaries, including endless pages of biographies of the contributors - I read that patents granted to American universities had "grown almost in order of magnitude" from 434 in 1983 to 3,259 in 2003, I knew all I wanted to know. The inclusion of the word "almost" makes it complete and utter mathematical rubbish. The fact surely is that the statistic has increased by an order of magnitude, no more and no less: you simply cannot have partial orders of magnitude. It has gone up from 4.34 x 10² to 3.259 x 10³ - an order of magnitude.

Why on earth use a concept like orders of magnitude anyway? Because it sounds learned? "Almost tenfold" would have worked (though it would have been very approximate). At least we were spared the misuse of the term "exponential".

My own writing is far from perfect, and I already know of entries in my recently-published Dictionary that I would write very differently with hindsight, so of course I risk attracting brickbats by picking fault with the work of others. The publisher should be ashamed of this one, though, and I think I am justified in mentioning it in connection with a work of scholarship such as this. If intellectual rigour is lacking there, might it also be lacking elsewhere? I have found nothing to suggest that it is - but one does not read books like this because one already knows the subject-matter but to learn something new. And this has a great deal to teach us.

Subtitled "Innovation Policy For The Knowledge Society", it was published on 4 March 2010 and is edited by Rochelle C. Dreyfuss, Diane L. Zimmerman, and Harry First, all from New York University School of Law. It is a follow-up to the same editors' Expanding the Boundaries of Intellectual Property, published by Oxford University Press in 2001.  At 568 pages and £85.00 it is a substantial piece of work, and its focus on the expansion and strengthening of intellectual property laws is a subject of huge importance which certainly doesn't get enough attention from practitioners, who often resemble turkeys enjoying an indefinite postponement of Christmas. I have a feeling that few practitioners are going to be reading this, though - their time is money - but I hope that the learning contained within it will percolate down from the realms of academe and generate more debate about whether intellectual property rights have become too strong.

Book review: Trade Mark Registrations in Bad Faith by Alexander Tsoutsanis

The law on this topic is surprisingly diverse, even between the UK and the Community trade mark system, and indeed expressed in diverse ways. When applying for a UK trade mark you have to declare that you are using or have a bona fide intention of using the trade mark: there's no such requirement in the Community system. The subject of the work is the requirement - common to the UK and the CTM system - is that a trade mark can be invalidated if it were applied for in bad faith.

This book is a handsome hardback production, as one would expect from OUP. It's 424 pages long, including preliminaries and index, with none of the flab - regurgitated legislation - that one often finds bulking out legal texts. Its scope is not world-wide, though, which isn't clear from the title - it covers the Community trade mark system and the laws of several Member States (including the UK), the country chapters varying greatly - 15 pages on the UK, 17 on Germany, one on Portugal. The CTM regulation gets 55.

Considering its origin as Dr Tsoutsanis's thesis (defended in 2005, which perhaps partly explains why the new EU Member States are dealt with quite briefly) this is far from being a dry, unreadable exposition. The author, who is an Associate with Klos Morel Vos & Schaap in Amsterdam and a lecturer at the University of Leiden, has brought the work up-to-date although to what date is not stated. It was published on 11 November last year, and presumably it took a while to get into print after he finished writing.

On the other hand, having begun life as a thesis it naturally contains everything that the world's greatest enthusiast for the subject thought worth including. That's not intended remotely as a criticism - more like a reflection of my own experience of preparing a doctoral thesis - but it does mean that there is probably more in this work than you'd ever need in practice, more probably than an academic researcher might need either. But if we only ever bought law books that we knew would be 100 per cent, or even a lesser percentage, useful, we would buy very few: and how can we know what we are going to need before something lands on our desks? For the practitioner, I guess the point is that the country chapters about those jurisdictions about which to give advice would cause our PI insurers sleepless nights are for interest only, but the UK and CTM chapters are sufficiently valuable to make this a useful addition to any practitioner's library.

Further details are on the publisher's website here.

'Tis pleasant, sure, to see one's name in print

So wrote Lord Byron in English Bards and Scotch Reviewers, which I don't think was about whisky tasters, going on "A book's a book, although there's nothing in it".  There's not much of substance in my latest published work, a book review in the Journal of Intellectual Property Law & Practice (full reference 2010; doi: 10.1093/jiplp/jpq171, which can be found here though perhaps not unless you have a subscription) under the title The most penetrating of criticisms, which I found in Point Counter Point. No, I didn't, I found it on-line in some collection of quotations, but that's the same thing these days, isn't it? As it happens, I bought a complete set of Huxley at a village fete some 25 years ago. The vicar, a great friend though one I have lost touch with, complimented me on the bargain I had got. (I bought a Soft Machine LP, too, and still haven't made time to listen to it. Just as I haven't read Point Counter Point, or any of the others).

Even though there's not much in it, I hope it might bring a little amusement to readers - and illuminate the debate about copyright and parodies just a little.