Matthew Lavy, Richard Osborne and Gideon Shirazi of 4 Pump Court combine to provide a detailed review of the latest edition of Information Technology and Intellectual Property Law, Bainbridge, 6th Ed, Bloomsbury 2014, 700 pp, £130 (but see dscount offer atthe end of this review), ISBN 9781-1-78043-1246
This is the sixth edition of a book first published in 1992. However, it is the first edition to bear the name 'Information Technology and Intellectual Property Law'. The original title of the book was 'Software Copyright Law', changing to the slightly broader 'Legal Protection of Computer Software' in the 5th edition. According to the author, the somewhat more inclusive title of the new edition is intended to reflect 'a more complete exploration of the relationship between information technology and intellectual property laws', something which the book undoubtedly achieves: sections on the Information Society Directive, passing off, trademarks and malicious falsehood take the reader well beyond the realm of legal protection for computer software, into questions as to how intellectual property in general is protectable in an on-line world. That said, at its heart this is still a book which remains primarily concerned with the legal protection of computer software, albeit in the broadest sense ('software' in this context being apt to include not only computer programs as such but also computer graphics, semiconductor topography and the like).
The subject matter of Information Technology and Intellectual Property Law is not only wide-ranging but also complex: jurisprudence relating to the application of intellectual property laws to computer software and the operation of intellectual property laws more generally in the context of the internet is neither static nor always readily comprehensible. Anyone unconvinced of the difficulty probably need look no further than the conundrum of software 'as such' to be persuaded; anyone unconvinced of the developing nature of the jurisprudence might be surprised that it was not until February 2014 that the CJEU answered the question of whether and in what circumstances hyperlinking to copyright content might amount to infringement (the point was addressed in Svensson v Retriever Sverige AB (C466/12), a judgment that unfortunately post-dated publication of the book).
Professor Bainbridge deals with this complexity well, in a book that is impressive for its breadth of coverage and its comprehensibility. He has plainly thought deeply about many of the issues raised in the book, which means that he is not only able to explain the more complex and developing subjects but also gives insight into where tomorrow's problems may be and how they may be resolved. That being so, the book is an informative and enjoyable read. However, what is not entirely clear (to the reviewers at least) is who the target reader is: given the breadth of material, the 628 pages are inevitably not sufficient to cover every subject in the level of detail that might perhaps be expected of a specialist practitioner reference text; on the other hand, the book is by no means a mere introduction – there is more substance to it than that. In our view, that the book is pitched somewhere between the two extremes is a strength: it means that the book can viably be read from cover to cover as a thorough introduction ('tutorial' would be a better word) to the subjects addressed; however, it also has enough detail that it is likely to provide at the very least a very useful starting point for a practitioner faced with a particular problem on a particular case and, even if it does not provide the end point, it may well also provide a framework for thinking about the problem and a springboard for further research. Therefore, notwithstanding our comment about this not being a practitioner text, it is a useful book for a practitioner's shelves (particularly a practitioner who does not spend all day every day considering intellectual property issues in an information technology context). It would also undoubtedly be a useful textbook for advanced undergraduate and taught postgraduate course use.
In the remainder of this review, we provide a brief chapter-by-chapter summary of the book:
- Chapter 1 serves both as a high-level overview of the subjects covered more substantively in the rest of the book and also provides a brief account of the development of intellectual property law as applied to software and of the arguments for and against protection (the author appears to be firmly in the 'for' camp).
- Chapter 2, entitled 'Essentials of Copyright Law', requires no explanation: it addresses the fundaments of copyright, including subsistence, ownership, infringement, permitted acts, defences, dealing, moral rights and remedies. It is not specifically technology related, and is not intended to be; it serves as a foundation for subsequent chapters.
- Chapter 3, 'Copyright and Computer Programs' is almost a book in its own right. It is an impressive and substantial chapter that, with the aid of numerous case references, addresses the application of copyright law to the domain of computer software. Necessarily, there is considerable focus on the Software Directive and its practical effect. In addition to the triumvirate of subsistence, infringement and permitted acts, the chapter deals with other more arcane but important subjects, such as technical protection mechanisms and exhaustion (including an analysis of the UseSoft case). The important issue of non-textual copying is not addressed, as a separate chapter is dedicated to that topic. The other issue not fully addressed (save in the context of exhaustion) is the licensing of software; given that a great many disputes concern the scope and effect of software licences, this is a subject that might usefully be included in any 7th edition of the book. Of both academic and practical interest are analyses of tensions that exist between the law as laid down by the Software Directive (and jurisprudence of the CJEU) and the 'traditional' UK approach (for example 'intellectual creativity' vs 'skill and labour'). The author does not mince his words: 'Again the UK failed in its implementation of the Directive and did not import the intellectual creation test into [the Act]'.
- Chapter 4 is devoted to non-textual copying, which the author (rightly) identifies as comprising two separate issues: copying with modification, and creating binary- or file-format-compatible software (which he refers to as 'emulation'). Although almost half of the chapter is devoted to the first category of non-textual copying, most of that text comprises a review of the position in US law, and the UK position prior to implementation of the Software Directive. Only one paragraph deals with the law as it currently stands, we assume owing to the author's observation that 'the main issue now is the creation of competing programs by a process of emulation. This reflects to some extent, the impact of the Directive and the denial of protection to ideas and principles and, in the right circumstances, a program's interfaces'. Although the material on copying with modification is reasonably interesting, we doubt that the chapter would lose much from a practical perspective if it focussed solely on emulation. As to that subject, the chapter proceeds in two parts, outlining the position both prior and subsequent to WPL v SAS (a case in which emulation was considered in detail by the English courts and the CJEU). Again, it seemed to us that this two-stage approach (whilst undoubtedly interesting) is not really needed; a single section setting out the law as it is now would suffice. That said, the analysis of the CJEU judgment in WPL and Arnold J's application of it is a concise and useful treatment of this difficult subject.
- Chapter 5 covers the tricky topic of copyright in databases. The author begins with a helpful and illustrated explanation of what constitutes a database and discusses the application of copyright to physical databases outside the IT context. He then carefully draws out the distinction between the contents of a database and its structure, and the critical legal distinction between copyright in individual entries (or a collection of individual entries) and copyright in the structure. The issues are addressed from the perspective of treaties, EU and domestic law. Professor Bainbridge again (rightly it seems to us) criticises the implementation of the Directives into English law, pointing out that the draftsman has needlessly changed the wording without any clear motivation for doing so. Perhaps the most interesting part of this chapter is the author's treatment of the issue of intellectual creation in the context of databases, culminating in a discussion of the Football Dataco case. He has plainly thought deeply and critically about the protection afforded to computer-generated databases; in the next edition we would be keen to see this section of the chapter expanded with a fuller articulation of his views.
- Chapter 6 covers the sui generis database right (the author points out that in the Directive, this is called the 'sui generis' right but in UK legislation this is called the 'database right'). There is a deservedly long and interesting section on joint ownership in the context of contributions to databases. This is followed by a helpful discussion (considering the British Horseracing Board case) of the requirement for 'investment' in making the database to attract protection, and an emphasis on the fact that an investment need not be financial. There is a very interesting section covering the defences, and optional exemptions that vary from one member state to another. There are difficult issues around some of the exemptions because physical rights often do not transfer naturally into electronic ones: for example, while it is easy for the major libraries to hold copies of copyright written works, it is much more difficult for them to store electronic works. These issues are dealt with well. The chapter ends with a brief discussion of the restrictions on circumventing TPM (an issue of broad application and interest, which in a future edition may warrant a chapter of its own).
- Chapter 7 covers the implications of copyright law on the modern use of computers as information systems, including the law of the internet, of service providers, file sharing and the storage of files online and on a computer. The chapter seeks to provide a comprehensive overview of the copyright provisions that might be relevant in these contexts, and addresses a broad range of situations. Perhaps necessarily in a short book, this leads to a focus on particular selected areas, such as liability for hyperlinking (a section that will need to be updated in the next edition in the light of Svensson v Retriever Sverige AB but is nonetheless useful in its current form, not least because it addresses jurisdictions beyond the EU) and the liability of third parties for file sharing (with a discussion of the different operators against whom cases have been brought). There is a relatively long discussion of the temporary reproduction exception, where the author explains the importance of the exception to the functioning of the internet. This includes a detailed discussion of Public Relations Consultants v Newspaper Licencing Agency. The chapter then has an extended section on TPMs and attempts taken by national and international legislatures to prevent breaches of copyright. The chapter concludes with a discussion of some recent developments, including the jurisdiction to order injunctions against ISPs and the developments in the Digital Economy Act 2010.
- Chapter 8 focuses on computer graphics and typefaces. Although copyright is briefly addressed, as are trademarks, the real focus of the chapter is design rights. The author reviews the protection under the old domestic legislation (the Registered Designs Act 1949), where he explains the development of the law and the problems caused by it, and the current position under domestic law (amended following the new EU regime). The chapter moves on to consider the rights for a Community design. It explains the distinction between registered and unregistered designs and the relevant legal framework behind each. A particularly interesting observation that the author makes is that very few parties are now applying for UK rights; parties are instead simply applying to register their design under the EU regime.
- Chapter 9 covers the semiconductor topography right. The first half of this chapter focusses on the history of the right, which protects the shape and layout of semiconductor technology, and the protection afforded to topography in the US. This is followed by a discussion of the right's application in the EU and a discussion of the meaning of the provisions under EU law. A large part of this is by reference to the EU legislation on the design right as, interestingly, there has been no reported case law in the EU about infringement of this right. Professor Bainbridge suggests that this may reflect the fast-moving pace of the industry or the fact that the industry is very protective in ensuring that only reputable and trustworthy subcontractors have access to their chips (which, if so, suggests that in practice the law may not be of much commercial impact).
- Chapter 10 deals with the law in relation to breach of confidence with particular reference to intellectual property law, an area which the author rightly recognises as of particular importance in an industry where information can constitute almost the entire value of a business and staff turnover (and the use of consultants) is high. The parameters of what can constitute confidential information are considered, with particular analysis of the question of where the line can be drawn between experience, skill and technique which an employee or consultant may legitimately take to a new organisation, and that to which an obligation of confidence will attach. Thereafter the chapter outlines the law in relation to covenants in restraint of trade and considers the human rights aspects of that topic, before summarising briefly the position in relation to data protection law and the Freedom of Information Act 2000. Although each of these topics could (and do) fill a dedicated book of their own, the chapter succeeds in providing a clear and accessible introduction to topics of great practical interest.
- Notwithstanding the extraordinary value of patents in the technology sector, the application of the law in that area has often been difficult and has notoriously given rise to substantial litigation. A summary of the law, the requirements for a patent to be granted, who will be entitled to a patent, and rights upon infringement are outlined and addressed in Chapter 11 'Essentials of Patent Law'. This provides the conceptual framework for Chapter 12, 'Patents and computer-implemented inventions'. In this chapter, the author traces the (in some ways extraordinary) difficultly which has been encountered in interpreting the straightforward words of Article 12 of the European Patents Convention, a difficulty which Professor Bainbridge attributes partly to the interaction between decisions of the English courts and those of the European Patent Office Boards of Appeal. As the author sees it, the law continues to be in a state of flux caused by the EPO's unacknowledged move away from the principles laid down in the Vicom case: dishearteningly for the practitioner he argues that as matters stand 'there are no clear principles to follow'. We are still a long way from being able to advise with any certainty as to what is and what is not software 'as such'. An inevitable difficulty with any attempt to provide an overview in an area such as this is that cases in this area depend on their precise facts and in particular the innovation which the applicant sought to patent; divorced from the detail of those facts, the reasoning of the courts can be hard to comprehend. Unless a reader is already very familiar with the underlying case law there is a danger that the factual background to the cases can become lost as the relevant underlying applications are necessarily summarised in a couple of sentences. This is no criticism of the book, however; it is an inevitable difficulty given what Professor Bainbridge is seeking to address in a concise volume. As an overview of the development of the law, and a starting-point for a practitioner faced with a specific query, the chapter is cogent, well-argued and interesting.
- Chapters 13 and 14 follow a similar structure. Chapter 13 is entitled 'Essentials of trade mark law and the law of passing off' and provides an overview of the requirements for a trade mark, grounds for the refusal of registration, remedies upon infringement and the manner of registration of both UK and Community trade marks. There is also a brief summary of passing off and malicious falsehood. Chapter 14 then deals with 'Trade marks, goodwill and the internet', exploring the various ways in which trade marks may potentially be infringed, and raising interesting issues as to how the increasing savviness of web users about the nature of AdWords and sponsored links may impact on the courts' approach to trade mark protection. The case of Interflora Inc v Marks & Spencer Plc is usefully discussed, although the book came a little too early to cover Lush's recent High Court victory against Amazon (http://www.scl.org/site.aspx?i=ne35708) , a case which will no doubt appear in the next edition. The law of passing off as applied to the internet is also summarised, and the author surveys the relevant caselaw, and the generally robust attitude adopted by the court to those who seek to profit from domain names confusingly similar to established businesses.
- Chapter 15 provides a brief overview of competition law, outlining the nature and scope of the legal control of restrictive trade agreements, abuses of dominant trading positions, and failure to supply competitors with interface information. The chapter concludes with an examination of exhaustion of rights and the freedom to provide services.
- Chapter 16 addresses jurisdiction. Intellectual property rights are territorial in nature; the internet is not. Consequently, jurisdictional issues frequently arise in relation to application of intellectual property law to software or, more generally, to intellectual property on the internet. It is appropriate, therefore, that Professor Bainbridge devotes a chapter to this subject. After a brief explanation of the common-law position, the Brussels regulation and community-wide registered rights, the chapter deals in turn with jurisdictional issues arising in relation to copyright (where Lucasfilm is addressed), patent (described by the author as 'a jurisdictional nightmare'), trademarks, websites and passing off. The chapter is brisk and therefore inevitably does not provide a detailed treatment of the subject area. However, it is nonetheless a useful and practical introduction to jurisdictional difficulties that the internet brings.
As will be clear from the extent of the ground covered above, this book cannot be (and does not aim to be) a comprehensive treatment of its subject matter. Indeed, within the chapters readers are expressly directed to dedicated texts for more detailed coverage. Nonetheless, the book is highly readable and informative. The book would be ideal, in particular, for newer practitioners seeking to ensure a familiarity with the landscape of intellectual property law in the technology field. In what are undoubtedly complex and difficult areas, Professor Bainbridge is an assured guide, and has offered both an excellent route map and points of departure.
To receive a 15% discount, visit www.bloomsburyprofessional.com/IT&IP and enter TOITIP15 at the checkout.
Matthew Lavy, Richard Osborne and Gideon Shirazi are barristers at 4 Pump Court: www.4pumpcourt.com