We’re very happy to bring to our readers a review of one of the last (to reach completion, at least) pieces of work that our founder, Prof Basheer had been working on prior to his passing. Started in 2018, the 2nd edition of Overlapping IP Rights (OUP) was brought to completion in 2023 by his co-editor, the inimitable Prof Neil Wilkof, along with Prof Irene Calboli who came on as a co-editor following Prof Basheer’s demise. The book, a follow on edition from the 2012 1st edition of Overlapping IP Rights is once again a masterclass in thinking through the oft under discussed spheres of overlaps in IP, this time with additional subject areas and updated developments. I must admit, this review is very long overdue, mostly due to my own inability to stop diving into rabbit holes of thought and information based on the dozens of unique clashes and overlaps presented in the book. So, when Md Sabeeh Ahmad, a very enterprising young advocate who has been assisting on various projects, started talking to me in depth about his thoughts on the book, I grabbed the opportunity to ask him to put his thoughts down as a review for this edition. (You can find Sabeeh’s previous posts here). Without further ado – the review!
Book Review: Overlapping Intellectual Property Rights 2nd Edition
By Md Sabeeh Ahmad
The 1st edition of “Overlapping IP Rights”, edited by Neil Wilkof and Shamnad Basheer in 2012, was a fantastic look into discussions on the overlaps and interfacing of different IP rights, departing from the traditional study of these areas in isolation. Eleven years later, in 2023, the 2nd edition of the OUP publication was brought out, this time with the editors being Neil Wilkof, Shamnad Basheer, and Irene Calboli. As Wilkof notes in the preface, this was an edition that Basheer and Wilkof had started work on in 2018. However, following Basheer’s demise in 2019, Calboli came on board as an editor and helped Wilkof see it to completion. Wilkof, in the introduction describes how there is no single overarching framework that can account for creation of each IP right separately, and so, for overlaps too no such framework is possible. Therefore, necessitating study of these overlaps in pairs of IP rights as furthered by the book.
About the 2nd Edition
As stated in the preface to the 1st edition of the book, the idea behind the book’s theme at large, stems from a question by one of Wilkof’s students on how laws address the intersection between copyrights and trademarks and the ensuing realisation by him about the general lack of secondary sources on this issue. The 1st edition attempted to address several questions related to overlaps in IP, the background of which can be found here. The 2nd edition presents a revised version, updated with the latest developments that have occurred in the last decade. This edition consists of 21 chapters by 31 authors, running into 864 pages, and includes an updated version of the very useful national comparison tables from the 1st edition. For comparison, the 1st edition consisted of 17 chapters by 24 authors, and ran into 624 pages.
The book structure can be divided into four parts, with the first three analysing the overlap of patents, copyright, and trademarks, with other IP rights, respectively. And the last part (Chapter 19-21) ventures outside this ‘mainstay’ of IP and looks at overlaps with areas such as competition law, trade secrets, privacy, and traditional knowledge. The 2nd edition has retained the hypothetical-fact model of beginning each chapter, that allows readers to have a practical understanding of what is to follow. Each hypothetical-fact situation ends with a question that the chapter answers. Many of these hypothetical-fact situations are actual case laws. A comparison between the tables of content of the two editions would show us that not much has changed with respect to the themes or subtopics of the chapters that have been retained in the 2nd edition, although authors have either changed or co-authors have been added. Much like the 1st edition, this edition is also likely to appeal to practitioners and students alike. Considering this is an edited book, it comprises read alone chapters but at the same time, the chapters gel well together to holistically cover perhaps most, if not all areas of overlap between the various bundles of IP. The book is priced at $315 which seems to be on the higher side and one does wonder if, like the 1st edition, this time too we’ll see a special and more affordable edition for readers from South Asia. (As readers may remember, for the 1st edition, Prof Basheer had written about the special edition for India and other South Asian countries, priced at INR 1995). This book review does not cover the book exhaustively (given its lengthy nature) but rather briefly touches upon the chapters which covered overlaps that I found particularly interesting, though, I say this without prejudice to the other chapters that are equally, if not more, intriguing.
The central theme of the book is addressed by Wilkof in his introduction of the book where he lays out the meaning of overlaps in IP and its criticism as well. The chapter on Overlap between Patent and Design Protection by David Musker elaborates on this and deals with another pressing question- Whether overlaps matter? Musker lists out the 4 most common objections to overlap (in context of patents and designs)- stretch, overlap, post-expiry right to use, and mismatched defences. He further lists an uncommon objection- undermining or circumventing. He goes on to defend overlaps against these objections, interestingly by arguing that avoiding overlaps would create gaps which are later filled by sui generis measures, which increase the potential for overlapping protection rather than reducing it.
New Chapters in the 2nd Edition
In addition to updated chapters, the 2nd edition includes some completely new chapters as well. There is one titled “Overlaps between Copyright, Rights of Publicity, and Personality Rights” authored by Tyler T. Ochoa. The chapter is, for the most part, a jurisdictional study on the overlap between copyright, publicity, rights, and personality rights. The jurisdictions analysed are the US, UK, and the European Union. Here the author points out an interesting anomaly while discussing the US laws. The author describes the conflict in federal law and state law, wherein, copyright law is of importance to federal interest and right of publicity is important to state interest. Consequently, to balance the possible, preemption comes into play. What follows is an analysis of express and implied preemption. This chapter also, interestingly, considers the overlap between the right of publicity and the right to freedom of expression under the First Amendment of the US Constitution. This is a welcome analysis, an expansion of sorts, from the previous idea of overlapping IP. Since, that involved an intra-IP overlapping approach, but is now extended to constitutional law) as well.
Another new chapter is “Trade Secrets and Privacy” by Maximilian Becker. Here the author discusses the pertinent issue of clubbing privacy with the right to protect trade secrets. Explained mainly in the premise of European law, the chapter discusses in detail trade secrets and privacy with respect to data protection, individually, and also how their respective notions differ significantly. The degree of “secrecy” in both trade secrets and privacy are also discussed extensively.
A discussion on the overlap between Traditional Knowledge and other IP rights has also found its way in this edition of the book. Authored by Susy Frankel, this chapter gives a delightful insight into the owners of traditional knowledge and their expectations. Frankel asserts that the claimants of traditional knowledge are not seeking secrecy, instead they want respect for the values of their knowledge system. She specifically highlights that the Māori, for example, have not kept their knowledge secret and have extensively shared them. But they have maintained that this knowledge cannot or should not be exploited in any way possible.
Another interesting aspect related to the Māori, discussed in this chapter, is the sui generis and special protection for the Haka (most of us would recall the Haka from the now famous performance by the youngest MP in the NZ Parliament or the NZ Rugby team performing it before or after their games). This protection is an illustration of protecting cultural icon that come from traditional knowledge. The Ngati Toa, cultural owners of the Haka, had earlier unsuccessfully attempted to trademark four phrases from the Haka. However, subsequently the NZ parliament enacted the Haka Ka Mate Attribution Act, 2014 acknowledging the significance, history, and identity of the haka. The author notes that the legislative solution is “narrowly prescribed” and is limited to one use of traditional knowledge, also acknowledging that this step is hardly a significant one towards protecting traditional knowledge.
Chapter 10 by Jonathan Band and Brandon Butler discusses the Overlapping forms of Protection for Databases. The chapter focuses on the overlap of IP protection for databases which are a “compilation of facts”, primarily from the lens of EU Database Directive and US copyright laws. Band and Butler conclude that selection and arrangement of material within a database may be subject to copyright protection if it is the author’s own intellectual creation (as in the EU) or it must show spark of creativity (as in the US). The chapter on the Relationship between Trademark Rights and Unfair Competition Law authored by Axel Nordemann and Tara Aaron-Stelluto analyses situations when trademark infringements and unfair competitive practices “coincide”. Their focus of jurisdiction is EU, German law, and US law. The authors assert that the fundamental difference for Trademark laws and Unfair Competition Law is their harmonisation within the EU, the latter being only partly harmonised. The chapter also describes in detail the conditions laid down in the EU Directive on Misleading and Comparative Advertising, which if met, will exclude trademark infringement action.
Conclusion
As mentioned earlier, these are only some of the many interesting chapters in this book, which covers a wide range of overlapping pairs in intellectual property, addressing both their conflicts and synergies. The hypothetical-fact example is a useful method in explaining the concepts to follow. The book also touches upon a wide range of jurisdictions to reflect a comprehensive analysis of such overlap, further complemented by a specific jurisdictional comparison table at the end giving a global landscape view of the issue at hand from selected countries. Wilkof, however, has mentioned that the primary jurisdictions for most chapters are UK, US, and EU to provide legal uniformity but also so that the focus remains on principles which can be broadly applied. Newer chapters such as on privacy and trade secrets are a welcome addition. Similarly, the interdisciplinary nature of some of the chapters, talking about competition law and constitutional law along with IP, should also be appreciated. All in all, the book is an interesting and engaging read, useful for practitioners and academicians alike, covering the contours of overlapping in IP analytically, comparatively, and exhaustively.
The book can be purchased here.