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(Oxford) IP Law Comprehensive Notes 2025.
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(Oxford) IP Law Comprehensive Notes 2025.(Oxford) IP Law Comprehensive Notes 2025.(Oxford) IP Law Comprehensive Notes 2025.
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1) Course and Subject Area Overviewa) Intro:
i) Perspectives:
(1) Public international law perspective – treaties, systems, institutions
(2) Private international law – rights of an owner or creator in a certain country
(a) Public sets the framework for private actors to get relief
ii) Two Types of Law Governing IP:
(1) Individual national IP laws that establish IP rights within each nation’s borders
(2) International and multilateral IP treaties to establish minimum standards of protection for IP law
iii) Three Types of Scopes for Laws:
(1) Territoriality – laws to make binding within their own territory, where do laws have power; IP
uses territoriality
(2) Nationality – bind their nationals where they may be; some things live here; severe crimes, taxes
(3) Effects – make laws about things that have substantial effects
iv) Intellectual property is a topic that cuts across almost every country in the world
v) It impacts not just businesses and individuals, but people in their everyday lives
vi) Issues:
(1) Patent laws allow the patent owner to enjoy a monopoly for a 20-year patent term and to charge
prices far beyond what individuals in many developing countries can afford
(a) Developing and least developed nations contend that these laws restrict/deny access to
necessary medicines
(2) Biopiracy term used by some to describe the attempts by multinational enterprises (MNE) and
other entities to acquire IP rights in genetic resources and traditional knowledge indigenous to
certain areas or peoples
(a) Particularly developing countries
(b) MNEs are accused of “pirating” indigenous materials and traditional knowledge from
developing countries by obtaining patents and other IP rights without paying adequate
compensation
(3) Commercial Piracy involving the infringement of copyrights and trademarks
(4) Intellectual Property Rights exclusive rights in creations of the mind
(a) Territorial in nature; they emanate from national law and typically apply only to conduct
within that nation
(b) A complex set of international IP treaties/agreements has developed over the years to
establish minimum standards for the IP laws in countries around the world
(5) International Intellectual Property the system of international treaties and legal institutions that
both facilitate the acquisition and recognition of such rights and that establish uniform obligations
on the part of nations to follow minimum standards in their IP laws.
vii) World Intellectual Property Organization – WIPO, through the UN (1800s)
(1) Paris Convention – patents, TMs, industrial property
(2) Berne Convention – copyrights
(3) Madrid Agreements – TMs
(4) Patent Cooperation Treaty
(5) Rome – performances, broadcasts
(a) = a la carte, you can join one or all
viii) World Trade Organization (WTO) (1980s)
(1) TRIPS – all IP
(2) DSU – enforcement mechanism
(a) = all agreements are required to join
ix) Agreements are either:
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, (1) Procedural or related to the acquisition of rights
(a) Ex: Madrid, PCT, Paris Convention, how to get rights
(2) Substantive and related to minimum rights
(a) What rights are you afforded when you already have the thing – TRIPS minimum standards
b) History
i) Before treaties – you only had power within your own border
(1) So French authors couldn’t stop copying in Belgium because of the territoriality principle and
authors were annoyed
ii) Why does IP pick territoriality?
(1) Everyone has their own sovereign authority, mutual respect
(2) Comity – everyone follows the boundaries
iii) First Idea – Reciprocal rights treaties
(1) “I will give your authors what you give mine”
(2) Problematic – you have to interpret other country’s laws; cumbersome and annoying
iv) So, we went to Multilateral Treaties
(1) Paris Convention and Berne Convention rely upon the concept of territoriality
(a) This is implied, nowhere is territoriality explicit
(2) Countries wanted their citizens to have IP rights in other countries
c) Globalization, Intl Trade, and Multi-National Enterprises (MNEs)
i) Globalization the relatively free movement of people, goods, money, services, and technology
around the world
(1) What are the driving forces behind globalization?
(a) Political and legal reform
(b) International trade and MNEs
(c) Technological advances
(2) Political and Legal Reform
(a) In the past three decades, with the fall of the Soviet Union and its eastern bloc, the rigid
barriers to trade created by the Iron Curtain have collapsed
(b) China opening its doors to trade with the rest of the world has created a vibrant and important
economy
(c) After the Cold War, many nations have shifted their national priorities from political
objectives to economic development
(3) International Trade
(a) Four principal channels of international trade exist:
(i) Trade in goods
(ii) Trade in services
(iii) Knowledge and technology transfer
(iv) Foreign direct investment (FDI)
(b) Each of these channels has experiences significant increases in the past several decades
(c) The multi-lateral world trading system has grown with the implementation of the General
Agreement on Tariffs and Trade (GATT) and its successor the WTO
(i) The result of GATT was a sharp increase in the levels of international trade in goods
(d) The international transfer of technology increased dramatically at about the same rate as FDI
in the past two decades
(i) Technology Transfer a process by which an owner of technology protected by some
form of IP (patents, trademarks, copyrights, trade secrets) will authorize use of those
rights to another
(e) Another reason for increased international dimensions of IP is FDI:
(i) Foreign Direct Investment (FDI) the acquisition by an entity resident in one nation ofa
permanent/lasting interest in an entity resident in another nation
(ii) In FDI, the level of technology that is involved can often be higher than that involved in
technology licensing
(4) Multi-National Enterprises (MNEs)
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, (a) As MNEs own the world’s most valuable IP, they have a great stake in the protection of IP
rights
(b) They are the engines that drive the world’s innovation process as they have the resources to
engage in research and development critical for innovation
(c) Most of the world’s leading MNEs are located in developed countries
(5) Technological Advances
(a) Advances in technology have also facilitated globalization, which in turn fuels the pressure to
secure IP protection internationally
(b) The means of travel by air, water, and rail have made it easier to reach all parts of the world
in a relatively short amount of time
ii) IP, Developing Countries, and Economic Development
(1) In terms of knowledge and technology, developed nations are the primary innovators and
exporters of IP rights and developing nations are recipients and importers
(2) Developed nations tend to favor strong IP laws, while developing nations tend to favor weak IP
laws
(a) Strong IP Protection:
(i) Developed nations tend to argue that IP laws are necessary to protect the investment of
significant resources in developing their products
(b) Weaker IP Protection:
(i) Developing nations contend that IP laws are used by MNEs and developed nations either
to deny access altogether to advanced technology or to limit access by imposing
burdensome royalties and licensing fees
2) Brief Intro to Major Issues
a) Territoriality
i) National IP Laws – Territoriality in Scope
(1) IP rights are territorial in nature and are created, not by an international treaty, but by national
law.
(2) Territoriality A sovereign’s laws, such as those creating IP rights, have effect only within the
territory of that nation
(a) Ex: my parents have the most power over me when I am physically living in their house
(b) Within my territoriality, I have the right to proscribe the law; whoever is inside my borders,
these are the rules
(3) A nation has jurisdiction to prescribe valid and binding laws on the basis of three principles of
territoriality, nationality, and effects:
(a) Territoriality – every nation has the jurisdiction to enact laws that are valid and binding
withing its own territory
(b) Nationality – every nation has jurisdiction to enact valid and binding laws with respect to its
own nationals wherever in the world they may be located
(c) Effects – a nation can, under some circumstances, enact valid and binding laws with respect
to conduct outside its territory that has a substantial effect within its territory
(4) Scope of this principle – it is not expressly required as a legal standard in any international IP
agreement, it is found more in the general principle of comity and mutual aspects among nations
than it is a treaty obligation
(5) A country could depart from the principle of territoriality and enforce its IP laws extraterritorially
without violating international IP law
ii) Subafilms v. MGM-Pathe Communications
(1) Facts:
(a) In the 1960s, Subafilms (plaintiff) and Hearst Corporation (plaintiff) formed a joint venture to
produce the Beatles film Yellow Submarine.
(b) Hearst entered into an agreement with United Artists Corp. (UA) for financing and
distribution.
(c) In the early 1980s, UA declined to license the film on home video due to uncertainty over
rights. In 1987, UA’s successor, MGM/UA Communications Co. (MGM/UA) (defendant),
authorized the video release of the film.
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, (d) Also, pursuant to an agreement with Warner Bros., Inc. (Warner) (defendant), MGM/UA
authorized Warner to distribute the film on video worldwide.
(e) Subafilms and Hearst sued MGM/UA, Warner, and various subsidiaries, alleging that the
domestic and international distribution of the film on video constituted copyright
infringement.
(2) Rule:
(a) The mere authorization of extraterritorial acts of infringement does not state a claim
under the Copyright Act
(3) Holding:
(a) The mere authorization of acts of infringement that are not cognizable under the U.S.
copyright laws because
(4) Notes:
(a) When a party authorizes an activity not proscribed by one of the five section 106 clauses, the
authorizing party cannot be held liable as an infringer
(b) Under U.S. law, this didn’t infringe because it was not in U.S. territory
(c) Extraterritorial application of the law would be contrary to the spirit of the Berne Convention
(i) You cannot recover damages under U.S. law for things that happened abroad
(d) Defendant shouldn’t be held liable in the U.S. for simply providing the information, if all the
actions of reproduction/distribution/derivative works (106 rights) is happening in a foreign
country
(i) However, in the U.S. there are some cases where even a tiny amount of copying in the
U.S. ties into your authorizing of the copying abroad. You infringed on U.S. soil and
everything that flowed from it, even if the flow happened outside the borders, you will be
held responsible for it in the U.S.
b) Territoriality’s Role with Treatises and Intl Law
i) National laws not only create IP rights but also determine how such rights should terminate
ii) Exhaustion can be viewed as an aspect of how a nation decides the territorial scope of its IP rights
iii) Exhaustion exhaustion of rights relates to the termination of distributional and importation rights
over a lawfully sold item that is protected by IP
(1) Also called the First Sale Doctrine
(2) Typically arises when the item in question has been first sold in the stream of commerce
(3) Applies to the particular goods sold by the IP owner, not to the IP owner’s general exclusive
rights of IP
(4) These rules bear on whether a country allows parallel imports or gray market goods, based upon
their own exhaustion rules (Ex on pg. 26)
(a) Gray Market Goods genuine goods (made by the authority of the IP owner) that are
manufactured for sale in a foreign market but that are then imported into the home market of
the IP owner
iv) Implementation of Obligations (Self-Executing Treaties v. Non-Self-Executing Treaties)
(1) Self-Executing Treaty the treaty serves as law itself, nothing extra needed
(a) A number of countries, including civil law jurisdictions, if a treaty provision is not in one that
says “this is not self-executing” and if it is specific enough to be directly used, a civil law
country is willing to just let someone resort to the treaty provision (most of them, maybe not
all of them)
(2) Non-Self-Executing Treaty has to be enforced by Congress making a law about it (mostly
here)
(3) Note 3 pg. 30:
(a) Foster v. Nielson: Established a distinction between self-executing and non-self-executing
treaties
(i) Treaties are part of the supreme law of the land, but, they long ago created this distinction
that it is only the self-executing treaties that are federal law already with no further action
needed
(ii) If it’s non-self-executing you have to go find the domestic legislation
c) National Treatment and Most Favored Nation
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