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Wednesday, 25 October 2017

Book Review: Form in Intellectual Property Law

With 'Form in Intellectual Property Law', David Booton gifts future generations of IP lawyers, researchers and practitioners alike, with a precious present: a tool to make sense of contradicting legal judgments in patent, copyright and trade mark law. Indeed, getting your head around nuanced conflicting decisions is unarguably one of the most difficult tricks of the trade. It is a skill that IP specialists have acquired through years of industrious effort and much intellectual contortion. 'Form in Intellectual Property Law' offers a compass to the newcomers to the field who have embarked upon this journey and proposes to get you to your destination faster that you would on your own. The author develops a comprehensive theoretical framework which explores the basics of legal norm-making as they occur in the field of intellectual property law specifically. Booton's contribution to the scholarship on this point is a much welcome development of the literature. In other words, Form in Intellectual Property Law could not have come sooner and is deserving of its status of 'a must have for anyone serious about [intellectual property]' (in M. Llewekyn's own words).

Booton begins his discussion by talking us through the fundamentals of form in legal adjudication most of us encountered in the early days of our training in law (Chapter 2). In doing so, the author explores the definition of 'rules' and the contribution of the legislation to their substance in comparison to what court do with them in their application case-by-case. In his view, it is the casuistic and discrete application of 'rules' by judges that gives birth to 'standards' ; the two notions being separated only by the degree of discretion they confer to the decision maker (p. 2, pp. 31-47). Therefore, where most commentators see the unguided application of judicial discretion in seemingly conflicting precedents, Booton points to the complex (harmonious?) interaction of 'rules' and 'standards' which ever so rarely gives room for actual discretion on the part of judges (pp 55-74; pp. 77-88). Much of Chapter 3 is dedicated to disavowing the common place concern of judicial discretion which Booton argues is largely overstated.

The line Booton draws between 'rule' and 'standards' is used as running thread throughout the book. It is the compass with which the author proposes to re-arrange well-known landmark cases of patent law, copyright law or trade mark law in a new logical order. By emphasizing the difference between 'rules' and 'standards' (Chapter 2) as well as the difference of contribution to norm-making delivered by the legislator and judges (Chapter 3), Booton stresses the importance of studying the form of intellectual property to understand its substance (Chapter 4). Building on Duncan Kennedy's work on private law, Booton uncovers that the form of legal norms can be intimately linked their underlying value. In Chapter 5, Booton reveals that rules tend to be motivated by individualistic values whilst 'standards' tend to give a platform to altruism. The author argues this lens sheds some light on difficult areas of existing case law. The author applies this thesis to a number of examples, including the infamous originality test under copyright law (pp. 192-204). There, Booton holds that cases preoccupied with defining originality in the place of 'reworked material' (think Sawkins's modern musical notations, railway timetables and pocket diaries etc.) are not justified or justifiable on the basis of the 'right kind of labour' test, but rather on the public interest argument that the works at stake enhances the public's appreciation of or access to available information (pp. 200-204).

The book will appeal to all researchers and postgraduate students in IP, trade mark, patent and copyright specialists alike, as all three fields are covered by the author. Booton's analysis may also be of use to practitioners interested in challenging the inner workings of judicial decisions.

David Booton, Form in Intellectual Property Law (2017). Published by Edward Elgar. 328 pages. Hardback Price: £95.00. Web purchase: £85.50. ISBN: 978 1 78347 054 9. 

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