Jacques De Werra
It is left to contract law experts, which say, well, this is contract and this is not IP. And contract people say, well, this is not contract, this is IP.
So ultimately, no one really looks at it from a policy perspective, even though this is an extremely common transaction, perhaps the most common transaction in an economy where intangible plays such a significant role.
Lise McLeod
Hello, Page Points listeners. Today I am honored to have the two editors – Professors Jacques de Werra and Irene Calboli - of a book that we're going to be highlighting entitled ‘The Research Handbook on Intellectual Property Licensing’. I am holding a lovely print edition here in my hands.
Welcome to you both to the podcast.
I must add that this is actually the second edition of this Handbook. I will begin by asking you Jacques, why publish now and why a second edition?
Jacques De Werra
Yeah, thank you very much, Lise. First of all, let us thank you and WIPO for this opportunity to speak about this second edition of our book. The first edition was published back in 2013 and I was the only scientific editor of that edition and we've been discussing with Irene, and decided that it was important for us to go for a second edition because IP licensing is a very dynamic field of research with a lot of practical relevance and important application as we'll get to discuss later on. So we thought it was timely to do so and we're very happy to see that the book is now out and available on the market.
Lise McLeod
Irene, my first question for you would be: Do you think that licensing is as important today as it would have been back in 2013 when the first edition was published?
Irene Calboli
Thank you very much for this crucial question. Certainly licensing it's as important today as it was in the past. I would say more important, but it's always been very important. What has changed in the licensing practice? It's that it's getting more and more attention.
Licensing is a practice that has become established in the past half a century, primarily, and it's the way to distribute IP assets beyond the IP owners. It's the way to commercialize, to monetize intellectual property, but also to make it more accessible to a larger set of individuals, companies, transfer technology, transfer knowledge. Yes, intellectual property licensing, it's absolutely crucial. More than ever today in an interconnected economy and there I would say the WIPO is clearly very much at the forefront of the importance of this practice with the work on innovation, licensing, transfer of technology that your organization does on a daily basis. So, thank you.
Lise McLeod
Jacques, in your introduction to the book, it was mentioned that there is new content in response to developments from the past 10 years. What would be the new developments in the licensing of patents that you'd like to highlight for us?
Jacques De Werra
So one important development when we talk about patents, licensing, perhaps more generally technology licensing is about so-called FRAND licensing, fair, reasonable, and non-discriminatory licensing of patents which are integrated in technological standards. For instance, for the use of cell phones, there are plenty of patents involved and the point is to make sure that no patent owner basically can block the use of a cell phone on the grounds of its exclusive right.
So, FRAND has become a key component in the patent licensing ecosystem and has led to a lot of cases, ongoing discussion both in academia as well as in practice. So we thought it was important to include that, which now is integrated in a given chapter of the book.
And another important component and chapter of the book that we have included and that goes back to what Irene has just said is to make sure that licensing is not only a tool for commercialization of IP assets and also a way to generate revenues out of IP assets, but also to share the knowledge and the technologies at stake.
And we have included on that the second important addition by comparison to the first edition, a chapter on the quite innovative methods of patent and technology licensing of the medicines patent pool, which is based here in Geneva, which shows here again, the quite important expertise localized here in Geneva, thanks to WIPO, obviously, as mentioned by Irene, but other stakeholders, including the medicine patent pool.
And this shows that licensing can be used in a socially beneficial way. And this is basically the title of that chapter, which describes that there are innovative ways how patents can be put to use and made available to third parties for beneficial uses socially.
Lise McLeod
Irene, as you know well, trademark licensing rules look quite different across jurisdictions, however there are seemingly some signs of harmonization. Do you think we're heading towards some kind of a convergence?
Irene Calboli
Well, thank you again for the question. Indeed, I have authored the chapter in the book related to trademark licensing that in some way culminates years of research in the area from a US standpoint, a European standpoint, an Asian selected jurisdiction standpoint.
And yes, I can see there is some convergence because international trade, it's taken even more if first seat in the world, even compared to just a couple of decades ago. But certainly the role of trademark licensing in some countries remains different in terms of requirements.
Some countries require licensing to go along with quality control. And I would say some of these requirements really relate to the fact that in some jurisdictions, trademarks are considered not so much as property in and of themselves, but rather more as badge of quality and consistent quality. I say that should be the case everywhere, but some countries, specifically common law jurisdiction, have a tradition of imposing these requirements on licensors and licensees to protect consumers from possible confusion or changes in quality of the products.
However, other countries don't impose these requirements, certainly with the expansion of trademark licensing beyond similar products today. For example, college licensing is a great example of university branching off and licensing their names, their logos for t-shirts and other products for creating affiliation. And certainly, they can't control the quality of the products as a manufacturer of apparel could otherwise do, whether you or she or the company license. But certainly, these requirements do remain in place in some countries as a consumer protection.
So back to the question, are the standards harmonizing? Yes, they are, but we still need to be very careful. It's common in many contracts to write, company so and so is my licensee worldwide for certain categories of product. Well, it's very important to then understand that depending on the jurisdiction when these products are actually manufactured and then sold, some of these requirements might kick in.
And why is that important? It's not so relevant perhaps between the relationship between the licensors and licensees, but it's very important in case of a potential infringement of the mark in a jurisdiction. And so if those requirements are not well respected that can create a presumption of abandonment of the market.
So again, I don't want to get too technical in this podcast, but the bottom line is there are a lot of technicalities in this contract. They are complex and there is some harmonization, but at the same time, there is still quite relevant differences that require for national expertise and careful assessment by national lawyers. So in a world that is more and more globalized without borders, licensing requirements do still require national lawyers to carefully review national applicable contract. And this is where it's important to remember licensing, it's a type of contract that relates to IP, so it follows the rules of contract at the national level where there is less harmonization.
So IP lawyers have to be mindful and IP owners have to be mindful of following the national requirements and be careful and have an understanding that there might be possible differences. And this is what makes this field super interesting. And really, I say the challenge is an opportunity. You want harmonization, but at same time you want protection for consumers.
And this is why convergence should not go at the expenses of consumers and quality. And so to have these requirements still perhaps a good thing.
Lise McLeod
Now to you, Jacques. Why is commercial arbitration frequently used for solving IP licensing disputes? When it comes to running an IP arbitration, what are the practical decisions that can make or break the process?
Jacques De Werra
So thanks very much for the questions perhaps in terms of structure of the book. I just want to mention before getting to the question that it was important for us and it was actually the case already for the first edition to go beyond an analysis and presentation of the specific licensing issue that may arise for trademark licensing, for patent licensing, so kind of an IP-dependent licensing analysis.
And we also wanted to cover other facets of IP licensing, which we've called in the book, transversal IP licensing issue, not only about substance, but also about procedure and specifically about dispute resolution mechanism. And this is what we've done in the book by including a few chapters on arbitration which is indeed a key mechanism for solving global IP licensing disputes.
I guess Irene has just insisted on the fact that many IP licensing transactions are multi-territorial and sometimes global. So they cover many territories, which leads to the importance of arbitration, which is a way to centralize dispute resolution mechanism by submitting the dispute to one single decision-making entity.
In that respect, too, obviously WIPO has shown the way with the establishment of the WIPO Arbitration and Mediation Center some years ago. And arbitration can offer quite valuable advantages over state court litigation, centralization. First of all, to avoid a country by country litigation, which might be costly and perhaps even leads to contradicting decisions. Also the expertise of the arbitrators and also the confidentiality of the proceedings.
So I think it's important and it was important for us for the book, but also in practice for the readers to have a better sense of why arbitration may offer a very valuable tool for solving global IP licensing disputes. In that respect, there are a few points to take into account in terms of making sure that confidential information are well-protected arbitration proceedings, which may particularly depend on the choice of good arbitration rules, for instance, the rules of the WIPO Arbitration and Mediation Center, and also to make sure that if the issue of the validity of the license IP rights arises. This is also managed in the arbitration proceedings as such.
So arbitration in a nutshell is really a very important way to solve global IP licensing disputes, which is somehow not surprising because arbitration more generally is the usual way to solve global commercial disputes that also applied to IP licensing and we thought that was important for that reason to devote some chapters to this issue in the book.
Lise McLeod
Irene, let's now have a look at character merchandising licensing agreements. Character merchandising brings together copyright, trademarks and personality rights in fascinating ways. What makes these deals uniquely challenging and what do the best licensors do to protect both the brand and the creative vision behind it?
Irene Calboli
Well, character merchandising is, I would say, all of us think Mickey Mouse or now there is a dispute pending in front of the Supreme Court in the US about the name Rapunzel. We can think Tinkerbell and so on. It's certainly, I wouldn't say too new type of legal construct but certainly is a relatively recent legal construct.
We talked for years about trademark merchandising, copyright merchandising, and then the further exploitation of fictional character became a thing between quotation particularly as a spin-off of the movie industry and series to create franchises on, this point I would say, every imaginable product. What makes character merchandising more challenging, but at the same time more interesting is that they require often accumulation of rights.
And so we don't really have character protection as such. We have copyright protection for character. We have trademark protection for character. We have right of publicity or personality rights in the country or states and jurisdiction that allow this protection. And so the actual structuring of these contracts becomes a layer of different registrations that might have different requirements across different countries and then accumulation of these types of protection into a bundle of licensing.
And what makes it interesting is that not all of these licensing might have the same requirement because again, we might have trademarks that have different requirements across different jurisdictions. Then we have copyright that, as we know, cover derivative works, cover not just the reproduction, but a host of additional economic and non-economic rights. But that also can vary depending on the countries, can vary in duration, can vary in the type of limitation and exception we can have. And then there are the publicity slash personality rights. Also, it's not equivalent across the world. And so that creates really a very interesting and at the same time, very challenging exploitation of the right. However, there is so much value as the makers of famous movies or cartoons know in these characters that is obviously very relevant to protecting them.
Now, another very interesting aspect of this contract is that sometime in most instances, we talk about characters that are famous on the big screens or on books that then become movies or cartoons and then they become exploited commercially for many different products. But in some instances, think about, for example, the character Tony the Tiger from cereal, or Strawberry Shortcake, or Ronnie McDonald, or the 7-Up, or the M&M's little buttons that now have arms and eyes.
So sometimes we have famous trademark logos that actually get alive on their own and become character merchandise as well. And so this is also quite interesting. I think another interesting topic, it's the merging of protection and the merging also of exceptional limitation. But that is also very jurisdictional, meaning that again, these are complex contracts that require complex knowledge by national lawyers who have to have an international understanding of the value of the brand and how we can commercialize it across borders by using a national strategy that is internationally compatible. And so that makes this field extremely fascinating.
Lise McLeod
Jacques, let's next take a look at European IP license contract law. As data becomes an increasingly valuable asset, there's growing interest in whether IP licensing principles could guide how data sharing deals are structured. What lessons do you think come from IP contract law that you think would best translate to the data economy.
Jacques De Werra
Thank you, Lise. Before getting to the question, I think it's important to also identify which part of the book this has been discussed, and that's basically in the final part. The final part of the book is about global or regional harmonization of IP licensing law. And I wanted to start with this because for us and for me personally, it was important to think about potential improvements to the IP licensing framework, which is as perfectly reflected earlier by Irene, is as of today, essentially local, and even national, so we have national IP law, we have national contract law governing many of these licensing issues.
Now to the question. What we see emerging is the development of regional IP licensing policies at the EU level, which has been quite dynamic on various fronts and specifically with respect to data licensing. So, and this is one of the improvements and new developments that we have included in the second edition, which is precisely about data, which has become, as we all know, has become perhaps the critical assets in the data economy, the digital economy, which is why we thought it was relevant and even essential to have a chapter dedicated to data licensing.
Now, what can we learn from IP licensing as such to develop the data economy and also make sure that data sharing is promoted? I think there's a lot to be learned because essentially, data licensing is a type of IP licensing transaction and we can also learn from the past. We don't for sure have to reinvent the wheel, so we can learn perhaps from trade secret licensing, can perhaps learn from copyright licensing, we can learn from database licensing. So this quite established phenomena which can be put to use and serve as a source of inspiration for data licensing transaction.
And it will be interesting to see in the future also in light of all this very dynamic development taking place at the EU level in terms of promoting data sharing between private companies, business to business data sharing transaction, whether what is progressively emerging at the EU level may serve as a source of guidance at the global level which leads me back to what I was mentioning earlier in terms of trying and see what trends and what IP licensing practices and data licensing practices may be used more globally.
And it remains to be seen perhaps for the third edition where we will go from there, whether EU based data licensing transaction will become a global standard, which could perhaps reflect the trend that we know the so-called Brussels effect by which you have e-regulation somehow becoming global standards. So it remains to be seen whether that will apply potentially with respect to data licensing transactions.
Lise McLeod
Another part of the book that is worth exploring is IP licensing under international investment law. IP rights are increasingly being treated as protected investments. Jacques, how is this changing the way we think about licensing? Do you see investor protection and government regulation pulling in opposite directions?
Jacques De Werra
This is also a chapter that we have introduced in the book. And that's one of the other examples of this so-called transversal IP licensing issue in part one of the book, where we try and explore how IP licensing applies in various sectors, in this case, in investment arbitration.
And what we see emerging, and there are a few cases which have dealt with IP licensing and have assessed whether IP licensing can amount to an investment, is that beyond IP as such being considered as investment, you may even have IP license as such being considered as investment.
And then to your question, the question arises whether we should protect the investor, meaning in this case the IP licensor, the IP owner who has licensed out his IP rights in a given territory, or whether we shall protect, by contrast, the host country, which may potentially have taken certain steps which would reduce or negatively affect the protection of the IP licensor. So there's a tension, but that tension is quite standard in IP investment arbitration.
But what is, I think, interesting to note here again as a potential sign of how this may evolve in the future is that we see IP licensing being at stake and being debated and disputed in a context which is quite new, which is now investment arbitration, and which will certainly continue to grow in the future knowing that many investments which are made at the global level are not investment in tangible form, like building new factories and other physical investment to put it that way, but are intangible investments. And intangible investment can take the form of IP licensing and I'm sure that this will continue to grow in the future.
That’s why we thought it was important to have a dedicated chapter on that. And just like coming back to the previous question about data licensing, I think there are actually already cases where in essence, investment arbitration data were at stake. So whether data can constitute an investment under investment arbitration, which shows here again the critical importance of intangible assets, the licensing of intangible assets under investment law in general.
Lise McLeod
Irene, would you like to add anything to that?
Irene Calboli
Yes, obviously this idea of licensing entering the world of investment and the tension between investment protection and the ability of nation state to distribute knowledge, it's a very important one. Even more so if we think that today more and more products are no longer tangible, but are intangible.
Why that's relevant? Because in the past, most products were tangible, even though protected through patent, trademarks, design, but still they were consumed in their physical aspect. Now we have a very strong part of the economy that it's digital.
And that goes beyond data. It's really digital files, digital music, digital entertainment, information about medicine, books, and so on. And this reduction of physical products leads to less transfer of ownership of physical products. And we actually at this point have much more licensing, so renting of the use of this digital product on short term, long term and so on. And so this new way to distribute digital products, it's obviously crucial for the IP owners or the company that have the control.
All the IP portfolios and the content to distribute becomes their way to enter many different markets. But at the same time, there is a tension between protection and access pricing. So this is where antitrust authority can actually get involved in terms of refuse to license and so on. There is a tension with nation state possible interest, depending on the topics.
And so this is a field that we are going to see more and more possible disputes. And this is why we thought it was very important to start to raise attention to the area. We are entering a world where digital and physical are more and more merging. There is more digital. And so that creates more licensing across all technology, all sorts of products and that creates more and more reason for cross-border dispute, not just involving private parties, but also public and private. And so this is what makes this field even more interesting today.
Lise McLeod
You are two very important academics in the field of intellectual property and this volume with its number of contributors and endorsers covers a very important aspect of IP. What would be your last comments, if anything, that I haven't already asked you today that you would like to mention?
Jacques, would you like to begin?
Jacques De Werra
The hope, and that was already the hope for the first edition, is that the second edition, which is now published, shall trigger new scholarship and new thoughts and perhaps policy proposals. Because what strikes me, and it did strike me already, back in the days when I was preparing for the first edition, is that even though everyone I think admits that IP licensing is critical specifically in the digital economy and data licensing in particular, that's well established and well recognized, but we still also have to admit that IP licensing as such is underdeveloped from a policy perspective. Because as we had discussed earlier, it remains governed by local rules, sometimes outdated rules, because in essence, IP scholarship and IP policy is not necessarily considering IP licensing as a top priority. It is left to contract law experts, which say, well, this is contract and this is not IP. And contract people say, well, this is not contract, this is IP.
So ultimately, no one really looks at it from a policy perspective, even though this is an extremely common transaction, perhaps the most common transaction in an economy where intangible plays such a significant role. So to your question again, in one sentence, I think the hope is that this book can contribute to the policy discussion and hopefully leads to further improvements and to a more global system for IP licensing transactions.
Lise McLeod
Thank you Jacques. How about you Irene?
Irene Calboli
Well, following up from there, I want to call the attention to the reader to the part three of the book that focuses on regional and national perspectives. I think we have added the perspective from Africa, for example, from focusing on selected and equal member states. There have been updates related to China, to India, to Japan, to Brazil. And these are just some of the main jurisdictions beyond the United States and part of North America or Europe. It's absolutely important that there's going to be more work done on licensing because it is a complex field.
Some might find it intimidating because again, the level of expertise between understanding IP and understanding the various IP rights and understanding the national provisional contract and then how to interact with foreign correspondents that have the same knowledge, sometimes might be daunting. But certainly, this is in some way the key, the magic key to unlock progress and distribution and commercialization and monetization.
And so it's important then the South does more work on licensing because that really can help them commercialize more their indigenous intellectual property and asset development. At the same time, it's important that everyone across the board studies it more.
It's important that IP licensing really becomes one of the main parts of an intellectual property curriculum in schools. I know schools like mine and Jacques’ do teach IP management, do teach IP licensing, but that might not be the case everywhere. That's truly very important.
So we really hope this book can give more food for thought and hopefully be interesting to specialists and less specialists just opening up a door for desiring to know more and advance the field even more with new writing and development.
Lise McLeod
I noticed in the book there were a long list of acknowledgements - it takes a community, doesn't it? Jacques, do you have anyone you would like to shout out?
Jacques De Werra
Sure, think it goes back to what we discussed earlier in terms of the potential impact of the book to be an invitation for future policy work. And it is indeed something that should be done collectively. And in that respect, we were and are very grateful that some leading experts in IP licensing have written kind words of support on the last page of the book.
And interestingly, these people represent the institutions and key stakeholders that I think would be needed to make sure that we can somehow improve the framework governing IP licensing transaction at the global level.
So the first person, institution that we would like to thank is Sonia London who is the past president of the Licensing Executive Society International. So, LESI is obviously a key player in this global IP licensing ecosystem. And we really do also count on their support and assistance in continuing to do a great job in educating and promoting IP licensing at the global level.
We also had the privilege to have a few words of support from Marco Aleman, Assistant Director General at WIPO, which confirms obviously the key role of WIPO in promoting IP licensing as such as a tool to commercialize IP assets and to distribute the use of IP assets.
We also had the chance to have a word of support of Terry Fisher, Professor Fisher teaching IP law at Harvard Law School, a global luminary in the IP ecosystem from an academic perspective. And we do think that IP scholars also have a role to play in promoting IP licensing law at the global level.
And ultimately, but certainly last but not least, also the judiciary. And we had the privilege for this second edition, he was already supporting the first edition, of Sir Robin Jacob, who also has a part-time affiliation at the University College of London, but who is a judge, a very established judge dealing with IP and obviously the judiciary is a key player in trying to think about the way how IP licensing should and may evolve in the future.
So we do have to rely on professional associations, on global institutions, WIPO specifically, on the academic community, but also on judges in trying to push forward changes to be made to the IP licensing ecosystem. And we're really most grateful to all of them for their support and hopefully potential future cooperation on that front.
Lise McLeod
And Irene, any last comments from you?
Irene Calboli
Well, I also want to echo the thanks that Jacques has given to all the supporters, the endorsers. I also allow me to thank Jacques, who was the editor of the first edition for inviting me to help with this edition. That was an honor and a privilege for us, for me, because we have been collaborating for many years and really that was really a wonderful project to do.
We also collectively want to thank our team. We had many research assistants, doctoral students, and other colleagues in our department that really helped with communication with all logistics. It takes a village, as you said.
And ultimately allow me to thank you, Lise, and your team for making these podcasts available, for working around the clock all the time to share knowledge with the listener of your program, because it's a wonderful program that really features excellent books, hopefully ours as well, but it's really very useful to many. So thank you.
Really thank you, heartfelt, thank you for making possible these types of programs and series that mean so much to so many across the globe, I would say. So thank you all.
Lise McLeod
Thanks to you both for your time today. I can see this handbook sitting on the desk of academics and practitioners alike. It's available on the Edward Elgar Publishing website. And should you be visiting the WIPO Knowledge Center, we have a copy in our collection.
Thank you again and until next time and the next Page Points. Bye for now.