In the UK, as in other common law jurisdictions, the established approach to determining fairness is to consider the same list of factors that govern determinations of fair use in the USA. Those factors include the purpose and extent of the use, the impact of the use on the copyright owner's market and the extent of the work's prior circulation to the public. Of primary

JIP 278-79. According to Merges, the only situation in which `infected people' ought to be permitted `to override patent rights' is where a single life is at stake. See JIP 280.

Resnik (n 33) 332.

The United States Constitution (n 12).

See eg Ashdown v Telegraph Group Ltd [2001] EWCA Civ 1142, [2002] Ch 149; NLA Ltd v Meltwater Holding BV [2010] EWHC 3099 (Ch), [2011] EWCA Civ 890, [2012] RPC 1.

importance is whether the use of the work was for a commercial purpose or competed with the copyright owner's market. If it was or did it will be regarded as presumptively unfair, and thus not capable of supporting a fair dealing defence.

This is broadly consistent with Merges's account of the USA's fair use defence, as well as with the CJEU's emphasis on ensuring that exceptions to copyright are interpreted narrowly. On the other hand, it is very different from the manner in which the fundamental rights of third parties are protected in European patent law. In that context the CJEU has held that dignity-based exclusions from patentability must be interpreted expansively in recognition of the importance of the value underpinning them. In addition, it has held that when determining whether an invention is excluded from patentability on morality or public policy grounds, the history of its derivation is relevant, including whether any biological materials thereby required were consensually obtained. When considered alongside the treatment of the freedom of expression and education-based defences of copyright, the inescapable impli- cation is that dignity and autonomy interests weigh more heavily in the balance with patent rights than freedom of expression and educational interests weigh in the balance with copyright.

There are various possible explanations for this differential treatment of third party rights and interests in copyright and patent law, the most obvious being the different nature and justificatory basis of the IP and other rights in question and/or the extent of their perceived conflict. Before accepting such explanations, however, it is important to note that whereas in patent law the position described is a product of the Biotech Directive, in copyright it is a product of the UK courts' adoption of the factors-based approach to fairness. To the extent that approach receives positive support from European legislation, it is via the three-step test of Article 5(5) of the Information Society Directive, which has recently been read down by the CJEU as adding nothing of substance to the individual defences of Article 5(1)-(4). Given this, it seems important to enquire further into the consistency of the UK courts' test of fairness with European law, including EU fundamental rights and the principle of proportionality. And doing so reveals its problematic basis. Specifically, and assuming that the rationale for the fair dealing defences is to protect third party Charter rights to freedom of expression and education (which it seems clearly to be), and that the statutory definitions of the permitted dealings do represent the legislative expression of that rationale (which they seem clearly to do), the implication is unavoidable that--according to European jurisprudence at least--the additional requirement that the dealing be fair is a requirement for proportionality. It then follows that the European test of proportionality ought to apply. This gives rise to the question of what that test requires. The answer would seem to be a test of fairness that asks whether the restriction on copyright represented by a finding of fair dealing would be proportionate having regard to the legitimate (freedom of expression or educational) value which that restriction serves in the particular case. This is a very different formulation from that supported by Merges and the UK courts currently, and leaves little if any scope for considering the defendant's motivations in using the work or its commercial impact, particularly on a view of IP as conferring rights of exclusion rather than rights of commercial use.

One final point seems apposite in this context, which is the possibility of explaining the UK and European third party restrictions to copyright and patent law above with reference to the social norms which they support. That explanation depends on an expressivist reading of each, as insulating certain social spheres from profit-driven behaviour so as to protect the values of human dignity and autonomy from debasement. Specifically, by denying property rights to subject matter involving human biological materials, and denying fundamental rights protection to commercially motivated or profitable acts, IP law can be said to protect the human being and rights to freedom of expression and education respectively from being demeaned. The suggestion returns us to the discussion above regarding the relationship between money and fundamental rights in IP, and between its moral and utilitarian aspects respectively.

It is submitted that an ambivalent view of this relationship runs through JIP, and accounts for the tension between Merges's foundational theory of IP on the one hand and his account of IP rules and principles on the other. In addition, Merges's recent response to this criticism of his book with reference to the different concerns of theory and principles, respectively--the former being with the whether or why of IP and the latter with its how--is undermined by the effect of his account of IP's how in ensuring a system which reflects a specific and single view of its why. That view seems not only to defeat the pluralistic claims of his model, but also to displace his deontological theory of IP for one grounded in utility. Among other things, the result is an account which has less normative value than it might otherwise have, particularly with respect to legal systems (such as the UK's Europeanized system of copyright) which purport to take individual rights and interests seriously but then fail

Conclusion

From a European copyright perspective there is much in JIP that seems descriptively correct, including its `personal but unselfish' rights theory and its support of a pluralistic, principles-based model of IP.104 On the other hand, Merges's theory of IP sits uncomfortably with the utilitarian underpinnings of both European and domestic patent systems, and so too his account of the operational unimportance of foundational theory is challenged by its use in domestic judicial decision-making. Further, both European jurisprudence and Merges's argument for IP problematize his selection and conception of midlevel principles by highlighting their utilitarian bias. The result is a model of IP decision-making which reverses at the practical level the shift that Merges effects at the theoretical level from utility to fundamental rights, and which thereby undermines its own pluralistic claims. This result is perhaps most apparent in the omission of autonomy from his midlevel principles, notwith- standing its centrality to his justification for IP, and in his conception of proportionality as a means of ensuring that IP rights trump in all but the most exceptional, market failure cases, rather than a means of ensuring that IP rules and practices support the established basic values of the communities or regimes in which they exist, including by ensuring that those values are expressed and optimized in individual cases. In these respects, Resnik's own pluralistic approach - significantly shorter and less detailed in exposition though it is--may still have the upper hand over the approach in JIP.

My critical engagement with JIP in this review article ought not to be read as detracting from the very substantial contribution that it makes. The mere fact of a US scholar as distinguished as Merges rejecting the standard utilitarian arguments for the existence of IP is of itself sufficient to make the book of interest. But beyond and more important than this, JIP represents an important and enormously stimulating contribution to IP scholarship in its direct engagement with the theoretical and operational foundations of the copyright and patent systems particularly, including its use of classical legal theories of rules and principles to explain those systems' current form and development. While strongly informed by US law and jurisprudence, it transcends jurisdictional divisions to offer insights on questions, which, while old, have great contemporary relevance and importance, including for the pressing challenge of finding ways to accommodate different IP rules and policies in the increasingly harmonized field of intellectual property.

Abstract

This review article offers a European perspective on the pluralistic, principles-based model of intellectual property (IP) advanced by Robert Merges in his book Justifying Intellectual Property. After introducing Merges's model and theory of IP with reference to IP theories generally, other pluralistic legal models, and patterns of judicial reasoning in the patent and copyright fields, the article argues that European jurisprudence offers broad support for Merges's operational model of IP, while also challenging certain aspects of his wider analysis. They include his `one size fits all' foundational theory of IP, his account of key IP rules and practices, and his choice and conception of IP's midlevel principles. Through this critique the article draws attention to the utilitarian bias of Merges's model; a bias which undermines its pluralistic claims, in part by undermining Merges's own foundational theory of IP. The result is to underline the limits of a regime unconcerned with its own normative basis, and the need for more rather than less discussion of IP theory, including more work of the type that Merges's book undertakes.

Keywords: Intellectual property, justifications, pluralism, EU law, Europe, principles, copyright, patents

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