Pursuing the academic IP path

2-3/2018 22.8.2018

After defending their dissertations in Finland, many IPR specialists continue their careers as researchers in Finnish universities. Six of them give IPRinfo readers a glimpse to their current areas of interest.

Borrowed cows and other types of appropriation

Anette Alén-Savikko
postdoc researcher
University of Lapland and University of Helsinki

In 2014, the Court of Justice of the EU (CJEU) gave a ruling on parody in EU copyright law (C-201/13 Deckmyn). The option to introduce an exception for parody is included in Article 5(3)(k) of the InfoSoc Directive. The Court noted that parody is an autonomous concept of EU law, while also listing the core features of parody. As an expression of humour or mockery, parody must inter alia evoke an existing work but differ noticeably therefrom.

Being a member of a research project called “Art, Copyright and the Transformation of Authorship”, I examined the status of parody in Finnish copyright law in light of EU law and art studies in my article of 2016. Later, a dispute took place in Finland regarding the use of one artist’s works featuring cow figures in another artist’s paintings. The latter pled parody when the issue was discussed by the Copyright Council, which issues non-binding opinions on the application of the Finnish Copyright Act (FCA). The Council considered (TN 2017:4) the use in question to result in new independent works; therefore, no prior authorization was needed (my research constituted part of the source material). This result for parody may be a positive one, but the background is anything but legally sustainable.

The FCA does not include a parody exception. Legal literature and the Copyright Council approach parody via the provisions on adaptation or conversion of works (§ 4 FCA). Thereby, the adaptation of a pre-existing work is subjected to the rights therein, while the creation of new works, in free association with a pre-existing work, is not. Viewing parody as new and independent is, however, problematic. Parody relies on imitation and is dependent. It strives for different goals than the work(s) being parodied. Parody comes in many forms. It is multi-layered. It may critique, ridicule and pay tribute all at once. It repeats and renews. It contributes to and comments on the cultural canon and may target many types of institutions and icons. It would be problematic to require consent for parody.

EU law views parody as an exception to exclusive rights thereby acknowledging the dependence of parody on pre-existing works and the collision with exclusive rights. In addition, the originality requirement has been refined in CJEU praxis. A national parody exception in Finnish legislation would thus follow the lines of EU law, while it would also be applicable to all forms of parody. The exception would not abolish the need to define and interpret. Moreover, parody would never be exhaustively captured legally. It’s alive!

The author defended her dissertation ”Law and Community in the New Media Landscape: Critical Perspectives on Audiovisual Sport Coverage in the European Union” at the University of Helsinki in 2014.

Transfer pricing of trademark in the international tax law

Katriina Pankakoski
postdoc researcher
University of Vaasa

In addition to her position of a postdoc researcher at the University of Vaasa, D.Sc. (B.A.) Katriina Pankakoski works as a tax specialist at Finnish Tax Administration. Pankakoski’s dissertation of January 2018 examines transfer pricing of trademarks in international tax law both theoretically and from a pragmatic point of view. Her thesis, ”Transfer Pricing of Trademark: Legal Restrictions Regarding the Arm´s Length Pricing of the Intra-Group Transactions” compares the content and scope of the arm´s length principle as set out in Section 31 of the Finnish Act on Assessment Procedure (AAP) and Article 9 of the OECD Model Tax Convention. In addition, the study compares the norms of Finnish and Chinese tax legislations.

The study identifies key factors that can be used to determine fiscally acceptable valuation outcome in the transfer pricing of trademark. Pricing between independent parties has been clarified from a fiscal point of view, taking into account the solutions offered by the economics. Thus, one possible pricing model for determining the transfer price of trademark has been determined.

Contracts, copyright and trade secrets

Ulla-Maija Mylly
senior lecturer in civil law
University of Turku

Ulla-Maija Mylly’s doctoral thesis (2014) discussed IP protection of computer program interfaces and interoperability. She analysed, among others, the extent to which TRIPS provisions and EU norms allow exceptions for interoperability and compulsory licensing of critical computer interfaces.

Her current research analyses international IP agreements and selected EU instruments and (non-)flexibility they produce for the EU and domestic of levels regulation of digital copyright and user rights, in particular. The research asks whether and how copyright concepts and principles (such as exhaustion, communication to the public related to linking, and private copying) could be interpreted and/or regulated in the digital environment so as to keep the copyright system legitimate and to facilitate innovation.

Her research also relates to the new EU Directive on trade secrets which under the Directive are not treated as property, nor as intellectual property. Many international IP treaties, however, cover trade secrets. Moreover, they may benefit from human rights (property) protection, like (other) intellectual property rights. Mylly analyses the role of specific fundamental rights, which have been included as exceptions to the Trade Secret Directive. On a more general level, the research endeavours to analyse the practical significance of the conceptual distinction between trade secrets and other IP.

Her research also addresses connecting concepts between trade secret and other IP law (mostly copyright) and how these are applied. In more practical terms, the research will look for example at fair access to information through reverse engineering practices and the role contracts under both trade secret and copyright laws. This issue is thus connected to the discourse on overlapping IP rights.

Decolonizing the EU’s IP Policy: proposal for a substantive equilibrium

Daniel Opoku Acquah
postdoc researcher
University of Turku

The title of this piece appeared as an original proposal in my doctoral dissertation (June 2017, University of Turku) entitled “Intellectual Property, Developing Countries and the Law and Policy of the European Union: Towards Postcolonial Control of Development”. The thesis provided the first integrative analysis of how the EU’s rulemaking on intellectual property (IP), both at home and abroad, impacts the ability of developing countries to utilize the flexibilities flowing from the TRIPS Agreement to promote public health and access to medicines. The EU’s IP policy was conceptualized as comprising two distinct but intertwined normative regimes – the internal and external.

The analysis showed that the EU’s IP policies have developed in manners that are tightly intertwined and detrimental to developing countries’ ability to promote public health and access to medicines. Supplemented by other theories, it problematized the issue in the context of postcolonial theory, which underscores the notion that the overly compliant attitude of most developing countries towards international intellectual property laws – despite their obvious effects on their economies – goes beyond contemporary political and economic circumstances. It can be attributed to the colonial roots and neo-colonial structures of this body of law, perpetrated through the EU’s internal and external policy. In this regard, the development of this body of law has been complicit in legitimizing the economic control of developing countries at the expense of their development.

To decolonize the European Union’s IP policy, I proposed the concept of substantive equilibrium specific to free trade agreements (FTA) and the EU’s internal norms. By substantive equilibrium, I mean moving the provisions on development (public health) and other references to the TRIPS flexibilities in the FTAs and relevant EU secondary norms from the Preamble or ‘general provisions’ to the substantive part of the treaty or legislation. This means elevating those provisions from an ‘optional’ status to ‘mandatory’ one. This should grant the provisions equal weight and effect in implementation (through the laws and regulations adopted at state level) and interpretation as the others in the main body of the treaty. This way, national courts, decision makers and arbitration panels in the case of dispute settlement (as provided for in most FTAs) would be forced to accord the same level of respect and gravity to which they apply the substantive provisions on IP to those on development and related provisions.

Patents, innovation and beyond

Dhanay Cadillo Chandler
Ph.D, Senior Research Fellow
University of Turku

Access to medicines is not a new topic. However, recent studies point at the need to re-think the patent system aiming to prompt further innovation. This may yield benefits for all stakeholders. Admittedly, the patent system is an important incentive as a reward mechanism, but it has proved not to be enough.

My current research has been conducted within the framework of the project Constitutional Hedges of Intellectual Property (CONST-IP), funded by the Academy of Finland. It has allowed me to look into emerging trends creating additional pillars for intellectual property protection. A key drug innovation does not necessarily enjoy the rewards offered by the patent system. In this context, attention has been given to the roles of governments, universities and science in promoting innovation concerning health. This is also connected to the use and benefits portrayed by the Bolar or research exemption and the way supplementary protection certificates (SPC) have been used until now.

The call for public consultation by the European Commission points at the re-calibration of the SPC system as currently envisaged. The CJEU decision in Incyte (C-492/16) on 20 December 2017 and the interpretation given by Swedish Courts in deciding corrections on the SPC´s term may indicate small and emerging discrepancies between the CJEU and the Swedish national courts. The result of the consultation remains to be seen.

It is important to consider SPC´s within the context of pharmaceutical innovation as these do not only extend the exclusivity in the market, but also point towards the trend in creating exclusivity regimes in addition to the patent system to reward innovation. My research is focusing to two aspects related to SPC´s and data exclusivity: firstly, the plausible overlap between SPC’s and the patent system and, secondly, the need to find a guide for identifying the points of public interest within the emerging regime protection of data exclusivity. I am also preparing publications on the intersection of intellectual property rights and, for instance, corporate social responsibility, the role of sustainable development goals (SDG), or the ongoing debate on access and benefit sharing mechanism (ABS mechanism) within the context of access to genetic resources associated to traditional knowledge.

The author defended her doctoral thesis at Hanken in 2014: ”The Role of Patents in the Latin American Development: ’Models of Protection’ of Pharmaceutical Patents and Access to Medicines in Brazil, Chile and Venezuela”.

Trademark protection in Vietnam

Ho Bich Hang Nguyen
postdoc researcher
University of Eastern Finland

Ho Bich Hang Nguyen joined UEF Law School in 2018. She holds concurrent positions as lecturer of law at Hochiminh City University of Law and as an Associate at Russin & Vechi International Legal Counsellors. Dr. Nguyen’s research focuses on intellectual property protection in Vietnam with a focus on large informal markets in developing economies.

The Vietnamese economy relies on export of high quality agricultural products to neighbouring countries. Therefore, Nguyen focuses on the use of collective marks, certification marks and geographical indications to protect wellknown trademarks and agricultural products. Yet, international intellectual property protection schemes are under-utilized.