Oxford Journal of Legal Studies, Vol. 34, No. 1 (2014), pp.

181200
doi:10.1093/ojls/gqt029
Published Advance Access October 21, 2013

Pluralism, Principles and Proportionality

in Intellectual Property
Justine Pila*

Keywords: Intellectual property, justifications, pluralism, EU law, Europe,

principles, copyright, patents

1. Introduction
Over its 600-year history, intellectual property (IP) has been dogged by
persistent disagreement over its normative foundations, and whether they
justify the various IP regimes then extant.1 Particularly heated have been the
debates over the proprietary nature of IP rights, due to the perceived
implications of a rights formal characterization as property for its duration,

A review of RP Merges, Justifying Intellectual Property (Harvard University Press 2011) (JIP).
* St Catherines College, Faculty of Law, and the Institute of European and Comparative Law at the
University of Oxford. Email: justine.pila@law.ox.ac.uk. I am grateful to Julie Dickson for her valuable editorial
comments on this article.
1
For example, 400 years after the first patent legislation was introduced in Venice, Switzerland remained
steadfast in its refusal to establish a patent system on the basis of the pernicious and indefensible principle of
patent protection. F Machlup, An Economic Review of the Patent System: Study of the Subcommittee on Patents,
Trademarks, and Copyrights of the Committee on the Judiciary (US Govt Printing Office 1958) 4.

The Author 2013. Published by Oxford University Press. All rights reserved. For permissions,
please e-mail: journals.permissions@oup.com

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AbstractThis 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 Mergess 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 Mergess 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 IPs midlevel principles. Through this
critique the article draws attention to the utilitarian bias of Mergess model; a bias
which undermines its pluralistic claims, in part by undermining Mergess 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 Mergess book
undertakes.

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a commitment to individual ownership as a primary right, respect for third-party

interests that conflict with this right, and, from the philosophy of John Rawls, an
acceptance of redistributive policies intended to remedy the structural hardships
caused by individual property rights.4

Put differently, it is a model of IP as a means of protecting personal

but unselfish5 property rights, justified not by their alleged benefit to the
community, but by arguments from morality and natural law, including
particularly Kantian theories of freedom and autonomy.
That the justification for IP remains in contention six centuries after the first
IP legislation suggests a certain disconnect between its roots and day-to-day
operation. And indeed, central to Mergess account is his claim that
foundational theories of IP have limited practical significance; that there are
many plausible arguments for IP, and that our choice between them is of little
operational importance.6 The reason is his belief that the application and
development of IP systems depend not on which theory we support, but on
which midlevel principles we prioritize.7 Hence the paradox of his book,
which offers both a justification for IP, and a justification for not worrying too
much about trying to justify IP, and an argument for paying greater attention
2
In the oft-cited words of Fritz Machlup (ibid 80), [i]f national patent laws did not exist, it would be difficult
to make a conclusive case for introducing them; but the fact that they do exist shifts the burden of proof and it is
equally difficult to make a really conclusive case for abolishing them. See JIP 6.
3
JIP ix, 6, 12.
4
ibid 13.
5
ibid.
6
See ibid 911.
7
See ibid 9.

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enforceability and legal status, and over the capacity of IP systems to

accommodate new technologies, such as film, the internet and biotechnology.
A common starting point for these debates has been the intangible nature of
the various subject matter that IP rights protect. In addition to making
conventional arguments for the existence of real and personal property
inapplicable, the non-rivalrous and non-depletable nature of works, inventions
and other such subject matter support their perception as public goods
inappropriate for individual ownership. In so doing these features of IP subject
matter contribute to another widely held belief within academic circles: that IP
exists for essentially historical and pragmatic reasons, and that while our
investment in it is sufficient to make its abolition infeasible, it has no positive
justification as such.2
It is against this background that Justifying Intellectual Property (JIP) has been
written.3 In this book, Robert Merges responds to his disillusionment regarding
the empirical claims of utilitarian arguments for intellectual property by
searching for an alternative model capable of justifying the existence of its
various regimes. The result is a liberal, pluralistic account of IP, built on

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Pluralism, Principles and Proportionality in Intellectual Property 183

2. Theories and Principles of IP and Their Practical Significance

The idea that intellectual property systems exist for essentially historical and
pragmatic reasons alludes to the value of history in understanding the various
IP regimes that exist, including the general forms that they take.8 Broadly
speaking, and focusing on its two paradigm systems of patent and copyright
law, the historical origins of IP lie in two philosophical traditions aligned with
the civil and common law, respectively. While it has become common to
downplay the differences between these traditions with a view to emphasizing
the nuances of each and the similarities between the civil and common law
more generally, they account for important aspects of the development of
European and other IP regimes as well as the forms which those regimes take.9
8
On the historical origins of copyright and patents particularly see eg, and from a vast literature, A Birrell,
Seven Lectures on the Law and History of Copyright in Books (Cassell 1899); M Rose, Authors and Owners: The
Invention of Copyright (Harvard University Press 1993); C Hesse, The Rise of Intellectual Property, 700
B.C. A.D. 2000: An Idea in the Balance (2002) 131 Daedalus 26; Machlup (n 1).
9
See eg JIP 156 (describing the attribution of different IP traditions to a civil / common law divide as an old
convention which has a tendency to be wildly overblown, and then noting that the dignity principle is a
particular feature of European copyright). cf also JC Ginsburg, A Tale of Two Copyrights: Literary Property in

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instead to the four principles which he identifies as having the greatest

operational significance: dignity, efficiency, non-removal from the public
domain and, above all, proportionality.
In this article I respond to Mergess expansive and thought-provoking book
by offering a European perspective on his thesis. My suggestion is that
European jurisprudence offers broad support for his pluralistic, principlesbased model of IP. On the other hand, it also challenges certain aspects of
Mergess analysis, such as his one size fits all foundational theory, his account
of key rules and practices, and his choice and conception of midlevel
principles. In so doing it draws attention to the utilitarian bias of his
operational model; a bias which undermines his models pluralistic claims, in
part by undermining his own deontological argument for IP. The result is an
approach that unintentionally underlines 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 undertakes.
This response is presented in three parts. The first introduces Mergess
justification for IP and his pluralistic account of its day-to-day operation with
reference to IP theories generally, other pluralistic legal models, and patterns of
judicial reasoning in the patent and copyright fields. The second explores the
details of his operational model of IP with assistance from European copyright
and patent law, highlighting certain problems with his choice and conception of
IP principles and the rules and practices from which they derive. And the third
returns to the question running through Mergess book of what it means to
take certain values, such as autonomy and dignity, seriously in IP.

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Revolutionary France and America (1990) 64 Tulane L Rev 991 with JC Ginsburg, European Copyright Code
Back to First Principles (with some additional detail) (2011) Auteurs et Medias <http://ssrn.com/
abstract=1747148> accessed 13 August 2013.
10
G Davies, Copyright and The Public Interest (Max Planck Institute for Foreign and International Patent,
Copyright and Competition Law 1994) 79 (quoting from Archives Parlementaires de 1787 a` 1860, Receuil complet
des debats legislatifs et politiques des Chambres francaises (vol xxii, Paris 1887) 210.
11
On IP rights as promoting human flourishing see JIP 38, 105. A further argument from harm and unjust
enrichment is that not recognizing such rights would cause harm to authors or enable third parties to enrich
themselves unjustifiably at an authors expense. Merges also supports this argument as linked to Kant; see JIP 89.
12
The United States Constitution, art 1, s 8.

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The civil law tradition of IP is perhaps best captured by the statement of Le

Chapelier, when presenting the French Playwrights Decree in 1791, that [t]he
most sacred, the most legitimate, the most unassailable, and, I may say, the
most personal of all properties, is the work which is the fruit of a writers
thoughts.10 Implicit in this statement is that the law recognizes property rights
in the products of authorial (and other forms of intellectual) labour in the
belief that the nature or value of such labour or of the products themselves
merits such recognition, and/or that such recognition is necessary or desirable
either to enable authors to flourish as autonomous human beings, or to protect
their rights in respect of their personhood or intellectual labour.11 Each of
these arguments is a matter of considerable controversy, as is its focus on the
rights and interests of individual creators. They are also the departure point for
the second tradition of IP, epitomized by the United States (US) copyright
and patent clause, which empowers Congress [t]o promote the Progress of
Science and useful Arts, by securing for limited Times to Authors and
Inventors the exclusive Right to their respective Writings and Discoveries.12
Implicit in this clause is that the justification for granting IP rights lies not in
moral or natural law arguments, but in a policy commitment to encouraging
the production and distribution of intellectual artefacts through the conferral of
property. Such conferral, it is said, benefits the public economically by
resolving the market failure which the intangibility of those artefacts creates, as
well as socially by supporting a robust public domain of expressive, informational and other intellectual (including technical) subject matter. For example,
and speaking again of copyright and patents, they create a false scarcity with
respect to works and inventions by excluding others from their use, thereby
enabling the right holder to preserve the possibility of exploiting them
commercially in the hope of recovering the costs of their creation and
dissemination along with sufficient profit to undertake further such activities.
Thus, by granting IP rights in the medium term, the state secures the
unlimited availability of IP-protected subject matter in the long term, and this
for the good of society.
As with deontological arguments for IP, the premise of utilitarian theories
has been widely critiqued. That authors and inventors have no deeper claim
than positive law to exclude others from the unauthorized use of their

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Pluralism, Principles and Proportionality in Intellectual Property 185

13

On talk of IP rights as rights see JIP 3.

For critical perspectives on these assumptions see eg, and also from a vast literature, L Lacey, Of Bread
and Roses and Copyright [1989] Duke LJ 1532; S Breyer, The Uneasy Case for Copyright: A Study of
Copyright in Books, Photocopies, and Computer Programs (1970) 84 Harvard L Rev 281; E Hettinger,
Justifying Intellectual Property (1989) 18 P&PA 31.
15
JIP 3 (emphasis in original).
16
See ibid 6, 1617.
17
See ibid 16.
18
See eg ibid 1011 (I do not want you to think that [my foundational shift from utilitarian to deontological
theory] undermines my prior work or my commitment to analyzing detailed doctrines and rules, and the
institutions that surround them, from the perspective of efficiency.)
19
See ibid 45 (emphasis in original).
20
ibid 1213.
21
ibid 15.
22
ibid 19.
23
ibid 1819.
24
See ibid 302ff.
14

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intellectual creations seems counter-intuitive in an age in which they are held in

exulted status and rights-talk dominates many areas of private law.13 Equally
contentious are the empirical assumptions of utilitarianism, including: that
authors and inventors are motivated by economic considerations more than
communicative, reputational or truth-seeking ones; that property rights are
required and able to cure the market failure which exists in respect of IP
subject matter; and that market-based systems of incentivizing creation and
dissemination through the grant of exclusionary rights benefit the public more
than they harm it.14 And it is Mergess doubt regarding those assumptions
and his belief in particular that the data support a fairly solid case in favor of
IP protectionbut not a lock-solid, airtight case15that leads him to effect a
philosophical shift from social utility to fundamental rights in JIP.16 That this
shift comes from such a prominent and well-regarded academic working within
the utilitarian and law-and-economics schools of US IP scholarship adds to the
interest of his book,17 in addition to explaining certain aspects of the approach
it advocates.18
Two ideas motivate Mergess foundational theory. The first is that IP is
really property,19 and the second is that, as a result of this, the modern
literature on property has relevance for it, along with the works of Locke, Kant
and Rawls on which that literature builds.20 Starting with Kant, Merges
describes individual autonomy and freedom as the basic foundations of IP,21
and as requiring legal rules of (intellectual) property that maximize the
freedom of all members of civil society.22 The result is a view of IP systems as
respect[ing] individual property claims at a deep level and . . . simultaneously
car[ing] about the practical impact of [those] claims on the lives and fortunes
of others.23 Put differently, and in the language favoured by contemporary IP
scholarship, it is a view of IP as balancing individuals property interests on
the one hand with third party and societal interests on the other.24 Hence the
question of how that balance is appropriately effected, including what it
requires. On these issues, Merges tells us, Kants work is silent, prompting him

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Most choose to channel all their discussion of the proper balance between individual
and society into the arena of IP law itself, as though each doctrine and each
controversy must be engineered so as to get the balance right. The more systemic
view supplied by Rawlss way of thinking can get us out of the unproductive and often
divisive trap of thinking that each individual rule of IP must balance out perfectly.
Rawlss approach frees us from this excessively internalist perspective and ought to be
embraced for that reason alone.29

As can be seen from this paragraph, a central aspect of Mergess

foundational theory is his view that IP systems can and ought to be trusted
as effecting an appropriate balance overall between competing individual and
societal interests, and that to subject each doctrine and the resolution of each
controversy to detailed scrutiny with a view to ensuring that they individually
effect such a balance would reflect a lack of perspective by ignoring the wood
of IP for its trees. This argument has particular importance given the number
of open-textured concepts in IP. For example, copyright in the UK subsists in
original literary, dramatic, musical and artistic works, and is infringed by the
unauthorized copying or other reserved use of a substantial part of such works.
It is also subject to various defences, including where the unauthorized use of
the work is a fair dealing with it for the purpose of criticism, review, reporting
current events, non-commercial research or private study.30 In Mergess view,
such open-texturedness in the core concepts of IP is essential to enabling the
courts to fine-tune the system in order to achieve the proper balance between
individual and society referred to above, and their interpretation and
application of those concepts ought (therefore) not to be second guessed.31
25

See ibid 19.

See ibid 20, 103ff, 117.
ibid 124, 126.
28
ibid 20.
29
ibid.
30
See Copyright, Designs and Patents Act 1988, ss 29, 30.
31
According to Merges, one of the virtues of proportionality is that it enables this balance to be achieved
through the application of rules that disguise the balancing exercise. See JIP 190 (discussing proportionality).
26
27

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to look to Lockes theory of property, including Lockes provisos and other

limitations on appropriation claims.25 This leads him to a conception of
individual property coupled with state-backed limitations and taxation, which
also represents, he says, a basic liberty in a fair society.26 Moving thus from
Locke to Rawls, Merges argues that the institutional protection of IP rights is
justified by the legitimate desert claim which creators have on the basis of their
dedicated development and application of talent, and by the recognized (albeit
lesser) interest of society in that same talent and effort.27 Hence Mergess view
of IP regimes as having a solid justificatory basis in the deontological theories
not only of Kant and Locke, but also of Rawls; a view which he describes as
hardly new but often overlooked by IP theorists, and as having important
implications for the way we approach those regimes.28

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32

This is apparent in his discussion of essential medicines, considered below.

D Resnik, A Pluralistic Account of Intellectual Property (2003) 46 J Business Ethics 319.
The United States Constitution (n 12).
35
Resnik (n 33) 331. cf JIP 47.
36
See RM Dworkin, Taking Rights Seriously (Harvard University Press 1978) 22ff; also J Raz, Legal
Principles and the Limits of Law (1972) 81 Yale LJ 823; M Bayles, Mid-Level Principles and Justification in
33
34

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While attributed to the systemic perspective which his argument for IP entails,
this view also reinforces his account of its day-to-day operation by relieving
specific IP rules and practices of the burden of protecting third party rights and
interests in individual cases.32
JIP is not the first work to offer a pluralistic account of IP built around
midlevel principles. For example, in his 2003 essay entitled A Pluralistic
Account of Intellectual Property,33 David Resnik analyzed six approaches to
IP based on Lockean property theory, US-style utilitarianism, Hegels theories
of freedom, self-expression and property, privacy and egalitarianism, including
Rawlss pluralistic conception of justice. The conclusion he reached was that
none of these approaches accounts adequately for the existence of IP, with each
instead emphasizing a different value or goal which IP supports, including
autonomy (or freedom), privacy, utility and justice. He argued that an
alternative understanding of IP is therefore required, and expressed his
preference in that regard for a pluralistic one, explained with reference to the
inadequacy of the other approaches in isolation, the diversity among the
different IP regimes, and the pluralistic nature of modern democratic societies,
all of which he described as militating against a one size fits all approach to IP
(or any other form of property).
Resniks description of the practical implications of his pluralistic model
elucidates Mergess model by highlighting some important similarities and
differences between the two. According to Resnik, when resolving IP disputes a
court ought to decide which of the values having primacy in IP are at stake, and
then weigh and balance those values to decide which ought to have priority in
the particular case. While all IP values are a priori equal in Resniks account, the
extent of their engagement in a case depends in part on the IP right involved and
its social and legal function. For example, because (US) patent law exists to
promote the progress of science and the useful arts,34 utility ought to have a
higher priority in patent disputes than privacy and autonomy. The reason is
social pluralism, which Resnik views as requiring a commitment to a certain legal
pluralism as well, not only in the sense of tolerating different individual beliefs as
to the nature of or reason for law, but also in the sense of allowing that the
different aspects of a legal institution such as IP be governed by different basic
values according to its different legal and social function[s].35 Hence Resniks
choice of primary IP values, which reflect in combination his view of the
different legal and social functions of the main IP regimes.
It is clear from Resniks essay that his values share the midlevelness of
Mergess principles, and exist as principles in the Dworkinian sense:36

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JR Pennock and JW Chapman (eds), Justifications: Nomos XXVIII (New York University Press 1986) 49;
K Henley, Abstract Principles, Mid-Level Principles, and the Rule of Law (1993) 12 L & Phil 121; L Alexander
and K Kress, Against Legal Principles (199697) 82 Iowa L Rev 739.
37
Resnik (n 33) 331.
38
RP Merges, The Relationship Between Foundations and Principles in IP Law UC Berkeley Public Law
Research Paper No 2130199 (July 2012) 14 <http://ssrn.com/abstract=2130199> accessed 13 August 2013. See
also JIP 19 (It would take some real work to sort out, in a detailed way, how to reconcile these competing
demands to arrive at a coherent set of principles for a property regime.)
39
See Merges (n 38) 14 ([T]here are not that many ties to break. There is no need to resort to lower levels of
analysis in many cases.)
40
Association for Molecular Pathology v Myriad Genetics Inc 569 US 12398, 132 SCt 1794 (2013). For a
discussion see J Pila, Isolated Human Genes: The patent equivalent of a non-copyrightable sound recording
(2013) LQR forthcoming; preprint available at http://users.ox.ac.uk/~lawf0169/pdfs/lqr_isolatedhumangenes.pdf.
41
[2011] UKSC 39, [2012] 1 AC 208.

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occupying an intermediary space between moral values and legal rules; deriving
their force from both their moral content and their fit with existing institutional
facts; and existing to be optimized in individual cases by a process of weighing
and balancing.37 While not expressed identically, Mergess approach seems
very close to this, the main differences being: his choice of midlevel principles
(dignity, efficiency, non-removal and proportionality instead of autonomy,
privacy, utility and justice); his one size fits all theory of IP; and his eschewal
of a method of decision-making which involves identifying the function of the
IP regime involved and/or weighing and balancing the principles at stake
according to the facts of the case. Indeed, weighing and balancing principles in
individual cases is all but obviated by Mergess systemic account of IP, and
resort to the function of IP is supported only as part of an enquiry into the
purpose of IP in those exceptional cases in which a tiebreaker between
principles subsisting in equipoise is required.38
An initial question raised by this discussion is whether these arguments
regarding the theory and principles of IP are borne out by current legal
practice. For example, when interpreting and applying IP legislation, do the
courts routinely consider the purpose of IP, including the moral rights of
authors and inventors and/or the value to the public of having access to works
and inventions? Contrary to Mergess suggestion the answer seems clearly to be
yes, including in the USA.39 For example, in June 2013 the US Supreme
Court held that the patentability of isolated genes could not be determined
without regard to the purpose of the US patent system.40 In its opinion, as that
purpose is to promote creation, and the act of isolating a gene from its natural
environment does not involve the creation of anything, isolated genes are not
patentable under US law, contrary to the position in Europe and elsewhere.
Such policy-based reasoning in IP is common, including in the UK, as two
further recent examples serve to demonstrate.
The first is Lucasfilm Ltd v Ainsworth,41 involving a claim of artistic copyright
in the storm trooper helmet from Star Wars as a sculpture within the meaning
of the Copyright, Designs and Patents Act 1988. In considering the claim, the

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Pluralism, Principles and Proportionality in Intellectual Property 189

42
43
44
45
46

ibid [14].
ibid [48].
ibid.
[2011] UKSC 51, [2012] 1 All ER 1154.
ibid [99].

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Court noted the difficulty of understanding the legislative provisions in

question without reference to their original purpose and historical development. According to its analysis, that purpose and development were very
different from those of literary copyright, which was introduced with the
utilitarian aim of protecting the commercial interests of stationers (the early
publishers) and booksellers, and [controlling] unlicensed (and possibly
subversive) publications, rather than the vindication of the legal and moral
rights of authors.42 In contrast to this, the recognition of artistic copyright in
three-dimensional objects was, the Supreme Court held, part of a scheme of
graduated protection aimed at distinguishing artistic from functional objects. It
followed that the category of artistic copyright in sculptures was to be
interpreted narrowlyquite unlike the protection afforded by the indiscriminate protection of literary copyright43so as to be confined to truly artistic
works, viz, works of an artistic nature created by a person meriting the
description author, as distinct from mere works with eye appeal .44 On the
basis of this definition, the helmet was held not to be a sculpture in which
artistic copyright subsisted.
So too in the patent case of Human Genome Sciences Inc v Eli Lilly,45 the
legislative purpose of IP protection helped to determine the legal issue in
dispute. That issue was the meaning of the requirement that an invention be
susceptible of industrial application in order to be patentable. In deciding it,
Lord Neuberger invoked his understanding of the purpose of the patent
system as being to provide a temporary monopoly as an incentive to
innovation, while at the same time facilitating the early dissemination of any
such innovation through an early application for a patent, and its subsequent
protection.46 In his opinion, this purpose justified relaxing the industrial
applicability requirement for pharmaceutical inventions. The reason was the
particular importance of patents in the pharmaceutical field as a means of
securing funding for pharmaceutical research, and the public interest in
facilitating such research and (therefore) in facilitating the grant of patents to
assist in securing funding for it.
Four inferences of current importance may be drawn from these cases, each
of which challenges JIP while supporting Resniks approach. One is that the
principled application and development of IP depends on agreement over its
normative basis. Another is that one cannot understand its normative basis
without knowing something of its historical origins and function. A third is that
the various regimes that fall under the umbrella of IP do not have a uniform
history or foundation; and that even when restrictively defined to cover patents

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47
cf Myriad (n 40) 2116 (excerpted at n 84). The theory of patents supported in HGS is effectively that
argued for in EW Kitch, The Nature and Function of the Patent System (1977) 20 J L Econ 26590, namely,
that patents are prospects for developing technological opportunities. L Hoffmann, unpublished FHS patent law
seminars delivered at the University of Oxford (Hilary Term 2012).
48
Directive 2001/29/EC of the European Parliament and of the Council of 22 May 2001 on the
harmonization of certain aspects of copyright and related rights in the information society [2001] OJ L 167/10
(Information Society Directive) art 5(1).
49
[2013] UKSC 18, [2013] 2 All ER 852.
50
ibid [8].
51
ibid.
52
See ibid 83 (suggesting that a Kantian perspective of this issue would result in IP rights trumping the
interests of would-be licensees so as to require online permissions).

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and copyright, IP is far from a monolithic legal entity. And a fourth (related to
this third inference) is that the purpose of IP regimes is understood differently
by different courts in different jurisdictions, with concrete implications for their
scope and application. Thus, and as reflected in the reasoning in AMP and
HGS above, whereas the US Supreme Court regards the purpose of the US
patent system as being to promote creation, the UK Supreme Court regards it
as being to promote innovation, including by ensuring that researchers have the
monopoly rights they need to attract the external funding required to pursue
their research.47 The result is very different implications for the scope of IP
rights, as the outcomes in AMP and HGS themselves demonstrate.
In sum, courts commonly invoke the historical and theoretical roots of IP
to assist in the interpretation and application of modern copyright and patent
legislation. In addition, it seems reasonable to expect that the day-to-day
importance of those roots will increase in the UK and other jurisdictions as a
result of the impact of European and international harmonization in promoting
teleological methods of interpretation and challenging UK understandings of
IP law and policy. On the other hand, other recent UK decisions point to a
further result of that impact in the form of an increased judicial reliance on
principles rather than foundational theory when interpreting and applying IP
legislation. An example may again be offered from recent UK Supreme Court
opinions, this time involving the scope of the EU exemption from copyright
infringement covering temporary acts of reproduction in the digital environment.48 According to the Court in Public Relations Consultants Association Ltd
(PRC) v The Newspaper Licensing Agency Ltd (NLA),49 the lower courts view
of copyright as prohibiting any consumption of [a] work, including any
unauthorized copying of a webpage made on a computer screen in the course
of internet browsing, was not justified by the policy of the EU to maintain a
high level of protection of intellectual property as had been argued.50 The
reason, it held, was the need to read that policy in light of the EUs further
commitment to allow[ing] the ordinary use of the internet.51 Thus, it was the
principles of ensuring a high level of IP protection and not impeding the
ordinary use of the internet that determined Lord Sumptions opinion in PRC
v NLA, rather than the reasons (past or present) for such protection per se.
While this outcome seems contrary to that advocated in JIP,52 the reasoning

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Pluralism, Principles and Proportionality in Intellectual Property 191

53
See JIP xi, 10, 13941. In Mergess account this results in a conception of midlevel principles as
philosophically neutral, in the sense of being simultaneously explicable with reference to utilitarian and nonutilitarian arguments for IP. See n 83.
54
See eg N MacCormick, Beyond the Sovereign State (1993) 56 MLR 1. See further G Itzcovich, Legal
Order, Legal Pluralism, Fundamental Principles. Europe and Its Law in Three Concepts (2012) 18 ELJ 358.
55
cf JIP 159 (describing proportionality as the most undertheorized of the four midlevel principles, and as
rarely identified as a stand-alone principle).
56
See ibid 7, 159.
57
See The Treaty on European Union [2010] OJ C83/13, art 5(4); T Harbo, The Function of the
Proportionality Principle in EU Law (2010) 16 ELJ 158; A Ohly and J Pila (eds), The Europeanization of
Intellectual Property Law: Towards A European Legal Methodology (OUP 2013, forthcoming) chs 1, 8, 9, 13.
58
See eg Campbell v MGN Ltd [2004] UKHL 22, [2004] 2 AC 457; Re S [2004] UKHL 47, [2005] 1 AC
593 [17] (Lord Steyn) (The interplay between articles 8 and 10 [ECHR] has been illuminated by the opinions in
the House of Lords in Campbell v MGN Ltd . . . . For present purposes the decision of the House on the facts of
Campbell and the differences between the majority and the minority are not material. What does, however,
emerge clearly from the opinions are four propositions. First, neither article has as such precedence over the
other. Secondly, where the values under the two articles are in conflict, an intense focus on the comparative
importance of the specific rights being claimed in the individual case is necessary. Thirdly, the justifications for

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deployed in reaching it supports the turn from foundational theory to

principles that it is the books main purpose to support.
That one should see evidence of that turn in the UKs Europeanised IP
regime is, it is submitted, unsurprising, given the importance of principles in
European law more generally. In addition, and further supporting Mergess
(and Resniks) analysis, that importance may be attributed to the function of
principles in pluralistic legal models as a means by which foundational (social
and legal) differences can be transcended via the pursuit of common midlevel
objectives.53 For example, in the European legal order it has long been
predicted that principles will displace the autonomous orders of EU Member
States and the conflicting traditions which underpin them in support of a form
of harmonization that accommodates legal and social diversity.54 The prediction underlines the commonalities between the IP and EU legal fields on
account of the diverse traditions and philosophies on which each is built, and
thereby explains the support which Mergess pluralistic approach to IP receives
from European jurisprudence. Moreover, the analogy between Mergess and
European principles-based legal models is underlined by the central role of
proportionality in each, reflected also in Resniks approach.55 In Mergess
model that role is described as being two-fold. First, proportionality is said to
explain and justify the legal restrictions on the scope and enforcement of IP
rights; and second, as the midlevel principle, it is said to explain and justify the
function of principles in IP generally.56 Similarly in Europe, proportionality is
among the most important principles of the EU legal order, and serves two
central functions to that end.57 First, it represents a constraint on the exercise
of EU legal competences and a means by which the primary values of the
European community are expressed and reconciled. And second, it supports a
model of law built around those values, each of which has a priori equality and
exists to be maximized via a process of weighing and balancing on the facts of
individual cases.58 At first glance these roles and conceptions appear to differ.
For example, in European law (and consistent again with Resniks approach)

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3. Pluralism versus Utilitarianism in Mergess Principles

The European Union has been active in the field of IP since the 1950s, when it
began work on the creation of unitary patent and trademark systems for the
then members of the European Economic Community.61 Its first IP legislation
was introduced in 1980, and followed in 1991 with the first EU copyright
Directive. Seven years (and several further copyright directives) later came the
first EU legislation in patent law, covering the field of biotechnological
inventions,62 followed in 2001 by a near-complete code for copyright in the
form of the Information Society Directive.63
Both the Information Society and Biotech Directives have had an enormous
impact on UK law. The Information Society Directive, being the more
extensive instrument, requires that EU Member States grant authors certain

interfering with or restricting each right must be taken into account. Finally, the proportionality test must be
applied to each. For convenience I will call this the ultimate balancing test.)
59
JIP 162.
60
See ibid 181.
61
See generally J Pila, Intellectual Property as a Case Study in Europeanization: Methodological Themes and
Context in Ohly and Pila (n 57) 1.
62
Directive 98/44/EC on the legal protection of biotechnological inventions [1998] OJ L213/1321 (Biotech
Directive).
63
Information Society Directive (n 48).

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proportionality is a methodological tool by which substantive principles such

as dignity and efficiency are optimized in individual cases via a process of
weighing and balancing, whereas in Mergess account it is a substantive
principle, equivalent to dignity and efficiency. On closer inspection, however,
this difference dissipates. The reason is Mergess definition of proportionality
as requiring that an IP right not confer on its holder leverage or power that is
grossly disproportionate to what is deserved in the situation,59 where what is
deserved in the situation depends on the social usefulness and value of the
subject matter in which the right subsists.60 Thus defined, proportionality in
Mergess account supports a conception of IP rights as a fair (not grossly
disproportionate) market-based reward for an authors or inventors provision
of an object having an identifiable social use and value. In this way it expresses
certain values and ensures that they are reflected in the detailed rules and
practices of IP. Whether those values are consistent with his foundational
theory is another and more difficult question returned to below.
In sum, and like that of Resnik, Mergess model of IP maps closely to
European legal models, making it unsurprising to find evidence of the turn to
principles which he supports in the UKs Europeanized IP system, and natural
to look to that system as a further testing ground for his account of the day-today operation of IP more generally.

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64

See ibid arts 24 (rights), 5 (permissible defences).

See eg Case C5/08 Infopaq International A/S v Danske Dagblades Forening [2009] ECR I-6569; Case C
145/10 Painer v Standard VerlagsGmbH [2012] ECDR 6; Joined Cases C403/08 and C429/08 Football
Association Premier League Ltd v QC Leisure and Karen Murphy v MPS Ltd [2012] 1 CMLR 29; Case C604/10
Football Dataco Ltd v Yahoo! Ltd [2012] 2 CMLR 24.
66
See eg Infopaq (ibid).
67
See Case C128/11 UsedSoft GmbH v Oracle International Corp [2013] 3 CMLR 44.
68
See eg Case C275/06 Productores de Musica de Espana (Promusicae) v Telefonica de Espana SAU [2008]
ECR I271.
69
Charter of Fundamental Rights of the European Union [2010] OJ C83/02.
70
See n 5 and associated text.
65

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rights in respect of their works subject to certain permissible defences.64 Since

its introduction, the Court of Justice of the EU (CJEU) has been busy defining
who is an author, what is a work, and what acts copyright owners are entitled
to prevent. From its jurisprudence two main themes can be identified. The
first is that copyright exists to ensure a high level of protection for authors,
consistent with European traditions of authors rights and with the recognition
of copyright as a constitutionally protected species of property. Thus, the
CJEU has held that copyright subsists in and only in subject matter which
expresses an authors own intellectual creation (in the sense of resulting from
an authors free expression of his or her creative abilities and bearing his or her
personal mark), that it is limited in scope accordingly, and that its defences
must be interpreted restrictively as derogations from an authors primary
rights.65 And the second theme is that the high level of protection for authors
rights must accommodate certain third party rights and European public
interests, including fundamental rights, the four freedoms of the single market,
and the need to promote technological development. Thus, the CJEU has
recognized legal certainty as a further reason for interpreting copyright
defences restrictively,66 the EU exhaustion doctrine as applying to all transfers
of ownership for payment, including transfers of ownership effected by the
provision of a digital copy of a work,67 and mechanisms for enforcing copyright
on the internet as needing to take account of users privacy, freedom of
expression and data protection rights, in addition to service providers freedom
to conduct a business68each of which is guaranteed, alongside the protection
of IP, by the EU Charter on Fundamental Rights.69
It seems clear from these themes that the European copyright system is
premised on a personal but unselfish rights model of IP similar to that which
Merges advocates.70 According to that model in its European guise, the aim of
copyright is to ensure a high level of protection for authors through the grant of
morally justified property rights, which also take account of third party rights
and public interests. On the other hand, and following from this, while EU law
also prioritizes certain operational principles in copyright, they are somewhat
different from the midlevel principles that Merges identifies. One reason is
their derivation from the EU Treaties and Charter rather than the detailed

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71

Treaty on the Functioning of the European Union [2010] OJ C83/01.

See Information Society Directive (n 48).
See n 5 and associated text.
74
Biotech Directive (n 62) especially Recitals (1) to (11).
75
ibid Recital (16) (Whereas patent law must be applied so as to respect the fundamental principles
safeguarding the dignity and integrity of the person;).
76
See ibid Recitals (13), (14), (16), (26), (34).
77
See ibid Recitals (16), (26), (38).
72
73

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rules and practices of copyright. Thus, in the European context, the operative
principles of copyright restate the established basic values of the European
community, thereby ensuring that the specific rules and practices of the regime
are tethered to those values. Hence the primacy among them of the free
movement of goods, services, people and capital throughout EU Member
States (guaranteed by the TFEU71 and expressed, inter alia, in Recitals (1) to
(4) of the Information Society Directive), the protection of property and
dignity (guaranteed by Articles 17(2), 1 and 13 of the EU Charter and
expressed, inter alia, in Recitals (3), (4), (9) and (11) of the Information
Society Directive), and the protection of freedom of expression and educational
values (guaranteed by Articles 11 and 14 of the EU Charter and expressed,
inter alia, in Recital (3), (14) and (34) of the Information Society Directive).72
The position is different with respect to the EU patent system. Still confined
to the field of biotechnology, that system is premised less on a personal but
unselfish rights model of IP73 than the utilitarian model reflected in the
decisions of the UK and US Supreme Courts above. According to that model
in its EU form (and consistent with the reasoning of HGS particularly), the
aim of the patent system is to promote European industry and the internal
market by ensuring sufficient harmonized legal protection to encourage
investment in biotech research and development74 while also respecting
national regulatory provisions regarding such research and development; the
public domain of (non-patentable) discoveries; and fundamental principles
safeguarding the dignity and integrity of the person,75 as well as values of
individual autonomy and the right to have an opportunity to consent to the use
of ones own biological materials.76 Thus, and as in European copyright, one
sees an emphasis on ensuring a high level of protection for inventors, albeit for
utilitarian rather than deontological reasons, and still subject to certain
Charter-derived third party rights and societal interests. Principal among those
rights are human dignity and the integrity of the person, which the Directive
recognizes as supporting the exclusion from patentability of a range of
biotechnological subject matter, in addition to informing basic principles of
patentability themselves.77
Among other things, this discussion draws attention to the way in which the
principles in Mergess account are derived. Rather than stemming from the

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78
See JIP 140 (Midlevel principles engage foundational values in a number of ways, but they do not depend
on any particular set of values for their validity. They spring from doctrine and detail, from the grain of actual
practice.)
79
See ibid 14243.
80
See ibid 155.
81
See ibid 15658.
82
See ibid 15051, ch 6. On the connection between proportionality and the requirement that patent claims
be commensurate with the specifications teaching see further J Pila, Chemical Products and Proportionate
Patents Before and After Generics v. Lundbeck (2009) 20 KLJ 489. On proportionality and patent scope more
generally see J Pila, Patent Eligibility and Scope Revisited in the Light of Schutz v Werit, European Law, and
Copyright Jurisprudence in RC Dreyfuss and JC Ginsburg (eds), Intellectual Property at the Edge (CUP 2013)
ch 18.
83
See JIP 1445 (principles are theoretical or policy-oriented; yet because they are not rooted in any specific
normative framework, they avoid what might well be a fruitless debate if conducted at that level.) See also ibid
68, 13031 (connecting efficiency and non-removal to utilitarian theories of IP, proportionality to Lockean,
utilitarian and Rawlsian theories, and dignity to non-utilitarian and continental European IP systems). Compare
the view of Resnik (n 33).
84
The point is alluded to by Merges himself; see JIP 39. See also Mayo Collaborative Services v Prometheus
Laboratories Inc 566 US 101150, 132 SCt 1289, 1293 (2012) (justifying the exclusion from US patent
protection of natural phenomena, mental processes and abstract intellectual concepts with reference to the
purpose of patent law in promoting innovation. According to the Court, monopolization of those [basic] tools
[of scientific and technological work] through the grant of patent might tend to impede innovation more than it
would tend to promote it.); Myriad (n 40) 2116 (As we have recognised before, patent protection strikes a
delicate balance between creating incentives that lead to creation, invention, and discovery and imped[ing]
the flow of information that might permit, indeed spur, invention.. . . We must apply this well-established
standard to determine whether Myriads patents [in respect of isolated human genes] claim any new and
useful . . . composition of matter ); but cf Myriad (n 40) 211617 (justifying the exclusion from US patent
protection of isolated human genes (as products of nature) with reference to the purpose of patent law in
promoting creation, and the consequential need for an act of creation to support a patent).

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basic values of a community or IP regime(s), the source of Mergess principles

is said to be the individual rules and practices of IP themselves.78 Those rules
and practices include: for non-removal, the exclusion of non-artefactual subject
matter (such as information and laws of nature) from copyright and patent
protection, and requirements of copyright and patent protection;79 for
efficiency, the patentability requirement for inventive step and the fair use
defence to copyright;80 for dignity, authors and inventors moral rights of
paternity and the fabric of all copyright systems;81 and for proportionality, the
fair use defence (again), and the rules limiting injunctive and compensatory
relief, preventing snippets of gene sequences from being patented, and
requiring that patent claims be commensurate with the specifications
teaching.82
Given a pluralistic theory of IP, these explanations seem surprising, and
normatively less neutral than Merges suggests.83 For example, it seems
counter-intuitive to attribute the exclusion from protection of non-artefactual
matter and snippets of gene sequences to a concern for the public domain and
proportionality rather than the nature of IP as a reward or incentive for
intellectual creationas they were indeed attributed in AMPunless one
supports an exclusively utilitarian understanding of the purpose of patents.84
And so too it seems counter-intuitive to attribute the fair use defence to
efficiency, and a desire to prevent irrational refusals by copyright owners to

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85
See eg JIP 155, 251 (describing Mergess enthusiasm for individual IP rights as putting him on the side
of those who would be cautious in finding a particular practice to be fair use, lest a rush to apply the fair use
label will stifle the formation of a market.)
86
This is consistent with Mergess further claim that [a]uthors gain nothing without a market: JIP 155; but
cf JIP 295 (the essence of property is the right to exclude (emphasis added)).
87
JIP 81; see also ibid xi, 40.
88
IP rights do not confer a right to use a particular subject matter, much less exploit it commercially. See eg
Biotech Directive (n 62) (14) (Whereas a patent for invention does not authorise the holder to implement that
invention, but merely entitles him to prohibit third parties from exploiting it for industrial and commercial
purposes). And so too normatively, the conception of property rights as rights to turn a profit has no clear basis
in accepted understandings of property.
89
On the utilitarian premise of market failure views of fair use see M Spence, Intellectual Property and the
Problem of Parody (1998) 114 LQR 594.
90
JIP 278.
91
This connection has been particularly influential in Indian patent law; for a discussion see J Pila, Some
Reflections on Method and Policy in the Crowded House of European Patent Law and their Implications for
India (2012) 24 NLSIR 54.

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license the use of their works (as Merges does85), rather than, for example, to
autonomy, and a desire to protect its instantiation in such third party rights
and interests as freedom of expression and educationunless one again
supports an exclusively utilitarian understanding of the purpose of copyright.
This is particularly given the widespread connection of the fair use defence to
such rights and interests, the centrality of autonomy to Mergess foundational
theory, the difficulty of squaring that theory with the view of fair use which
Merges advocates, and the law-and-economics premise of that view in a
conception of copyright as conferring a right to a certain market power with
respect to a work (rather than a right to exclude others from its use).86
Regarding the latter particularly, even if we accept Mergess claim that
autonomy requires a conception of IP rights as including a right to try to make
some money87a claim which seems doctrinally and normatively problematic88it does not follow that IP rights confer only such a right. To suggest
otherwise seems difficult to defend other than on an explicitly utilitarian
understanding of IP as existing to facilitate a market in IP rights and their
related subject matter for economic or other societal reasons.89
The same utilitarian bias underpins Mergess discussion of patent rights and
essential medicines. There he writes that as [t]he dignity interest of researchers
who develop the drug is not directly at issue, [and] nor is the nonremoval
principle, the issue of access to essential medicines is appropriately conceived
as one of efficiency and, to a lesser extent, proportionality.90 The result is a
discussion in which considerations of utility again eclipse the individual rights
and interests of third parties, notwithstanding the well-established link between
dignity and health care,91 and the centrality of dignity to both Mergess
foundational theory and operational model of IP. Thus, he writes, that the real
question is not whether human rights trump property rights to require access
to essential medicines, but what is the best way to maximize the number of
effective pharmaceutical products that are brought to bear on [human]

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4. Taking Autonomy and Dignity Seriously in IP

In UK and European copyright law, third party rights and societal interests are
mainly protected after the establishment of a valid IP interest, at the point of
deciding: (a) whether a competing interest is also engaged by the allegedly
infringing act, so as to enable a legislative or other copyright defence to be
raised; and (b) the implications of any such interest and defence for the
defendants liability and the claimants entitlement to relief. Thus, to identify
the reconciliation of competing rights and interests in copyright we need to
look beyond its general tests of subsistence and infringement to its statutory
and other defences and remedies. And of central importance in that regard are
the fair dealing defences, whichand as noted abovepermit dealings with a
work for the purpose of criticism or review, reporting current events, and noncommercial research or private study provided they are fair. Hence the role of
the courts in effecting the balance between IP owners and third party
fundamental rights in UK copyright via determinations of fairness.
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 owners market and
the extent of the works prior circulation to the public.95 Of primary
92
JIP 27879. 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.
93
Resnik (n 33) 332.
94
The United States Constitution (n 12).
95
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.

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diseases?92 The result is the same conclusion as that reached by Resnik. In

Resniks account, however, it is the product of a careful balancing of three
valuesutility, autonomy, and justicein light of the facts and circumstances
of the case,93 and a view of utility as having special weight on account of
the function of patent law in promot[ing] the progress of science and the
useful arts.94
In sum, the emphasis on market-based considerations of efficiency and
proportionality in Mergess model of IP enables utility to eclipse the values
which he professes to hold most dear in his foundational theory, including
those of autonomy and dignity, thereby undermining that theory and the
pluralistic claims of his model itself.
Two questions arise from this. The first is: what would an IP regime, which
did prioritize those values, look like? And the second is: to what, if any, extent,
can European law itself be said to support such a regime? In the final section of
this article these questions are considered with reference to the UKs
Europeanized fair dealing defence and exclusions from European patentability.

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96

ibid.
See Case C34/10 Brustle v Greenpeace eV [2012] CMLR 41.
See ibid.
99
See eg Football Association Premier League Ltd (n 65); Case C302/10 Infopaq International A/S v Danske
Dagblades Forening (CJEU, 17 January 2012).
97
98

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importance is whether the use of the work was for a commercial purpose or
competed with the copyright owners market. If it was or did it will be regarded
as presumptively unfair, and thus not capable of supporting a fair dealing
defence.96
This is broadly consistent with Mergess account of the USAs fair use
defence, as well as with the CJEUs 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.97 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.98 When considered alongside the treatment of the freedom of
expression and education-based defences of copyright, the inescapable implication 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).99 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 thataccording

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Pluralism, Principles and Proportionality in Intellectual Property 199

100
101
102
103

See
See
See
See

Pila, Patent Eligibility and Scope Revisited (n 82).

ibid; n 58.
C Sunstein, On the Expressive Function of Law (1996) 144 U Penn L Rev 2012.
Merges (n 38) 1ff.

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to European jurisprudence at leastthe additional requirement that the dealing

be fair is a requirement for proportionality.100 It then follows that the European
test of proportionality ought to apply. This gives rise to the question of what
that test requires.101 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 defendants
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.102 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 Mergess foundational theory of IP on
the one hand and his account of IP rules and principles on the other. In
addition, Mergess recent response to this criticism of his book with reference
to the different concerns of theory and principles, respectivelythe former
being with the whether or why of IP and the latter with its how103is
undermined by the effect of his account of IPs 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 UKs Europeanized system of copyright)
which purport to take individual rights and interests seriously but then fail

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properly to instantiate such rights and interests in the rules and practices of
their IP regimes.

5. Conclusion

104

See n 5 and associated text.

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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,
Mergess 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
Mergess 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, notwithstanding 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, Resniks own
pluralistic approach significantly shorter and less detailed in exposition
though it ismay 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.