Written by: Robert Clark and Shane Smyth.
Mr Justice Brian McCracken, in his foreword to the 1997 first edition of this work, posited that there might be a prima facie case for professional negligence against any solicitor, barrister, patent or trademark agent who did not have this book in their library. High praise indeed, and it neatly illustrates the place this book has among specialists in this growing area of law.
The law in this area (and the number of practitioners in it in this jurisdiction) has greatly expanded since the first edition. The main copyright legislation in Ireland in 1997 was the Copyright Act, 1963, but this has now been replaced by the gargantuan Copyright and Related Rights Act, 2000, which runs to over 370 sections. The Industrial Designs Act, 2001 also came into force since the last edition, and this is an increasingly commonly used form of protection for clients whose intellectual property does not easily fit into the more traditional categories under Irish law. Ireland has also joined the Madrid protocol, adding to the methods of trademark registration available to Irish clients. All of these new developments are treated in the second edition.
Domain names and the issues that arise with their registration are dealt with in an introductory chapter to trademark law. The dispute resolution procedure introduced by the not-for-profit organisation ICANN for dealing with them is comprehensively examined. It has been successfully (and relatively inexpensively) used by many Irish companies to evict so-called ‘cyber squatters’ from web addresses that are either similar or confusingly similar to their trademarked or used name.
Another topical area this edition gives more space to is the droit de suite that will shortly form part of Irish law. This law, a concept originally taken from French law, will ensure that an artist (or his estate) will have the right to a percentage of re-sale profits from his paintings as his or her reputation (and the price of his or her work) increases. The right would remain for as long as the work was in copyright. Many Irish auction houses and galleries have opposed the introduction of this law on the basis that, as sales outside the EU are not captured by it, it may mean a great deal of Irish art will be sold out of New York to avoid it. Interestingly, a similar right exists in Californian law under its Resale Royalties Act 1977. It was widely hoped (by artists, if not by galleries) that a US-wide federal law would follow, but this has not happened.
Clarke [sic] and Smyth’s deft treatment of the EU directive on this topic (which must be implemented by next year), along with Australian and German cases in the field should be required reading, not only for intellectual property lawyers but for gallery owners and art dealers generally. Clarke [sic] and Smyth balance the opposing rights here between the cliché of the impoverished artist’s heirs living a frugal life while the price of their loved one’s works escalate exponentially with the passing of every year after his or her death and the rights of galleries, who often support artists who do not achieve high prices even after death, to make a living. Indeed, the origins of the French law introducing the droit de suite in 1920 were said to be from a public revulsion at the impoverished circumstances of the widow and children of the realist painter Jean-François Millet while his paintings fetched record sums in auction rooms and galleries.
Robert Clark, a professor at UCD, and Shane Smyth, a partner at FR Kelly & Co, are rightly regarded as powerhouses in their field. The breadth and depth of the topics covered in this work, from the patentability of software to the emergence of database rights and beyond, are impressive. The decisions of the European Court of Justice from November 2004 in the BHB and William Hill cases are also dealt with, despite the proximity of those cases’ publication to the publication of the book itself.
Space does not permit me to list in full the topics covered, but this book should be purchased by anyone, whether practitioner, in-house lawyer, academic or student, interested in this increasingly complex field of law. The authors’ enthusiasm for their chosen field, combined with a comprehensive index, makes this an excellent second edition of a by-now seminal legal text.
Jeanne Kelly is a senior associate in Dublin law firm Mason Hayes and Curran.
Irish Law Society Gazette, July 2005.
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