The limits of Intellectual Property: Exhaustion of rights, international trademarks and digital copyright

Strong Intellectual Property (IP) protection is a fundamental point in the establishment of a market for new products and services. IP can give significant power to the owner of intangible assets in financing, manufacturing or in general commercial transactions. However, as with any sort of power, too much of it can have detrimental effects. This work provides a discussion on the limits of IP by examining the exhaustion of rights doctrine. The paper briefly presents the legal evolution of the doctrine for trademarks and digital copyright. A discussion follows on the controversial concept of international exhaustion and on the most important points of digital exhaustion.

Exhaustion, Distribution and Communication to the Public – The CJEU’s Decision C-263/18 – Tom Kabinet on E-Books and Beyond

In its Tom Kabinet decision,****See the text of the decision in this issue of GRUR International at DOI: 10.1093/grurint/ikaa041. The author wishes to thank Aaron Stumpf, Stefan Scheuerer and Laura Valtere for fruitful discussions. the CJEU took a further step in dealing with digital facts under the InfoSoc Directive. This decision on the sale of ‘second-hand’ e-books through a website has set a number of things in motion: besides distinguishing between the distribution right and the right of communication to the public, the decision also affects the exhaustion doctrine and the coherence of European copyright law. In the past few years, discussions about the so-called ‘digital exhaustion’ and related issues have increased enormously. A few days before Christmas 2019, the CJEU published its long-awaited judgment in case C-263/18, also known as Tom Kabinet, in which it decided that the sale of ‘second-hand’ e-books through a website constitutes communication to the public and therefore requires the consent of the rightholder. This opinion gives insights into why the Tom Kabinet decision was so eagerly awaited, what exactly was decided and whether the CJEU’s decision could fulfil these great expectations.

The Construction of Economic Rights in the InfoSoc Directive

Turning specifically to the discussion of economic rights, this chapter shows how the Court’s application of certain standards discussed in Chapter 2 has resulted in common approaches—and overall broad scope—of the economic rights harmonized by the InfoSoc Directive, these being the rights of reproduction, communication/making available to the public, and distribution. This chapter also contains a discussion of the de facto harmonization of the originality requirement at the EU level and the understanding of ‘work’ under the InfoSoc Directive. With regard to the right of distribution, its exhaustion—especially following the first lawful sale copies in digital format (digital exhaustion)—is also discussed.