Legal Boundaries of Intellectual Property Commercialization in the European Internal Market

Osman Buğra BEYDOĞAN

TABLE OF CONTENTS

PREFACE 5

TABLE OF CONTENTS  7

GLOSSARY OF ABBREVIATIONS. 11

INTRODUCTION . 13

CHAPTER 1

FROM INTANGIBLES TO INTELLECTUAL PROPERTY

DELINIATING IP COMMERCIALIZATION

INTRODUCTION.25

INTANGIBLES AS THE FUNDAMENT OF VALUE CREATION 26

Intellectual Properties Through the Lens of the Concept of Property 31

Why More Commercial Than Tangible Assets?.33

Delineating Commercialization .37

Identifying the Concept of Intellectual Property Commercialization from the Legal

Perspective38

6.1. Commercialization of Intellectual Property (IP)40

6.2. Commercialization of Intellectual Property Rights (IPRs) .41

Conclusion.46

CHAPTER 2

CONFLICT IN NATURE: TERRITORIAL EXCLUSIVITIES VS.

FREE MOVEMENT OF IP PROTECTED SUBSTANCE;

IMPLICATIONS OF IP TERRITORIALITY FOR THE EU INTERNAL MARKET

Introduction 49

Territoriality of IP Rights .51

2.1. The Early Background .51

2.2. Towards the Modern Day .53

Exclusionary/Monopolistic Character of IP Rights 59

Market Segregating Effect of National Intellectual Property Rights .61

Interim Conclusion 65

Particular challenge for the European Internal Market 66

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CHAPTER 3

RECONCILING THE CONFLICT IN NATURE; EARLY DOCTRINES

Existence and Exercise of Rights .79

Specific Subject Matter of Rights 88

Polysemy of ‘Specific Subject Matter’ and Fluxional Definitions 94

CHAPTER 4

EXHAUSTION OF RIGHTS

General Concept of Exhaustion and the its Function99

The Community Exhaustion: The Formulation105

The Concept of Putting on The Market.111

Marketing by or with the Consent of the Right Holder.120

4.1. Putting on the Market by a Distributor.121

4.2. Putting on the Market by a Commercial Agent.122

4.3. Putting on the Market by the Undertakings that Belong to the Same Economic

Group122

4.4 . Putting on the Market by the Licensees .125

4.5. Putting on the Market by the Right Holder.127

Marketing by Third Parties129

5.1. Marketing by Third Parties without Intellectual Property Rights130

5.2. Marketing by Third Parties with Related Intellectual Property Rights and IP

Assignment .133

5.3. Marketing Under Compulsory Licenses 146

Marketing in Breach of Licensing Agreement .149

The Geographical Scope of Exhaustion .160

7.1. Less is Prohibited; What About More? .161

7.2. A Push Towards International Exhaustion: Implied Consent and Consent

Defined .163

7.3. The Earlier Practice on Allocating the Burden of Proof and the Core of the

Issue165

7.4. Shift of Evidentiary Burden: Van Doren Case167

CHAPTER 5

INEXHAUSTIBLE RIGHTS: SPECIFIC CONSIDERATIONS FOR COPYRIGHT

Rental and Lending Rights.170

Rights in Performances & Communication to the Public 171

Table of Contents 9

An Overview on digital ‘further commercialization’ and exhaustion176

The Aftermath of the Judgements and Remarks 185

CHAPTER 6

TRADEMARK-SPECIFIC CONSIDERATIONS:

REPACKAGING, REBRANDING and DEBRANDING

The Essence of Question .191

Pre-Harmonization Jurisprudence.194

Adoption of the First Trade Mark Directive 197

Threshold of Intervention Required for Repackaging; Junek Europ-Vertrieb .205

Application of Repackaging Principles Beyond Pharmaceuticals 206

CHAPTER 7

USING OTHER`S TRADEMARK FOR ADVERTISING

Use in Relation to the Right Holder`s Goods: Dior v. Evora 210

1.1. Exhaustion of the right to use the mark for advertising .211

1.2. Limitation to exhaustion .211

Referential Use of Other`s Trademark 213

Conclusions on Repackaging and Advertising .220

CHAPTER 8

COMPETITION LAW CONSIDERATIONS

Introduction 225

1.1. Interface between two bodies of law: convergence and divergence .226

1.2. Specific consideration for the Internal Market .228

1.3. Nuance from free movement provisions: what is offered vs. what can be

offered and more229

1.4. Statutory Bases of Competition Rules.231

1.4.1. Central Provisions: TFEU .231

1.4.2. Procedural guidance on the application of the provisions: Regulation

1/2003.233

1.4.3. Vertical Restraints Block Exemption Regulation (VBER)235

1.4.4. Technology Transfer Block Exemption Regulation (TTBER).235

1.5. Ground Rule: IPRs are not anticompetitive per se 238

Selective Distribution Systems 240

2.1. General Treatment of SDSs Under Art. 101(1)241

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2.2. Vertical Restraints Block Exemption (VBER)

244

2.3. Restriction on Online Sales .245

Refusal to License and Abuse of Dominant Position: General Outlines252

Standard Essential Patents (SEPs) and Abusive of Dominant Position by Bringing

Proceedings in Relation to SEPs 261

Patent Pooling and Competition Rules .269

Reverse Payment (Pay-For-Delay) and Co-Promotion Agreements274

CONCLUSIONS .283

LIST OF BIBLIOGRAPHY.305

TABLE OF CASES.317

LEGAL SOURCES .323