N. 5, November 2002 
IP & RTD: Articles 
Intellectual Property and the Common Law
Professor Michael Blakeney
Director, Queen Mary Intellectual Property Research Institute
Queen Mary, University of London
 
"Common Law" is the system of law that has developed in England since the Norman Conquest in 1066. Initially as a means of disguising the conquest, the royal judges spoke in terms of "revealing" pre-existing law, rather than creating new law. Even in the 21st century, it is considered that judges reveal the law, whereas Parliament creates new law. This makes for a system in which law comes from two distinct sources, and this can be seen in the area of intellectual property: the judge-made law of breach of confidence and passing off runs alongside the statutory law of patents, trade marks, designs and copyright.

The English system of courts is arranged in a hierarchy with the House of Lords ("the Law Lords") at the apex. Meanwhile, the judicial system of the British Commonwealth has the Judicial Committee of the Privy Council at its apex. This Judicial Committee consists of senior judges from Commonwealth countries, and Law Lords. There has therefore been much cross-fertilisation of intellectual property and other legal principles between England and the Commonwealth countries.

In the Common Law world, judges are appointed from among the most senior advocates, in contrast with the Continental system, in which judges are trained as such. As a result, English courts give some decisions of Continental courts, perhaps, less respect than they deserve. One possible way, currently being considered, of achieving common standards throughout the European Union would be the creation of a European intellectual property court. This would lead to the same cross-fertilisation effect operating within Europe.

The English courts follow the doctrine of precedent - that is to say, they consider earlier judicial decisions as sources of authority on the law. Published reports of judicial decisions date from the 13th century. Thus, in seeking to apply intellectual property law to novel situations, the Common Law judges will often consult the ancient law reports for inspiration.

For example, in British Telecommunications Plc v. One in a Million (1998), the English Court of Appeal had to consider whether the Common Law prohibited "cybersquatting" - the unauthorised registration of Internet domain names containing references to trade marks so as to sell the domain names to the proprietors of those marks. (The case fell outside the scope of the Trade Marks Act.)

The Court referred to judicial precedents concerning "passing off" (a branch of the Common Law concerned with preventing dishonesty in commerce), and considered various past cases from England and from the British Commonwealth - including a case decided in 1590 between two clothiers, one of whom had been found liable for counterfeiting the other's distinctive mark. The Court then identified certain essential policies latent in these cases, and applied those policies to the case at hand, ruling that cybersquatting was actionable under the Common Law.

This case illustrates the willingness of English courts to examine Commonwealth cases. The specialist intellectual property law reports (such as the Fleet Street Reports) report the decisions of all the Commonwealth countries, and this has a harmonising effect on intellectual property law in the Common Law world, insofar as it encourages the judges in each country to refer to decisions from the other countries.

In England, patents date back to the 14th century: originally, they were monopolies granted as favours by the Monarch, often - but by no means necessarily - for new inventions. In 1623, Parliament, dissatisfied with this system, passed the Statute of Monopolies. Section 6 provided that all monopolies granted by the Crown were void, except if granted for a maximum of fourteen years for the "sole working or making of any manner of new manufactures within the realm", to "the true and first inventor and inventors of such manufactures". This provision was to become the basis for patent law in Britain and its colonies.

A recent example of the influence of this enactment is the Australian Patents Act 1990, which defines a patentable invention by reference to section 6 of the Statute of Monopolies.

The English Common Law has protected trademarks, without the need for registration, since the 16th century, through the law of "passing off". However, it was only in the mid-19th century, as a consequence of the Industrial Revolution, that this branch of law became of major importance.

A serious problem with the Common Law action was the difficulty of proving a protectable commercial reputation. As a consequence, Parliament passed the Trade Marks Registration Act 1875, which provided, in effect, that a trade mark registration was documentary proof of reputation. This Act and the subsequent UK Trade Marks Acts codified a number of Common Law principles, such as the concepts of distinctiveness, confusion and similarity. Nowadays, registered trade marks are the mainstay of trade mark law, although the law of "passing off" continues to fulfil a useful function.

Copyright, in the modern sense of the term, was first established in England by the 1709 Statute of Queen Anne. This piece of legislation gave authors copyright protection, subject to registration of their works, for 14 years, with the possibility of renewal for a further 14 years. Criminal penalties were imposed for piracy. Over the course of the next 200 years, the term of protection was gradually extended, and copyright protection was extended to a variety of different types of work.

One factor with the potential to distance English law from the law of other Commonwealth countries is the UK's membership of the European Union, which has the effect of subordinating English law to European legislation.

It should be noted, however, that English judges interpret European legislation with reference to familiar Common Law principles. The clearest example of this is the Trade Marks Act 1994, which was intended to implement the 1988 Trademarks Directive. The courts have interpreted the Act in the light of Common Law precedents stretching back to 1615. Contemporary Continental trade mark law has to compete with this ancient heritage.