INSERT CP TEXT HERE – The United States federal government should <describe function of plan without using the words patents/trademarks/copyright > via a sui generis intellectual property regime.

Kazeeva 24 [Iana Kazeeva is a postdoctoral researcher at the Department of Innovation and Digitalisation in Law at the University of Vienna. She studied international commercial and tax law in Moscow and holds a Candidate of Sciences degree (Ph.D. equivalent) in international financial law (dissertation on fiscal decentralization). Prior to joining the Department, she worked at the Mountain View office of a California-based public software-as-a-service company, primarily engaged in reviewing and negotiating technology and commercial contracts. She also gained practical experience as a senior legal counsel at the legal department of a global producer of mineral fertilizers, focusing on project finance and legal compliance. At the Department, the primary focus of her research is on intellectual property, data security, and data protection law., Sui Generis Intellectual Property Protection Comparison of EU and U.S. Regulatory Perspectives in Law, Business and Innovation, ALB]

1.2 The Reasons for Sui Generis Intellectual Property

Protection

Although the legal concept of intellectual property has been developing over hundreds of years and its legal framework is well developed and includes multiple forms of legal protection, there are certain categories of subject matter that cannot be effectively protected by the existing intellectual property legal regimes. This is the case when the need for a sui generis, i.e., of its own kind, protection emerges. For instance, the purpose of early utility models laws was to protect functional improvements of handtools, which neither patent nor trade secret law effectively protected.20 Besides filling such legal gaps, another reason for introducing sui generis regimes is derived from the utilitarian theory of intellectual property protection, namely, the need to find the balance between the public’s access to inventions and creations, on the one hand, and the proprietors’ interests, on the other hand

The list of subject matter, for which the need for sui generis intellectual property protection has been either claimed for, or acknowledged, in a number of jurisdictions or at international level, includes databases, designs, plant varieties, semiconductor chips, geographical indications, traditional knowledge, etc.21 Recently, the issue of granting sui generis protection for works generated by artificial intelligence models has also been raised by scholars and practitioners.22 This book will further discuss the forms of intellectual property protection available for databases, designs, and plant varieties, representing three different areas of creations of the human intellect: physical compilations of data and digital technologies (databases), creative ideas (designs) and plant biology (plant varieties).

Databases and other compilations can generally be protected under copyright law, which is stipulated at both national and international levels. However, databases and compilations are often referred to as “low-authorship factual works”,23 which demonstrates the main legal problem that authors face when trying to get copyright protection for databases: lack of originality. Indeed, before the introduction of the sui generis protection for databases in the EU, only three among the fifteen EU Member States protected a significant number of databases using copyright, which was possible due to applying a very low threshold of originality.24 Furthermore, the courts in the U.S.25 and EU26 confirmed that copyright law does not protect databases that result merely from economic investment or intellectual effort.

As to ornamental designs, which are in principle patentable in the U.S., in practice the process of getting a patent for such designs is too costly and slow for the fastmoving, short-lived products of mass consumption.27 At the same time, copyright protection is in most countries strictly limited for ornamental designs. For example, in the U.S., clothing, furniture, dinnerware, etc., are considered useful articles having intrinsic utilitarian functions, and, therefore, the design of these articles cannot be protected by copyright law.28

For innovations in the agricultural industry, trade secret and patent laws could be the appropriate instruments for legal protection. Use of trade secret laws for protection of genetic information in an inbred plant line was upheld in Pioneer HiBred International v. Holden Foundation Seed, 29 despite the fact that parent plants are grown outdoors over a wide area, which contradicts the traditional trade secret law requirement to keep information secret. However, trade secret protection is only available for those crops that are sold as a hybrid seed, as opposed to self-pollinated crops, because in that case the parental plant lines can be kept secret.30 Patent law does not provide full relief either, since the products of nature are generally excluded from patentable subject matter in the U.S.31 The majority of the leading European countries are also reluctant to bring life forms within the domestic patent laws, at least for plants obtained through conventional breeding processes, since granting such patents could potentially lead to creation of monopolies and raise food prices.32 The need for sui generis protection for plant varieties has also been recognized at the international level. Particularly, Article 27.3 of the TRIPS Agreement states that “members shall provide protection for plant varieties either by patents or by an effective sui generis system, or by any combination thereof”.

Indeed, the mentioned categories of subject matter can be protected by a combination of the standard intellectual property regimes. For instance, an ornamental feature of a design can be protected by a design patent, by copyright as the author’s expression, and by trademark law (in the form of a trade dress) as a source indicator. However, the overlapping rights make it difficult for intellectual property users to determine the scope of such different rights, particularly when those rights have different terms or limitations. In order to resolve this issue, some scholars suggested that courts should require intellectual property owners to choose the right they want enforced or follow the requirements of the regime whose protection term expires first. Besides, although the courts might not object to invoking overlapping intellectual property regimes as long as the requirements for each regime are met, it is not clear to what extent a particular intellectual property right should be enforced. Therefore, such doctrinal overlap presents a temptation to intellectual property owners to push for even stronger protection of their intellectual property rights.33

Another possible instrument of protection is the unfair competition laws. However, unfair competition laws are a completely different legal concept and are applicable only in certain situations and therefore do not provide enough protection. In particular, the law of unfair competition is only applicable in competitive situations, whereas the sui generis right also covers acts committed in non-competitive situations. Besides, the law of unfair competition sanctions unfair behavior a posteriori, whereas the sui generis rights create rights a priori and grant a term of protection.34