From Distortive Uses to new Limits: Towards an Abuse of Rights-Logic in EU IP Law

The thesis aims at portraying the emergence of new limits in the EU IP law architecture from a comparative function-based perspective. In this sense, the work tries to substantiate that such new limits to the structure of IPRs result from the application of remedies, legal devices and tools reflecting the so-called “abuse of rights-logic” and detaching from the paradigm of permitted uses at the heart of IP exceptions and limitations. To investigate the legal nature of these new limits and suggest possible ways forward, this thesis first tackles the panorama of the existing IP flexibilities in the international and EU IP legal framework, holding patent rights, trademark rights and copyright within the scope of the analysis. This overview attempts to gauge the efficacy of the paradigm of permitted uses. Then the focus shifts to the EU IP judicial landscape and, in particular, to one exemplary conceptual framework elaborated by the European Court of Justice (CJEU) to face the over-broad exercise of the exclusionary prerogatives entitled to IP-holders, which can be held as an alternative to the permitted use paradigm. This thesis tries to advance the argument under which such alternative framework, made of the (i) exercise-existence dichotomy, (ii) specific subject matter and (iii) essential function doctrines, is present under “different clothes” in the core rationale of the remedies devised in case law to cope with expansive trends in IP. To corroborate that, the thesis undertakes a mapping case law analysis, systematizing the criteria to address IP over-enforcement in CJEU’s and national IP case law belonging to selected jurisdictions. The objective is to portray the legal nature of the remedies adopted to deal with distortive uses of IPRs, investigating how the same have contributed to highlighting the essential function and the specific subject matter of IP protection and trying to classify the criteria through which courts have identified and condemned the IPR-use in question. Once inferred the common features among the judicial tests and recognized analogies with the abuse of rights doctrine and the related applicative criteria, the thesis illustrates the main interpretative patterns and judicial trends of such doctrine in those countries held within the geographical scope of the thesis. The work ultimately attempts to coagulate the common characteristics of the judicial tests extracted from the mapping into one single test potentially applicable to all the three IPRs held as subject matter for the analysis. The abuse of rights-tests inferred from national civil case law are used as a benchmark for this endeavor of systematization, which aims at laying the foundations for an EU-wide abuse of IPRs doctrine.