As I have noted several times previously, in recent years courts in some countries have invoked the civil law doctrine of "abuse of right" as a basis for denying the owner of a FRAND-committed SEP an injunction against a willing would-be licensee. (Cases on point have arisen in Japan and the Netherlands in particular; see, e.g., discussions here at pp. 52-53, 73-74.) Partly in response to these developments, several insightful papers on the abuse of right doctrine have appeared in the last year or so, including works by Amandine Léonard, Richard Steppe, and Yuzuki Nagakoshi & Katsuya Tamai (discussed here, here, and here). A new addition is an article by Caterina Sganga and Silvia Scalzini titled From Abuse of Right to European Copyright Misuse: A New Doctrine for EU Copyright Law, 48 IIC 405 (2017). As the title suggests, the focus is on European copyright, not patent, law, but readers interested in the possible application of the abuse of right doctrine to patents may find illuminating the authors' general discussion of the doctrine as it exists in several different European countries, including its occasional use to deny injunctions in copyright cases where the exercise of the right would cause disproportionate harm to the defendant (pp. 417-21). Here is a link to the paper, and here is the abstract:
The great expansion of EU copyright law has paved the way for several rightholders’ abusive or dysfunctional conducts, without providing adequate solutions to prevent or remedy them. The answer from EU sources is characterized by extreme fragmentation, with tools mostly borrowed from external bodies of law. Paradoxically, the doctrine of abuse of right has long been neglected as a potential solution, mainly due to its flaws – difficult evidence-taking and weak remedies – and its incompatibility with the discretionary nature of continental authors’ rights. Yet, the notion emerges between the lines of several ECJ decisions and finds its way from civil codes to copyright in a number of national courts’ precedents. Due to the paradigm shift towards a market-oriented and industry-based inspiration, EU copyright seems now to be open to admitting the possibility of misuse. Starting from these premises, this article argues that a unitary doctrine of copyright misuse may constitute an effective balancing tool for most of the dysfunctional conducts that copyright law and other bodies of law are still unable to resolve. In addition, it may also act as a regulatory paradigm to ensure greater certainty and transparency in the judicial development of key principles and rules of EU copyright law. To this end, this paper (a) proposes a four-prong test of abusiveness, incorporating criteria of proportionality and reasonableness inspired by the normative function(s) of exclusive rights; and (b) offers new perspectives on potential remedies and on the positive impact of the doctrine on the systematization of the current legislative framework.