In several publications (like this 2005 Fordham Law Review piece), I considered the available empirical evidence (and its paucity in the case of developing countries) on how to measure policy impacts on innovation and development. The paper showed that policy makers and those attempting to build policy models were clutching at a few empirical straws. This was also noted in several chapters in both editions of Intellectual Property, Trade and Development I edited (Oxford UP), the last in 2014. One of the main points made there was that when TRIPS was negotiated and first implemented (what I have referred to as ‘TRIPS 1.0’), there was very little to assist policy makers and legislators. Many countries implemented IP laws that were TRIPS compliant with a view to avoiding possible violations of their WTO obligations and not much else.
20 years later, we have much more and much better data, and better theoretical models to develop and use appropriate indicators. As suggested in a number of theoretical models (eg in my Calibration piece), levers other than ip are often much more important. In fact this chart from the 2015 WIPO Global Innovation Index (GII) shows an “ideal” policy/administrative framework that includes only measures other than substantive IP rules. There is little doubt that IP alone doesn’t work, and that it it forms part of a policy package that will vary by country and region. A host of socioeconomic, historical and cultural factors come into play.
The GII’s Conceptual Framework notes something that seems self-evident but at the same forces us to confront many traditional assumptions about IP, and especially patents:
“Previously economists and policy makers focused on R&D-based technological product innovation, largely produced in-house and mostly in manufacturing industries. This type of innovation was performed by a highly educated labour force in R&D-intensive companies. The process leading to such innovation was conceptualized as closed, internal, and localized. Technological breakthroughs were necessarily ‘radical’ and took place at the ‘global knowledge frontier’. This characterization implied the existence of leading and lagging countries, with low- or middleincome economies only catching up. Today, innovation capability is seen more as the ability to exploit new technological combinations; it embraces the notion of incremental innovation and ‘innovation without research’.” (Id. at 41).
When it comes to providing and enforcing exclusive IP rights, sometimes less is more. This should not lead to the hasty conclusion that less IP is always more. But the fact that much innovation is incremental means that excluding others may both seem unfair as a normative matter when the increment is very small, and economically inefficient if it prevents more increments for being developed and exploited. Yet the rights are often geared towards the pioneer/radical innovation, with major companies competing in a winner-takes-all environment. Courts have modulated exclusivity to a degree, but a more structured rethink must now happen.
The new or strengthened focus on evidence-based innovation policy-making is such that we can begin to think of meta-analyses of data points and indicators. But clearly more is not always more. That will change the face of IP, for good one hopes.
Edward Elgar has just published a new Research Handbook on International Intellectual Property Law. I am also about to finish a coauthored manuscript (with Susy Frankel) of a short textbook entitled Advanced Introduction to International Intellectual Property. The two books can be used (separately or together) for teaching.
I also have a chapter (Philosophical Foundations of IP and HR) in a massive Research Handbook on Human Rights and Intellectual Property edited by Christophe Geiger. As Jerry Reichman notes on the back of the book, the book is the most comprehensive review ever undertaken.
A chapter on GIs as certification marks (A Cognac after Spanish Champagne?) in Intellectual Property at the Edge (Jane C. Ginsburg and Rochelle Dreyfuss, eds, Cambridge Univ. Press, 2014) is available here
Finally, my coauthored Fame, Property, and Identity: The Purpose and Scope of the Right of Publicity (with Martin L Holmes) published in Fordham Intellectual Property, Media and Entertainment law Journal is available here .
Happy to report that I was just appointed Associate Reporter for the Restatement of Copyright, First. Looking forward to working with this excellent team! Details at http://law.vanderbilt.edu/news/daniel-gervais-to-serve-as-associate-reporter-of-the-american-law-institute’s-restatement-of-law-copyright/
Three new publications available on the site:
This coauthored article examines the role of survey evidence in trademark cases that claim online confusion.
This chapter in the new (second) edition of my book Intellectual Property, Trade and Development (Oxford) examines the issue of calibration of intellectual property as part of a national innovation policy.
In this chapter in a book on global patent law edited by Ruth Okediji and Margo Bagley, I look at a specific example of calibration in patent policy (subject matter) in two countries that took a different approach. I had the pleasure of presenting this paper in December 2014 at a University of London in Paris event (held at the Conseil Britannique).
The majority opinion in Garcia v Google (Ninth Circuit, February 26, 2014) seems to stand for the proposition that an actor has copyright in her performance. The case was described as horrific and has generated a very significant amount of traffic on listservs and social media.
Chief Judge Kozinski wrote, inter alia, the following:
- An actor’s performance, when fixed, is copyrightable if it evinces “some minimal degree of creativity . . . ‘no matter how crude, humble or obvious’ it might be.” Feist Publ’ns, Inc. v. Rural Tel. Serv. Co., […]. That is true whether the actor speaks, is dubbed over or, like Buster Keaton, performs without any words at all.
- Where, as here, an actor’s performance is based on a script, the performance is likewise derivative of the script, such that the actor might be considered to have infringed the screenwriter’s copyright. And an infringing derivative work isn’t entitled to copyright protection.
- As the above discussion makes clear, any analysis of the rights that might attach to the numerous creative contributions that make up a film can quickly become entangled in an impenetrable thicket of copyright. But it rarely comes to that because copyright interests in the vast majority of films are covered by contract, the work for hire doctrine or implied licenses.
The dissent makes a number of important points, including:
- Section 101 of the Act is also instructive, because it differentiates a work from the performance of it. It defines “perform a ‘work’” to mean “to recite, render, play, dance or act it.” 17 U.S.C. § 101 (emphasis added). Given this provision, it is difficult to understand how Congress intended to extend copyright protection to this acting performance.
- An acting performance resembles the “procedure” or “process” by which “an original work” is performed. Therefore, “[i]n no case does copyright protection” extend to an acting performance, “regardless of the form in which it is described, illustrated, or embodied in” the original work.
The dissent is correct in pointing out that the US Copyright Act draws a distinction between works and performances. But that is not dispositive. In this comment, I do not address all aspects of the case, far from it. I leave aside in particular the remedy issued by the court.
Let me begin by positing that actors can (and usually do) make what one might describe in everyday language as creative contributions to audiovisual productions such as a motion pictures. This might lead to the suggestion that actors should be protected against some unauthorized uses of their creative contributions. In copyright terms, actor arguably make “creative choices,” the common test for originality in many countries and the Berne Convention, though there are variations in its application.
A similar analysis applies to music. Is Yehudi Menuhin’s version of the J.S. Bach’s sonatas not “creative”? Does it not exhibit “creative choices”?
From an international perspective, the debate seems a bit surreal. The protection of music performers was discussed in the 1950s. A view held by many (mostly European) negotiators at the time was that at least some music performances could be considered “works” in their own right, but many also felt that parsing those worthy of work status from more “mechanical” performances (that is, not exhibiting sufficient “originality”)–combined with strong pressure from certain associations of composers–doomed the case for recognition of authors’ rights for performers. Eventually the 1961 Rome Convention was signed, protecting the rights of performers, broadcasting organizations and producers of sound recordings, generally referred to as neighboring or related rights (because they are neighboring on or related to authors rights). In part because the United States had issues with rights being recognized for performers and broadcasters, a separate convention (the Phonograms or Geneva Convention of 1971) was signed 10 years later. It protects only rights of record companies. The US joined that Convention in 1974–after the introduction of sound recordings protection under federal copyright law. The US never joined Rome.
As a result of the creation of related rights, most countries do not have a “Garcia issue.” They protect musical and audiovisual performances under a related right. For actors, this often includes a loss of exclusive rights after consent to the incorporation of the performance in the audiovisual production (or some other arrangement meant to allow the producer to exploit the work).
The term “performers” in Rome and the WPPT includes actors. However, the WPPT essentially applies to “aural performances or performances fixed in phonograms.” The Rome Convention also essentially excludes audiovisual performances (art 19), but only “once a performer has consented to the incorporation of his performance in a visual or audio–visual fixation,” which might not apply to the peculiar Garcia v Google fact pattern . The same can be said of the recent Beijing Treaty, which provides a series of rights for performers, including fixation and distribution but also provides (art. 12(1)) that a “Contracting Party may provide in its national law that once a performer has consented to fixation of his or her performance in an audiovisual fixation, the exclusive rights of authorization provided for in Articles 7 to 11 of this Treaty shall be owned or exercised by or transferred to the producer.”
With the WIPO Performances and Phonograms Treaty (to which is US is party), arguably performers have most of the rights that authors enjoy under Berne, including a moral right (WPPT, art. 5). Note that the WPPT singles out two of three Rome categories (performers and record producers) and is still a ‘related rights” instruments. A possible treaty on the third Rome category (broadcasters) is under consideration at WIPO.
The US statute does not officially recognize a related rights category. In practice, it does of course. There are three levels of copyright in the statute:
- A full (Berne level) copyright for authors of certain works of the visual arts, which benefit from the rights in sections 106 and 106A.
- A set of copyright rights which is more or less the equivalent of Berne economic rights for all works not affected by VARA/106A and other than sound recordings
- A “related right-like” right for sound recordings with the 106 rights, excluding public performance but the (more recent) addition of rights in digital transmissions.
The Ninth Circuit’s intuition that (a) an actor should have rights where consent to fixation is in doubt and (b) that her contribution is “creative” are both correct. But because the only vehicle available under US law is “copyright,” the court was more or less compelled to apply Feist and the notions of derivative work, work-for-hire and joint work to the situation at hand. That is in large part why the outcome seems messy to a number of commentators. A related rights regime typically does not have to address those issues.
The related rights approach is not a legal panacea. Indeed the exclusion of performances has been criticized and seem arbitrary (2 RICKETSON AND GINSBURG, at ¶¶19.01 and ssq). The border between unfixed choreographies (protected under the Berne Convention since 1967) and a performance is fuzzy. Though this is for another post, my intuition is that the border can be drawn using the distinction between imitation and reproduction. I reproduce a choreography (while varying stylistically as in the Anne Teresa De Keersmaeker v Beyoncé example) but I would say one can imitate not reproduce Clark Gable in Gone with the Wind. This is of course an issue that would need much more in depth treatment. [Thanks to Danielle Chien for suggesting this example]. By contrast, the fact that a performance is derivative seems a less rueful avenue because translations and any other works are necessarily derivative.
A final point is that the US statute is perhaps stuck in its own contradiction(s) here. Considering a sound recording or a movie as a work (which other countries prefer to consider as a related right) means that it must be original (Feist). In the case of a sound recording, that originality can perhaps follow from the studio engineer’s work (up to a point) but let’s be clear: it really comes from the performance. A motion picture is a mix of directing & acting (and many other contributions) on the basis of a screenplay. The screenplay is a discrete work. The case is harder for direction and acting. It was correct, therefore, for the court to say that the performance exhibited the traits of a creative contribution. Whether it is separately copyrightable (with possible ownership issues when it is not a work-made-for-hire) is another matter, but at least as a matter of international law the absence of the actor’s consent leads to the recognition of a right under both Rome and under the Beijing Treaty. No doubt someone will be quick to point out that US has yet to ratify either one of those. True, but the underlying normative heft of requiring consent for the fixation to exhaust the performers rights strikes me as valid.
In a piece coauthored with Professor Susy Frankel, we examine the applicability of notions such as justifiability to diminutions of IP rights. The article argues that to interpret the scope of restrictions imposed by TRIPS, including article 20, on WTO member States, one should look beyond the text of each article and consider articles in context, with due regard for the object and purpose of the provision and of the Agreement.
In a panel report issued on the importation and marketing of seal products from Canada issued on 25 November, 2013, and dealing in large part with the Agreement on Technical Barriers to Trade (TBT), a WTO dispute-settlement panel seems to agree with this approach, which also meshes well with previous panel and Appellate Body reports.
Some of the panel’s findings are illuminating. Here is a taste:
“[T]he object and purpose of the TBT Agreement to strike a balance between the objective of trade liberalization and Members’ right to regulate, the Appellate Body concluded that Article 2.1 should not be interpreted as prohibiting any detrimental impact on competitive opportunities for imports in cases where such detrimental impact on imports stems exclusively from a legitimate regulatory distinction.”
Turning to Article XX GATT, the panel noted this:
“The necessity of a measure within the meaning of Article XX(a) is determined through ‘a process of weighing and balancing’ of ‘all the relevant factors, particularly the extent of the contribution to the achievement of a measure’s objective and its trade restrictiveness, in the light of the importance of the interests or values at stake’. The more vital or important the values or interests furthered by a measure are, the easier it will be to accept that measure as necessary. According to the Appellate Body, ‘if this analysis yields a preliminary conclusion that the measure is necessary, this result must be confirmed by comparing the measure with its possible alternatives, which may be less trade restrictive while providing an equivalent contribution to the achievement of the objective pursued’.
In tackling the relationship between the TBT and GATT, the panel said this:
“Given the close relationship between the GATT 1994 and the TBT Agreement and the need to interpret relevant provisions under both Agreements in a consistent and harmonious manner, we consider that an analysis of a measure’s contribution to an objective under Article 2.2 of the TBT Agreement is also relevant to such analysis under Article XX of the GATT 1994. The Appellate Body in US – Tuna II (Mexico) recalled that in assessing the necessity of a measure under Article 2.2, a panel must assess the contribution to the legitimate objective actually achieved by the measure at issue as in other situations, such as for instance when determining the contribution of a measure to the achievement of a particular objective in the context of Article XX.”
The panel’s examination of whether the discrimination in the EU ban between commercial seal hunts and hunts by Inuit hunters is “justified” is similary interesting. While some of that discussion may be used by Members in the TRIPS Art. 20 context, one should bear in mind that, as a substantive matter (that is, independently of burden of proof issues), an analysis of “arbitrary and unjustifable” under art. XX of GATT is not necessarily the same as the justification required under art. 20 of TRIPS.
All of this also shows, it seems to me, that a civil discussion of applicable rules is possible–indeed desirable–even (or especially) where an important public policy matter is at stake .
Four new items: TRIPS & Development, patentable subject matter, the three-step test and copyright formalities
A brief decriptive paper on TRIPS & Development (chpater in upcomign book by Sage) is avilable here.
An updated version of my Patent Target article available here
A new paper on the Three-Step Test, coauthored with Martin Senftleben and Christophe Geiger, is available here.
Finally, a paper coauthored with Dashiell Renaud on renewed copyright formalities and the Berne Convention is available here.
have a look!
A Cognac After Spanish Champagne
(For forthcoming book by Professors Jane Ginsburg and Rochelle Dreyfuss, Intellectual Property at the Edge (Cambridge Univ. Press).)
The draft chapter is available here.