Thanks to Professor Andrew Newcombe & Co for their great website.
My new book (Re)Structuring Copyright, the first in the new Elgar Monographs in Intellectual Property Law, is now available. Thank you in particular to the series editors, Professors Graeme Dinwoodie, Rochelle Dreyfuss and Annette Kur.
Here is the text of the preface:
This book aims to inform the debate about the future of copyright and its influence on human creativity. It is possible that, in a few years, all books will be the product of artificial intelligence and a version of Bob Dylan’s songs will be written by the son or daughter of IBM’s Watson. We are not quite there. Copyright has been, and is still, linked to many forms of (human) literary and artistic creation. Literature and art are perhaps the most vivid mirror of a society, its deepest aspirations and fears, its horrors and its magnificence. How policy affects that creation is, therefore, crucial to future human progress.
In common parlance, ‘artists’ create Art. In copyright, we call artists ‘authors’. We could call them ‘creators’. Art is used and often owned by those who distribute, disseminate, package, and sell it, to be enjoyed or used in one form or another by all of us. Art then enters a cycle of appropriation, reuse and transformation, sometimes leading to more creation. Creation has a very broad meaning in the copyright realm. It includes ‘art’ proper but also non-fiction writing and many more utilitarian forms of creation such as maps and (certain) computer programs. Some quality contributions to human progress are created by amateurs, from deeply influential essays to child prodigy music composers. Talent—however that term is defined—seems not to have been distributed evenly; yet even abundant talent needs to be honed, nurtured and developed. Mozart started composing as a child but few of the works he wrote before the age of 21 are among the ones people listen to on a regular basis two and half centuries later. That nurturing is a key function that copyright, properly structured, can accomplish.
This book proposes a way to structure copyright internationally to achieve this aim. There are no doubt many other ways to get there, but I can think of no higher policy objective. There is a fundamental ‘anthropological’ aspect to the quest for human development and policies that support it, although there is a sheer economic argument to be made as well: in the ‘knowledge economy’, creativity replaces material goods. Immaterial capital displaces physical capital. Knowledge is a commodity in itself; it is increasingly produced not to support the production of material goods (e.g., an improvement on a physical device) but for its own exchange value. As a matter of human and economic development, policy must ensure that those who can, and will, push their creative limits, including in developing new knowledge, can do so.
True, technological changes make the policy work ahead harder. Those changes will alter in unforeseeable ways the interaction between humans and machine. Whether humans adapt to the machine (think of all the people walking with their heads down looking at a small glass screen) or whether the machine helps human creativity and potential flourish is the next great question. Law and policy can only influence the course of events up to a certain point, in part because regulatory interventions are so often educated guessing at best. Yet the inversion that André Gorz and others have described—the economy serving humans rather than the other way around—is the best possible outcome.
Good policy can maximize our chances of getting there. Copyright is not the only tool in the policy toolbox of course. It forms part of a broader set of policies known as intellectual property (IP) and IP itself is part of an array of cultural and economic levers available to policy makers, from tax credits and subsidies (ex ante tools) to awards and prizes (ex post tools). The copyright system remains front and centre in this discussion, however. Yet it is a broken system. Not surprisingly, many voices have called for copyright (and sometimes all of IP) to be jettisoned as an obsolete industrial revolution era policy dinosaur. The early days of the Internet led the Grateful Dead’s John Perry Barlow to declare copyright dead. It is not. Others have made it their task to reduce copyright to its simplest expression, reflecting an underlying assumption that copyright is a negative—as little copyright as possible is necessarily a better outcome.
Perhaps calls for reduction are merely a reluctant acknowledgment that it is unrealistic in this era of trade rules to think that copyright can be scrapped entirely. There are two other ways to see such recent developments. One is a cynical view. Many major commercial ‘intermediaries’ whose business is to sell advertisements need ‘content’ in myriad forms to draw users to their apps, sites and services. Whether it be a cat video or a Fellini movie, a recording of a high school band or a Puccini opera, a blog-post or a Jane Austen book matters not to them. I submit that it should matter to us all. Indeed, this concern must inform proper copyright policy. The other way to see recent developments is to embrace them, because they do lead to progress in a number of areas. The idea that entire libraries of paper books can be word-searched online is clearly a positive development, leaving aside for now the idea that those who write those books need not be remunerated for the uses of their works. The power of the Internet to disseminate new creations worldwide at little or no cost is a powerful tool to level the distribution playing field (for example by allowing anyone to publish an ebook) and potentially bringing all cultures, not just major players, to ‘users’ worldwide. Digital tools that allow amateurs and professionals to create, modify and add their own creativity to existing works can allow new creations to emerge and flourish, although it can also lead to ‘lazy’ creation by copying. Imitation has always been of the human creative process and this has now been raised to immeasurably higher levels, for both good and bad.
More ‘content’ is a good thing. More good ‘content’ is a far better thing. By ‘good’ I mean the type of work that alters our perceptual filters, forces us to think and rethink our world, moves us, and hopefully can make us better humans. Sometimes it is hard to know which is which. The initial failure of many new forms of art, including the famous rejection of the Impressionists by the bourgeois Parisian elites, come to mind. It is clear, however, that to achieve those aims new ‘content’ must not only be created, it must be made available. Current policy efforts aimed at providing new and stronger ways to take down unauthorized content are thus often misguided, although not in cases of straight piracy that add no value. We should aim not to take content down but to put more good content up. And all of that cannot and should not happen at the expense of those who have spent their lives honing their craft and/or by preventing new creators to do so. An equilibrium must be established—it can be done.
The current lack of equilibrium and the deficient structure of copyright results, in part, from a process of historical changes and accretions to the list of copyright ‘rights’ and in part from a lack of clarity as to its purpose. Indeed, very few national laws state one or more purposes of copyright. European Union Directives often mention several aims in their recitals. The definition of a purpose is often seen as a binary exercise. I have been asked so many times what ‘side’ of copyright I was on. Must one side win? This book takes the view that we can all ‘win’.
The United States Constitution is a helpful guide. It is unique in that it states the purpose (Progress of Science and Useful Arts), beneficiaries (Authors) and mode of implementation (Exclusive Rights in ‘Writings’, for Limited Times) of copyright. Copyright should promote ‘progress’. Words matter. This means that copyright is not needed to promote mere ‘change’. Change happens no matter what. Progress, not necessarily so. In his 1974 Invitation to Jurisprudence Professor Harry Jones noted that not all forms of change are progress. Change that is not progress means moving sideways or going backwards. Change is merely a difference between two points (A and B) on a timeline. Progress is an improvement at point B. Progress does not mean that there is an end-state that we must identify, such as Fukuyama’s initial description of an End of History. But human progress, its emancipation, through science and the arts, is surely progress. That said, governments, courts and policy makers cannot and should not dictate the direction of societal and technological change. Cultural memes and economic forces are too powerful to resist, and often they lead change that does constitute progress. But I submit that it is the role of all branches of government to promote progress by ensuring that a larger proportion of change is progress. It is the role of academics (among others) to illuminate the economic, sociological, philosophical, and historical underpinnings that can then inform the thinking about how policies can affect the degree to which change will lead to progress.
My comment t on the recently proposed Multilateral Investment Court is available here: MIC brief Gervais
In the much awaited opinion in Lexmark, the en banc Federal Circuit (10-2) cited the TRIPS provision on exhaustion (article 6) and even the TPP. A step forward for international IP aficionados. Arguably, the statement accompanying the Uruguay Round implementing legislation that “[t]he [TRIPS] Agreement . . . does not affect U.S. law or practice relating to parallel importation of products protected by intellectual property rights” is a significant part of the majority’s argument finding that non exhaustion of patent rights by a foreign sale (despite Quanta) is supported by legislative intent. I detect a whiff of cert. in the air.
The Geneva Act of the Lisbon Agreement signed in May 2015 was the subject of a major EU/US disagreement. A footnote or Agreed Statement meant to bridge the gap disappeared in the middle of the night. This article about the contents and negotiation of the Geneva Act is just out in Houston LR. It is a veritable whodunit!
Professor Richard Primus (Michigan Law) presented an interesting draft paper here at Vanderbilt and his take on the life of John Marshall’s opinion on enumeration in Gibbons v. Ogden: “The enumeration presupposes something not enumerated.” In modern law, that famous dictum has been interpreted to mean that because Congress’s powers are enumerated, they are also limited. Congress has only the powers expressly granted to it, and not those powers that remained unenumerated. In fact, however, as Primus convincingly demonstrates, Marshall was referring to a much narrower example of enumeration in the Constitution: the Commerce Clause and its enumeration of commerce “with foreign nations, and among the several states, and with the Indian tribes.” Since United States v. Lopez in 1990, Marshall’s dictum is used to support the claim that all of Congress’s enumerated powers are limited or constrained by the enumerations (Article 1, 10th Amendment). This shift from a dictum which on its face applied only to the Commerce Clause to a fundamental principle of constitutional law is most definitely worthy of exploration. I only offer a brief comment with trademark law in mind, a matter to which I return at the end of this short text.
An enumeration can be analyzed as a matter of linguistics. Some are necessarily exhaustive, some necessarily not, others may be. Sometimes the text of the enumeration will make that clear; sometimes context is required. Examples:
“I want you to bring these 10 things [insert list] on your trip.” This list is not necessarily exhaustive. Some could potentially be able to travel with only 10 things. The traveler may well take many other things with her, however–there is no question that there exist other “things” in the world other than the 10 listed.
“I want you to bring those 10 things [insert list] and only those ten things on your trip,” would be an example of the same enumeration but expressed as exhaustive. A person getting ready to climb a mountain might be asked to keep it light.
“I want you to bring an extra pair of socks and some toothpaste on your trip” is contextually non exhaustive, as a naked person with socks and a tube of toothpaste in her hand is an unlikely traveler. Even if we consider the traveler fully clothed before receiving the instructions (ie the instructions apply to objects that will be carried in addition to what she is wearing), the instructions definitely seem non exhaustive.
“You can have chocolate, vanilla, or strawberry ice cream,” may be contextually exhaustive (when those are the only flavors available) or not (at a store selling 31 flavors)
The Commerce Clause seems to posit forms of commerce not enumerated. Marshall does seem to have the right intuition. But not necessarily. One could also read it as providing three exemplars and thus probably read it much more broadly. Linguistic analysis does not provide a fully convincing, unique answer. That does not much matter, however. The shift from dictum to fundamental principle indicates that the dictum has moved well beyond linguistics into the normative realm (or perhaps more precisely into normative realms).
In some federal constitutional systems, state and federal powers are both enumerated. This gives rise to a “battle of the lists.” Every power must presumably be on at least one list. Courts interpret the powers. This text analysis often has a normative overlay. First, it may be but does not have to be a canon of interpretation that powers need to be exclusive. In other words, joint authority is legally possible. Whether it is desirable is a matter to which I return below. Second, one can take the view that the federal or state is a better default even if both have lists.
If there is only a list for one “side” (as in the US Constitution), the picture is different. One could say that the “non-list” side is necessarily the default. Yet that is also subject to various normative deflections. For example, even with a list on the federal side and none on the state side, one could take the normative view that any power that can reasonably fit into a federal enumerated power should be federal because federal authority is preferable (reasons could be uniformity, etc.). It does not follow, in other words, that the nonlist side is necessarily a preferred default.
During the presentation, my colleague Chris Serkin mentioned the principle (State v Simmons) that when a State delegates to a local authority, that delegation must be clear and—under the traditional Dillon’s rule—must be interpreted restrictively (at least in case of doubt). One could add to this that States (colonies) replaced the King of England and are, therefore, the original repository of governmental authority, some of which they delegated to the federal government. Viewed in that light (Simmons, Lopez and history), one would be justified in saying that the States are the preferred default. Simmons and Lopez provide symmetry: States have powers unless clearly proven otherwise. The beauty of symmetry is undoubtedly there, but it does not follow (as a normative matter) that what applies to delegation up (to the federal level) necessarily applies to delegation down (to local authorities) or vice versa. In the end, it seems to boil down to a normative view of which default level of government is “better.” One could argue that there is a single better default in all cases. Simmons, Lopez and history support that States are the default. Yet, that is not necessarily the answer. A pragmatist might argue that some federal powers should be interpreted broadly because the federal system works better when those specific powers are interpreted that way.
It is also a normative position to insist on a watertight separation of powers between the States and the federal level, one which efficiency may or may not support case by case. There may be cases where sharing authority works better. Then again, one can counter that efficiency is itself a normative claim, as are ways to measuring it. As American as efficiency and apple pie?
This at long last gets me to trademarks. Federal authority over trademarks is generally seen as resting on the Commerce Clause. To obtain protection and to be able to register under the Lanham Act a trademark must be used in interstate commerce. For defenders of State rights, it may well be that insisting that goods cross state lines before power is “transferred” to the federal level is the “big normative deal.” As a matter of commerce, I wonder. Let’s take an example. If Lisa sells 10,000 goods for $1 million without leaving Tennessee she has little to hope from the Lanham Act. Her rights in other states will be limited (eg to a passing off claim under state law). If Bruce sells 10 goods for $1,000 but has five genuine (arms-length) sales across state lines (perhaps because he had a small website built), then he can probably register a federal mark. He would then get nationwide protection under federal law. This is admittedly not a hugely disturbing example but it does show that whether one takes an overall approach to state v federal rights (as a principle of constitutional law) or looks at individual powers, the outcome may not be the same.
Thoughts and criticism welcome.
Intellectual property is in global turmoil. This is not surprising. In many industrialized countries, ‘intangible’ assets make up 70% or more of the economy, and intellectual property rights (IPRs) are a way to create incentives to generate those assets and then to protect those assets. From a rather obscure and technical topic for a few specialist lawyers, intellectual property since the 1980s has progressively become a major focus of business strategists, trade negotiators and developmental economists.
The trade-related focus has been to write global rules for IPRs. The 1994 Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) negotiated under the auspices the World Trade Organization (WTO) is such a set of IPR rules. There were many areas of disagreement, particularly between industrialized and developing countries. And because the divergences of view were deep at the time developing countries were given more time to comply. In fact, for all intents and purposes, the world’s 50 or so poorest countries still do not have to comply with most of the TRIPS Agreement even if they are or become WTO members. There were also disagreements between industrialized countries, for example between the United States and Europe. Some of this is reflected in incomplete outcomes (for example replacing a rule with a commitment to negotiate one at some future point in time) fuzzy language, and a lack of definitions of key terms, allowing countries to implement the Agreement in different ways. There were—and still are—significant differences on the protection of authors’ rights (seen in Europe as cultural and economic, but only the latter in the United States) and the protection of geographical indications (words like Champagne, Parmigiano, etc.) to name just those two.
Since the turn of the century, a number of developing countries have taken the view that ‘more time’ is not enough to adjust (or ‘calibrate’) their intellectual property regime. They focused their attention on flexibilities, such as limitations and exceptions, that countries may need to protect IPRs at a level and in a way that works for them, not so much as a group but individually. This led to the adoption of a comprehensive ‘Development Agenda’ at the World Intellectual Property Organization (WIPO). Other groups have also flagged the need for flexibility. Calls for flexibility led to the adoption at WIPO of a treaty in 2013 to allow exceptions to copyright rights for people who are blind, visually impaired or otherwise print disabled. A similar effort is underway for libraries and archives. These sorts of flexibilities are important for all countries, but they are too piecemeal. It’s doubtful if they really represent the kind of flexibility that is optimal to stimulate innovation (even of different kinds) around the globe.
The major IP-exporting countries have pushed in parallel for higher levels of protection and stricter enforcement of IPRs before national courts and at the border (when infringing goods are imported). On the global stage, whether at WTO or WIPO, this has been difficult. Efforts to ‘harmonize’ global patent rules have basically failed and a push for a new treaty to protect broadcasters seems to have hit a stumbling block.
Efforts to increase protection thus shifted to smaller groups. Initially, there were ‘TRIPS-plus’ rules added to bilateral trade agreements, and in a few regional ones as well (such as NAFTA, the agreement between Canada, Mexico and the United States). The next stage was to create groups of like-minded countries, an approach dubbed ‘country club’ (by Gervais). As with a country club, founding members write the rule book and then invite others to join, accepting the rule book as a condition of membership. This was the process used for the now defunct Anti-Counterfeiting Trade Agreement (ACTA). It was also used for the Trans-Pacific Partnership Agreement (TPP). Both those ‘trade’ agreements are perhaps best seen as intellectual property and trade agreements.
Even within multilateral organizations, like-minded groups tend to dominate. Developing countries have created a fairly unified front within WIPO and at the WTO (on some issues at least), and only the 28 WIPO members (out of 187 at the time) that were already committed to the protection of GIs were allowed to vote on the new version of the Lisbon Agreement (adopted in May 2015) that creates a registration system for GIs. This raised a number of questions, including who should pay to administer agreements that are only supported by a fraction of the membership.
The profound institutional and substantive shifts afoot matter a great deal. Without copyright or something like it, it may well be impossible for professional creators (such as songwriters or novelists), journalists and others to make a living, a major loss for everyone. Without a system to create market-based incentives for new drugs, the development of pharmaceuticals will be halted. Yet that does not mean that the discussion on the proper scope and structure of copyright law, limits on patent rights and the development of alternative models should not continue. In the pharmaceutical field, an effort is underway (and visible in the TPP text) to add to and almost replace patent rights by preventing reliance on clinical data when approving a generic version of a pharmaceutical–whether or not it is still protected by patent. Exceptions to exclusive copyright rights in the online environment, including new licensing systems, are being considered. And the list goes on.
It would behoove every law school to teach intellectual property, both domestic and international, and to foster research in this area. In an ideal world, IP would be a mandatory subject. True, there is already quite a bit of IP research in much of the industrialized world–though not often enough with a true international focus. At its heart intellectual property impacts innovation, creativity and the control of knowledge assets. It’s the business of every country and part of the world and so all should contribute to the global conversation about the future of intellectual property.
Susy Frankel and Daniel Gervais
PS A bit of advertising about two new books that may assist teachers and practitioners of international IP.
First, a book by the coauthors of this post entitled Advanced Introduction to Intellectual Property, which is available in print or online (the latter at a reasonable price for a law book, namely less than US$20).
Second, for a more thorough discussion a specific topics Edgar published a Handbook of Contemporary Research on International IP. This is not an encyclopedia but can be a useful companion book for a more detailed discussion.
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).