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).
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.