A New Berne Convention?
A proposal was reportedly floated recently by Russia to use the G20 as a platform to revamp the Berne Convention. The Convention was last revised (on substance) in 1967, and an Appendix offering developing countries a labyrinthine path to issue compulsory licenses for translation and reproduction of books was added in 1971. The received wisdom is that the Convention would never be revised because unanimity is required to revise the substantive part of the Convention (Berne, art. 27(3)). The generally held view is that getting the current membership (165 countries as of January 2012) to agree to anything is simply impossible.
This led to the elaboration in the 1980s and 1990s of a possible protocol to Berne (not requiring amendment), which in turn became the WIPO Copyright Treaty, signed on December 20, 1996.
The backdrop for the proposed changes are the massive use of digital content of course and indirectly a recognition, as I’ve argued elsewhere, that copyright has traditionally been ill-equipped to deal with mass uses where the licensee is the end-user not a distributor or other professional. Even more so, when that end-user becomes a creator of content in his or her own right. See here for a discussion on excludability and here for a discussion of user-generated content (UGC).
The approach raises a question which I found much more interesting, namely whether the “ships passing in the night” approach currently used to advance international IP norms is the best way forward. I mean by this that “pro-IP” lobbies push for ACTA and other TRIPS-Plus agreements and national measures designed to elevate the level of protection while ”anti-IP” lobbies push for separate agreements, for example on print-disabled users or libraries.
I have indicated my support for exceptions for print-disabled users. However, I also indicated that I was unsure that the “pro” and “con” discourse is misguided. A true reform should include BOTH higher and/or clearer protection of copyright where needed AND new limitations to reflect changes since 1971 and inadequacies that need to be corrected. This would be normatively balanced and politically much more palatable.
Is the Russian proposal clever? Perhaps. Rhetorically at least. It leaves aside the “unanimity” language, which tends to signal the quasi-impossibility of moving forward, and replaces it with a search for consensus. If unanimity is near-impossible (per the received wisdom), consensus is not, as the WTO, which essentially functions on that basis, demonstrates each and every day. So, a consensus reform of Berne? Here, this would mean, however, a real negotiation instead of the development of competing norm sets. Lobbies in this field have not won models for the ability to compromise and negotiate.
I am not holding my breath, but definitely worth following.
Geographical Indications
The issue of geographical indications (GIs) will not go away. Some people are willing to pay more (whether or not they should is a different issue) for products that are produced in a certain region. There is at least a perception of higher quality or value, and this is what GIs and other rights (appellations of origin) aim to protect. Because GIs take time to emerge, many “Old World” countries have the advantage, as for French wines or cheeses. However, in the United States and many other “New World” countries, indications of this type (protected not as GIs per se but rather as collective or certification marks) are becoming commonplace: Napa or Niagara for wines; Vidalia for onions; Wisconsin for cheese.
Conflicts arise as when an indication is shared by two countries (“Pisco” shared by Chile and Peru) or when an Old World GI clashes with a New World non-geographic trademark (Budweiser for beer which may refer both to the Anheuser-Busch product and to the “original” one, Budějovický Budvar, from the Czech Republic).
The World Intellectual Property Organization has been operating an international registry of appellations/GIs since 1958, the Lisbon system. The system has flaws and may contain a number of administrative and substantive “irritants” which reduce its attractiveness to a number of countries. I took a detailed look at the system here. In December 2011, WIPO held meetings at which changes to the Agreement (a draft ”new instrument” reminiscent of the protocol to the Madrid Agreement on Trademarks). It made progress, according to the Chair.
The issue if also of interest to the developing world, which holds many GIs on products such as coffee, tea, cocoa, textiles etc. and several forms of traditional knowledge.
The issue is also on the WTO radar because articles 22-24 of TRIPS protect GIs (GIs in general if their use is deceptive; GIs on wines and spirits even without deception) and mandates negotiations on a registration/notification system for wines, a mandate extended to spirits in the Doha Declaration (para 18). The WTO made available proposals to establish such a system.
The obstacles are more apparent than real. Companies such as food giant Kraft, which use many GIs (but not as GIs) on their products (Italian cheeses etc.) are afraid of the potential impact on their brands. However, preventing the United States and other New World countries from engaging will not prevent the establishment of GIs in other parts of the world, thus potentially restricting their export markets. It would be ironic to some if the US, a champion of IP protection had to argue against GIs in bilateral treaties, as seems to be happening in the TPP context. More importantly, the matter could be resolved by establishing a “new” register (either from scratch or with a possibility for new members to challenge existing Lisbon entries) and/or grandfathering certain GIs as was done for wines in the EU-US Wine Pact (discussed here), and by removing the irritants mentioned above. This is one case where taking a hard look at preconceived notions might be useful.
Collective Management
The issue of collective management of copyright has moved from a relatively obscure and often ignored part of the policy agenda to the forefront. As music sales decrease, collective management in that field has continued to grow. As controls over individual reuse of text and image content has become impossible or undesirable (privacy or confidentiality of use), collective management of reprography has also grown exponentially. Collective management must respond by offering credible, efficient and transparent solutions, and not shroud itself in secrecy and generate mistrust. This calls for enlightened management and supervision by government where required. Canada offers a good, though imperfect, model (see here) and the Songwriters Association of Canada has put forward an interesting proposal (here). In my presentation at Columbia Law School (see the video here or read the text here), I compared various regulatory approaches. The lack of harmonization in this field is staggering, and has not been on the international IP agenda. Much of the international framework is based on private ordering by Collective Management Organizations (CMOs). But if CMOs want to be perceived as a major part of the solution to online copyright issues, such as the Google Books case, they, or those who oversee them, must do more.
It is a false dichotomy to say that there are exclusive rights on the one hand, and exceptions, on the other. Collective management is a middle zone, where uses are legal, not subject to individual authorization (most CMOs cannot refuse an authorization) but subject to payment. For a copyrighted work that has been legally put on the market by the right holder, this sounds better as a business model than trying to shut down web sites.
China
During my most recent visit to Beijing (May 2011), I visited Z Park and an incubator, Innovation Works, created and managed by Kai-Fu Lee’s with whom I had a good meeting. Like many other observers, I am amazed to see the resources and energy devoted to creating new enterprises, and the ability to pool key resources. Of course, the US still leads, by a lot, in global innovation, as do a number of European countries and Japan. The questions that remain open in my mind are whether the obstacles that the EU and US are putting on its own innovators (in particular the over-patenting of software and basic science and lobby-drive–as opposed to policy-driven—regulatory efforts) will slow them enough, so that others will catch up. China has issues of its own, in particular an educational system that favors very hard workers but fails to adequately promote individual creativity. The decoupling of individual freedom and individual innovation, in what Robert Reich has terms authoritarian capitalism, is a fascinating development. Typically, this has led to small or incremental inventions, but not big, transformational leaps.
Brazil and India have cards to play and I am looking forward to my upcoming trips to Bangalore and Rio in 2012 to see what’s changed there. Innovation is a global game. Proper policy may help.
Geographical Indications
Articles 22-24 of TRIPS provide protection for Gis. However, beyond protection for confusing or deceptive GIs (akin to the protection of trademarks), there is only higher protection for wines and spirits, and an agreement to negotiate a possible registration and/or notification system for wine-related indications, a mandate extended to spirits in the Doha Declaration. A higher level of protection of protection is provided in the 1958 Lisbon Agreement, but that Agreement has not been popular among “New World” countries especially the United States.
The issue has surfaced in many ways and many places. WIPO is updating Lisbon. Read WIPO’s proposals here and my comment here.
The issue is on the agenda at the WTO and their notification proposal is available here.
But now it is also part of the (not very public) negotiations on the Trans-Pacific Partnership, an ACTA-Plus effort to update not just enforcement but also substantive TRIPS rules. See Jimmy Koo’s take on it here.
It is hard to discuss this issue on the merits. Lobbying by major users of Old World marks outside of their GI context, from Kraft to Budweiser, on the US side, and similarly heavy efforts by the wine, spirits and cheese industries in Europe have made finding compromise difficult. A detailed analysis of the Lisbon system and possible updates to it (see here) shows that the issue is much smaller and easier to solve than it seems and, much like the Wine Pact, a list of exceptions could deal with the few major issues. Lisbon, like the Madrid system for trademarks, could be adapted to meet worldwide needs, a system that would use existing expertise on GIs in the Lisbon context and avoid creates a new notification-only system at the WTO with undetermined legal effect.
French-language book available
A French-language guide to the TRIPS Agreement is available from Larcier (Brussels) under the title L’Accord sur les ADPIC. Sections on the impact of TRIPS in Belgium and France were contributed by Isabelle Schmitz.
US/China Panel Report is Out
The Panel Report in the US/China dispute was released on January 26, 2009. It is available at http://www.wto.org/english/news_e/news09_e/362r_e.htm.
As most observers had predicted, the Panel accepted the US argument that China could not deny copyright protection to censored works. While the Berne Convention, most of the substantive provisions of which were incorporated into TRIPS, allows countries to control the dissemination of copyrighted works, it does not allow them to deny copyright protection to such works. Article 5(2) of the Convention also provides that the “enjoyment and the exercise of [the rights protected under the Convention] shall not be subject to any formality.” The Panel declined to rule (“as a matter of judicial economy”) on whether the censorship review was a formality, noting that there was evidence of the availability of enforcement during the review process. There is disagreement on this point. The Panel based its ruling mostly on Article 5(1) of the Berne Convention, which provides in part that “authors shall enjoy, in respect of works for which they are protected under this Convention, the rights specially granted by this Convention.” The Panel report also contains a variety of questionable dicta (for example on Article 6bis) but none that should lead to a reversal by the Appellate Body, should the report be appealed. The Article 5(2) matter may, however, be reviewable on appeal.
If the report is adopted by the Dispute Settlement Body), China would have to provide copyright protection to censored works. It is unclear whether this will have much effect in practice because distribution of those works would be illegal for other reasons.
The second US claim was that China’s disposal of counterfeit goods violated Articles 46 and 59 of TRIPS. TRIPS is designed to ensure that seized infringing goods do not re-enter the channels of commerce. Authorities must have the authority to order their disposal or destruction. The first issue under this claim was whether China may auction off or give counterfeit goods to charitable organizations such as the Red Cross. The Panel found that this form of disposal of infringing goods was acceptable, in part because safegaurds were in place.The evidence showed that approximately half of the cases of seizure led to destruction of the goods. The Panel did take issue with China’s public auctions of infringing goods after “eradication” of the infringing mark. The TRIPS Agreement does not allow for re-entry into the channels of commerce of infringing goods after the “simple removal” of the infringing trademark other than in exceptional circumstances. The Panel noted that the “release into the channels of commerce of such goods, while they may no longer infringe upon the exclusive rights in Article 16 of the TRIPS Agreement, will not comply with the requirement in the fourth sentence of Article 46, as incorporated by Article 59. “ Auctions were not exceptional, because a Member must show why and how a measure is “exceptional” not just that it is not applied frequently.
The United States had also challenged the fact that no criminal penalties are available in China under a number of quantitative and qualitative infringement thresholds. The Agreement provides that criminal penalties must be available for infringements “on a commercial scale.” The Panel noted that US had not challenged the principle of establishing predetermined thresholds but rather the level of those thresholds and how they are measured under Chinese law. The Panel concluded, first, that “on a commercial scale” was essentially synonymous with “commercial activity.” It found that China’s approach was acceptable (mostly based on the evidence submitted). It also noted that TRIPS left some flexibility to WTO Members.
The Book is Ready
The Third Edition of the TRIPS Agreement: Drafting History and Analysis, by Daniel Gervais, was published at the end of November 2008 by Sweet & Maxwell. It is almost double the size of the third edition, reflecting a significant growth in TRIPS-related scholarship and litigation.
