Overview
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Starting point for IP governance is domestic though the subject matter of IP (i.e. the intellectual resources in Q) transcend international borders.
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There are mechanisms which internationalize IP governance to some extent:
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CR: Berne Convention, Universal Copyright Convention and TRIPS. Copyright is protected in all member countries (i.e. BC, UCC countries, TRIPS also?)
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Patent: int’l conventions don’t confer int’l protection but facilitate obtaining patent in other jurisdictions (i.e. file only once)
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Trademark:
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As well TRIPS (WTO Agreement) harmonizes domestic IP leg to a certain extent by imposing minimum standards of protection for CR, patent and TM on those countries which are WTO members (or want to become WTO members) [*NB: doesn’t preclude/prohibit protection ahead of the curve]. Note that these minimum standards were negotiated and thus embody some compromises. For example: (1) s. 7: proprietary protection should not only promote tech innovation but should do so in a manner ‘conducive to social and economic welfare’; (2) s. 8: permits Member states to implement public interest exceptions addressing public health, nutrition and other sectors of ‘vital importance’ to domestic levels of socioeconomic and technological development. [Problems with TRIPS after emergence of Internet technologies and borderless transactions see Adams article]
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Draft WIPO treaty on Copyright and Neighbouring Rights: U.S. has ratified it and has proposed that FTAA countries become party to it. Draft Treaty call for governments, inter alia, to:
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Provide adequate legal remedies to prevent circumvention of technology that protects CRed materials. U.S. passed the Digital Millennium CR Act in response (go after those who create and sell technology that allows one to circumvent encryption technologies). This Act is problematic b/c it may be incompatible with fair dealing provisions. How can researchers have access to the work for private study, or writers for criticism and review, if cannot even access it (w/o costly subscription) for example? SH: almost gives a CR owner the exclusive right to “use” (a right which they don’t have under the CR leg) [Note that there is now proposed “users” act in the U.S. which suggests that there should be fair-use exceptions for users of encryption technologies]
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“making available” provision: infringement anytime you “make available” a CRed work. In Canada, at present, music downloading not illegal b/c CA provides that one can make a copy for private use (quid pro quo = royalties on blank CDs). A “making available” provision would definitely make uploading (?) illegal. [SH: but not downloading??]
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DL says that Canada is considering ratifying the WIPO treaty and he thinks this is a problem (particularly b/c of the anti-circumvention rules I think. SH: note that Boyle doesn’t like these)
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Bilateral Agreements: multilateral agreements are not the only type of int’l governance tool. U.S. has entered into a number of bilateral agreements with nations such as Chile, Jordan and Singapore. These allow U.S. to extend its norms (e.g. anti-circumvention) to other nations. Trossow argues against these bilateral agreements, claiming that the are part of an endless ratcheting process that is ratcheting up global IP norms (i.e. not just norms of states party to the bilat agreement). At level of multi-lateral negotiations, these parties are going to push for revisions (Trossow says that other nations must resist!).
SH: to what extent might emerging international (bilateral and multilateral) agreements put pressure on Canada to change its domestic legislation? Might this pressure eventually undermine some of the balances that have been thought out? E.g. ratification of WIPO treaty and legislation which would address encryption technology might call fair-dealing provisions (and their broad interpretation in CCH into question). E.g. Harvard Mouse situation (might other countries exert pressure on Canada to allow patent on mouse?) E.g. music downloading
At the same time, cannot avoid “going to the bargaining table” (and perhaps making compromises there). As Adams points out, the jurisdictional uncertainty created by the Internet might create a situation where the U.S. is imposing its norms upon us (by taking jurisdiction even where Cdn works are implicated). This is definitely not preferable to an international governance regime which, though it may embody some compromises on our part, is more predictable, certain and balanced (and not U.S. law!)
| Jurisdictional problems
Yahoo! Inc. v. Ligue contre le racisme et l’antisemitisme
Yahoo!, Inc. v. Ligue contre le racisme et l’antisemitisme, (N.D. Cal. 2001), CB II p. 392
Facts:
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Yahoo!, an American co., has an auction site on which users can post items for sale.
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Individuals have posted Nazi-related propaganda and Third Reich memorabilia on the auction sites.
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Dft filed civil complaint against Yahoo! in a French court on the grounds that the auction site violates provisions of French Criminal Code which prohibit exhibition of Nazi propaganda for sale.
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French court ordered Yahoo! to “take all necessary measures to dissuade and render impossible any access via Yahoo.com to the Nazi artifact auction service and to any other site or service that may be construed as constituting an apology for Nazism or a contesting of Nazi crimes”.
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Yahoo! claims that cannot comply with French order unless it bans all Nazi materials from website, and that this would infringe its First Amendment Rights. It sought a declaratory judgment that Fr. court orders were not enforceable under U.S. law [b/c all of Yahoo!’s assets are in the U.S.].
Issue: Are these French court orders enforceable under U.S. law?
Held: No
Reasoning:
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Issue here: whether it is consistent with U.S. Constitution for another nation to regulate speech by a U.S. resident w/in the U.S. on the basis that such speech can be accessed by Internet users in that nation.
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U.S. court could not constitutionally make the order made by French court b/c can only censor free speech in order to avert a clear and present danger of imminent violence. (not the case here) An order such as the one at bar instructs Yahoo! to take efforts that will impermissibly chill and even censor free speech.
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This is a question of comity: The extent to which the U.S. honors the judicial decrees of foreign nations is a matter of choice governed by “the comity of nations”. Comity is neither a matter of absolute obligation, on the one hand, nor of mere courtesy and good will, upon the other. U.S. courts generally recognize foreign judgments and decrees unless enforcement would be prejudicial or contrary to the country’s interests.
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Internet allows one to speak in more than one place at one time. Though France has sovereign right to regulate what speech is permissible in France, U.S. court cannot enforce a foreign order that violates the protections of the U.S. Constitution by chilling protected speech that simultaneously occurs w/in our borders.
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Absent a body of law that establishes international standards with respect to speech on the Internet and an appropriate treaty or legislation addressing enforcement of such standards to speech originating w/in the U.S., the principle of comity is outweighed by the Court’s obligation to uphold the First Amendment.
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POINT: Case demonstrates how prv’t int’l law deals with “spillover” of intellectual goods from one country to another. Where IP is regulated only by domestic legislation, the ability of that domestic legislation to actually regulate will be limited by the relative willingness of foreign courts to recognize/enforce judgments based on it. In this case, the court did not enforce the French court order b/c the “principle of comity” was outweighed by the Court’s obligation to uphold the First Amendment. Different IP leg in different countries creates problems b/c intellectual goods transcend borders. DL: Is private international law an adequate tool? Are minimum standards mandated by int’l conventions a satisfactory alternative?
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Pro-C Ltd. v. Computer City
Pro-C Ltd. v. Computer City, [2001] Ont. C.A., CB II p. 401
Facts:
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Pro-C Ltd (ptf), a small Cdn company, mfd computer software called “Wingen” which was used to generate computer programs for Windows. The Wingen TM was registered in both Cda and the U.S. The ptf sold the software at wingen.com.
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Computer City was a large computer retailer with stores in the U.S. and Canada. It dvlpd an in-house line of computers called “Wingen” (they knew about the ptf’s software). The computers were not sold in Canada or online but were advertised on the Computer City website.
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Wingen computer owners seeking information or service for their computer mistakenly found their way to Pro-C’s website. The ptf claims that, b/c of this unwanted traffic to its website, it could no longer service its clients or effectively sell its programs, and that its business was destroyed. Claiming TM infringement.
Issue: TM infringement?
Held: No
Ratio:
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There was no “use” of the TM in Canada in association with wares.
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S. 19: no violation. Gives TM owner exclusive rights to use the TM throughout Canada in respect of the registered wares. Here, the dfts’ computer hardware was not sold in Canada, and is not being used in respect of the registered wares (i.e. ‘computer programs used to generate programs for Windows’). Thus, even before considering the def’n of “use,” s. 19 has no application to this case.
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S. 20: no violation. Infringement depends on “use”. Does advertising on Computer City website = “use”? NO.
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S. 4(1): A TM is deemed to be used in association with wares if, at the time of the transfer of the property in or possession of the wares…it is marked on the wares or their packages or it is in any other manner so associated with the wares that notice of the association is then given to the person to whom the property or possession is transferred. [SH: says nothing about use in Canada?? – but court implies that use in Canada is necessary, b/c if “use” in U.S. was enough, then court would have found infringement (there was definitely “use” in U.S.]
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Computer City’s passive website could not constitute a use in association with wares b/c no transfer of ownership was possible through that medium.
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Format for relief in this type of case may exist outside the TM Act (e.g. maybe in tort). If a party intentionally or negligently causes injury and the ingredients for establishing a tort can be proved, then the new technology of the Internet and websites can be readily accommodated. It is much more sensible to apply tort principles to accommodate new technologies than to distort statutory TM rights.
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POINT: no TM infringement b/c dft did not use ptf’s TM in Canada. Advertising on passive website wasn’t enough for “use” of TM in Canada wrt goods; needs to be marked on the goods or their packages at the time of transfer (SH: would have been enough for services). NB: court suggests that might be relief in tort. It is more sensible to apply tort principles to accommodate new technologies than to distort statutory TM rights.
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Comments (DL):
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Might have tried a passing-off claim. Probably wouldn’t be successful in Canada (b/c ptf would have to establish that dft used the mark in the relevant area (i.e. Canada) which it really didn’t. Might be possible in U.S. but no “home-ice advantage.”
Braintech v. Kostiuk
Braintech v. Kostiuk, [1999] B.C.C.A., p. 405
Facts:
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Kostiuk defamed Braintech, a Texas co.
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Texas has a long-arm statute which provides that one does business in Texas where commits a tort in whole or in part in Texas.
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Judgment against Kostiuk
Issue: Should judgment against Kostiuk be enforced in B.C.?
Held: No
Reasoning:
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Test is real and substantial connection
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Court adopts three pronged-test from American case (Zippo) for determining whether the exercise of special personal jurisdiction over a non-resident defendant is appropriate:
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dft must have sufficient ‘minimum contacts’ with the forum state; these contacts must be purposefully established.
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claim asserted against the dft must arise out of those contacts
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the exercise of jurisdiction must be reasonable
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re the internet specifically: the likelihood that personal jurisdiction can be constitutionally exercised is directly proportionate to the nature and quality of commercial activity that an entity conducts over the Internet (doing business on the Internet vs. posting messages on a passive site). Kostiuk fell in latter category
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The allegation of publication fails as it rests on the mere transitory, passive presence in cyberspace of the alleged defamatory materials. Such a contact does not constitute a real and substantial presence.
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Depends on what you are doing and where you are doing
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If you are selling products to other jurisdictions – be careful – might be subject to its laws
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POINT: Goldsmith’s claim that Internet can effectively be regulated by domestic legislation is not borne out. Other jurisdictions will not necessarily recognize the judgments of foreign courts (we see this in Braintech and in Yahoo!.). Needs to be real and substantial connection.
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Comment:
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Is there a better way to undertake these kinds of analyses? maybe WT is not a bad instrument for regulating these kinds of concerns (Adams article).
Regulation of the Internet
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Extra-territorial effects on the Internet. Some have argued that Internet was a “no-law land”; not meant to be regulated. Goldsmith argues that this is a fallacy. We can regulate the Internet and jurisdictions find a number of different ways to regulate the internet. E.g. if the company is doing business in your country – tax their assets. If not in their country – tax the Internet service provider. Plenty of means.
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Q has implications in terms of law school curriculum. So-called “internet scholars” have emerged. They have written texts on Internet law which cover many subject areas – prvt int’l law, IP, tort, K, etc. Counter: Internet issues should be taught in all the relevant courses. Braintech in PIL; Yahoo! in Constitution. A course on Internet law is akin to a course on Telephone law or Horses law.
Goldsmith, “Regulation of the Internet: Three Persistent Fallacies”
Goldsmith, “Regulation of the Internet: Three Persistent Fallacies” (1998) CB II, p. 417
Fallacy I: Cyberspace Is A Separate Place
Fallacy II: Territorial Governments Cannot Regulate the Non-Territorial Net
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Burk’s thesis: Internet will = spiral of lowered prices and lower production and eventually an underproduction of digitized goods. WHY? cheap, digitized products made in a territory with a permissive CR regime can be sent into territories with restrictive copyright regimes with impunity. Sheer volume of Internet traffic renders it nearly impossible for a territorial authority to regulate the cross-“border” flow of digital goods. As information producers in the restrictive territory are forced to lower prices to compete with offshore goods, the info-fostering incentives of restrictive CR regimes will be defeated and information goods will be under-produced
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Goldsmith: this view ignores the possibility of “indirect extra-territorial regulation” by governments. While gov’t cannot regulate all items crossing its borders (particularly its digital borders), it can achieve a great deal of control over illegal imports by imposing costs on persons and property w/in its territory.
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E.g. gray-market goods. U.S. can regulate domestic users and distributors of the gray-market goods by, for example, permitting valid TM and CR holders to sue gray-market distributors and users.
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E.g. flow of cheap goods made offshore under permissive CR regimes penalize in-state end-users who obtain or use the illegal foreign content. Regulate hardware and software through which Internet transmissions are received. Regulate Internet access providers and other firms that facilitate local transmission of digital goods.
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Burk’s fallacy rests in part on Fallacy I, i.e. the idea of cyberspace as a separate space, but “once one recalls that the Net consists of people using equipment in a territory, it becomes clear that the territorial gov’t can exercise force over these people and their equipment to regulate both territorial and extraterritorial transactions.”
Fallacy III: Optimism About Cheap, Plentiful Information
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Wendy Adams, “IP Infringement in Global Networks: The Implications of Protection Ahead of the Curve”
Wendy Adams, “IP Infringement in Global Networks: The Implications of Protection Ahead of the Curve” (2002) p. 423 CB II
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TRIPs agreement sought to harmonize IP norms by imposing universal minimum standards to be implemented in domestic leg of member states (Want to join? Must comply). While there are min standards, there is no “global law.” Member states are allowed to implement protections which are “ahead of the curve.” (i.e. stronger than the minimum mandated protections).
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At time of TRIPs promulgation, this wasn’t seen to pose any problem, b/c member states would have no incentive to legislate ahead of the curve. I.e. while the protections would be applicable to domestic imitators and foreign imitators who operate in the domestic market, domestic innovations would not necessarily receive equivalent protection once exported to foreign markets.
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But the Internet has changed that. TRIPs was very backward looking and didn’t anticipate or account for implications of new technologies. Internet = transactions are taking place in a borderless medium.
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When Internet disputes arise (e.g. Bob sells pirated goods from server in China to customer in Canada), litigants go to court in one state or another. BUT…Internet has created a situation of jurisdictional uncertainty that has destabilized territorial notions of protection in global networks (what court has jurisdiction in above example? Not clear at all). Courts have been addressing these uncertainties using solutions crafted from private international law, but these “ad hoc unilateral efforts…reach inconsistent results, with domestic innovators either over- or undercompensated in relation to foreign imitators.”
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E.g. U.S. court grants patent protection to “one-click” business method created by Amazon.com. Such biz methods not patentable in Cda. Barnes & Noble sets up in Cda using one-click method; U.S. purchasers able to access and buy on B&N website. If Amazon.com sues in U.S., what law applies? (law of place of server; law of place of buyer?). If former, no infringement = Amazon would lose some of the benefit of its patent in the U.S. (UNDER COMPENSATION). If latter, higher protections in U.S. would be imposed on Canada (OVER COMPENSATION)
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[I think (though I am not sure) that Wen is arguing that the min stds in TRIPs were negotiated with view to balancing interests of developing and developed nations, in particular giving developing nations some “wiggle room.” When net-exporters of intellectual goods (such as the U.S.) are able, through PIL, to enforce their increased protections outside their borders, this undermines the balance struck in TRIPs, and creates unfavorable conditions for developing countries’ industrialization, tech transfer, etc.].
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What is the solution? International rather than domestic dispute resolution. The WTO, even though it has been heavily criticized, presents a superior institutional alternative than domestic courts for balancing the competing concerns.
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POINT: Implications of protection ahead of the curve, Internet technologies, and the deficiencies of private international law mechanisms which allow domestic courts to assert jurisdiction in such a way as to extend their higher protections to foreign states, suggest that WTO might be an appropriate institutional alternative (i.e. to domestic courts).
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Regulatory institutions
J.H. Reichman, “Compliance with the TRIPS Agreement: Introduction to a Scholarly Debate” (1996) p. 470 CB II
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reviews submissions made to conference/meeting. These submissions raised a number of issues about TRIPS, its implementation, etc.
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E.g. Interface with competition law: Problem of relaxed anti-trust laws in industrialized nations (e.g. allowing pooled licensing agreements). This makes it harder for dvlping countries to access the most valuable new technologies. Also, concern that competition which is too strong will undermine the interests of IP rights-holders as guaranteed by the TRIPs agreements. One scholar proposes a minimalist international convention on competition law. Not detailed rules but two norms: (1) preserve market access and prevent anticompetitive exclusions and (2) prevent anticompetitive collaborations of competitors designed to raise prices (e.g. pooling and crosslicensing as a cover for a cartel).
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Impact of TRIPS on specific disciplines
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Patent: some say that increased patent protection in developing nations will create incentives for production of drugs to combat local diseases (e.g. of India). Others disagree, citing Italy as an example (has never been able to capitalize on introduction of strong patent protection for pharmas in 1978). Even in developed countries, will have to give up protectionism (SH: e.g. in Canada of drug-stockpiling before patent expiry. TRIPS required Cda to take this out of its legislation).
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Copyright: Two competing camps.
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(1) Strong protections necessary: need to stem losses to publishers in dvlpd countries from free-riding uses of ©’ed works in developing countries. Represents lost jobs and economic growth for U.S. economy which is already suffering due to the comparative advantages of the developing countries in a number of mfing sectors.
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(2) These strong protections are undermining the public interest: minimum protection standards are creating social costs for users. Traditionally, US © only justified to extent that it stimulated progress in arts and sciences by enriching public domain. This “cultural bargain” has given way to a trade-driven goal, which seeks to enhance the wealth and overall financial well-being of companies which invest in the production and distribution of ©’ed works.
| Implications of changes
What to do with traditional knowledge of indigenous peoples around the world?
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From a western perspective, indigenous knowledge (e.g. song or piece of art) might look like something copyrightable. A traditional remedy might look like something patenatable.
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This is a very different kind of resource. Might be impt enough to be attractive across int’l boundaries. It is a resource that is inadequately protected as an IP right and, in the first place, inadequately conceived of as an IP right.
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E.g. in Riley article “Song of Joy”. Traditional indigenous song. Sung at public concerts which were being taped. Fr. gov’t had CR in the tape and allowed Enigma (German) to take the song (“Return to Innocence”). Riley: there isn’t much he can do to get his resource protected through traditional CR rules….thus Enigma gets off scott free and even has a CR in the song.
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What are the problems according to Riley? Use this as way to consider the nature, parameters, justifications etc. wrt CR. Why doesn’t traditional CR doctrine “fit” this resource?
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Fixation/tangible medium – a lot of traditional resources are transmitted orally, etc. and not written down. Notion of fixation is anathema to the ongoing evolution of the song…song evolves over time according to various interpretations of it.
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Individual ownership – IP rights in western paradigm are individual rights (primarily); which indigenous person would be held to “own” the song? May be an individual who is responsible for the resource…but he cannot be said to own it. Indigenous people don’t usually have an ownership paradigm. E.g. traditional knowledge and pharmaceuticals – may be one certain person who has been trained to develop and use the traditional medicines – is this person the owner or is the whole people the owner? Paradigm generally doesn’t fit.
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Originality – don’t originate from any one person; originate from a collective. Romantic notion of authorship in western world doesn’t “fit” the creative processes which go on in intellectual knowledge.
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Teleology of indigenous goods – many indigenous intellectual goods are spiritual, etc. A totem pole is not necessarily an object of property – might need to be cared for, etc.
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Public domain vs Private domain – might not fit in either of these places. Public domain doesn’t fit – cannot put the song in the commons for free appropriation. Private domain doesn’t fit either –
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Patent for traditional remedies not novel therefore not patentable; but don’t want to say that it is free for public appropriation. If someone is going to profit from it in the western system, shouldn’t it be the indigenous people?
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Maybe a right of destination is important This however comes from moral rights attach to individuals justified b/c of personhood These notions don’t really fit. But tail end of destination is attractive – allowing some control over the way that resources are used. Giving the “people” a right to channel the way the resource is used.
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Right of publicity? A traditional IP right isn’t appropriate b/c limited in time. A people, however, is not limited in time.
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We seem to be pushing towards an alternative regime. Riley suggests that there should be an Indian copyright act. There should be some community-based governance tools. This will require a combo of traditional governance institutions and western governance institutions (like aboriginal title). Should probably be int’l instruments as well. But in order for these to have normative impact, must be implemented domestically and enforced!!
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This is very difficult but hopefully something we will undertake nonetheless.
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Profiting from indigenous knowledge is offensive and unjust (i.e. Song of Joy example).
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The solution has to involve the people in Q.
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Choice of governance instrument is difficult. If choice of governance is difficult even in standard regime – what to do about scope of patents, fair use, photocopying in libraries, technology circumvention, domain names, etc., then trying to use the same parts of the swiss army knife in another paradigm (camping to office) altogether will be very difficult.
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There is a lot of baggage that comes with our IP systems Locke Hegel. Novelty, obviousness, originality, secondary meaning, etc. They don’t particularly fit this other paradigm.
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Juxtaposition of market vs non-market and individual ownership vs collective ownership.
Lametti thinks that, for the most part, the IP system is working well. There are some challenges – e.g. protection of indigenous knowledge. He is a bit fearful for the future, however. WIPO treaty, for instance, is potentially a problem.
He doesn’t mind calling these rights “property rights”. BUT…property, according to Lametti, comes w/ a lot of strings attached. Users are part of the justifications and the history and ought to be considered in initial hurdles and scope.
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