International IP Law in the
Domestic Legal Order
• Given the international dimensions of various
forms of intellectual property rights, there is a
need for a system of laws and institutions for
the regulation of intellectual property rights in
an increasingly global and international
system.
• International law, indeed, provides the
overarching framework for interfacing national
and regional regulatory systems on
intellectual property.
Sources of International Law
• In theory, the sources of international
IP law ought not differ from the sources
of general principles of international
law.
• Art. 38 of the Statute of the
International Court of Justice attempts
a summative list and categorization of
primary and secondary sources of
international law.
Art. 38 of the ICJ Statute
• (a)“international conventions, whether general
or particular, establishing rules expressly
recognized by the contesting states;
• (b) International custom, as evidence of a
general practice accepted as law;
• (c)The general principles of law recognized by
civilized nations;
• (d) Judicial decisions and the teachings of the
most highly qualified publicists of the various
nations.”
Sources of International law
• Categories a – c contain the so-called primary
sources of international law.
• On the issue of customary international law,
the most widely accepted definition is that it
consists of widespread state practice
accompanied by opinio juris sive necessitatis.
(this is the belief by a state that its compliance
is required by international law).
• Evidence of custom may be found in treaties,
participation of states in the resolutions of
international organizations, diplomatic
exchanges, statutes, court decisions, etc.
Treaties on IP Law
• A treaty, by definition requires two or
more states bound vis-à-vis one
another. A treaty may also encompass
an agreement between a state or
states and an international organization
such as WIPO, etc.
• There is no rule of international law
which might preclude a joint
communiqué from constituting an
international agreement.
Pacta Sunt Servanda
• The most important principle in the
interpretation of treaties is the doctrine
of pacta sunt servanda (agreements
are meant to be observed). This is
codified in Art. 26 of the Vienna
Convention on the Law of Treaties
which provides that “every treaty in
force is binding upon the parties to it
and must be performed in good faith.
The Importance of Treaties
in IP Law
• The importance of treaties in international
intellectual property law is that the law in IP
between states, regional bodies and
international institutions is predominantly
governed by treaties and conventions.
Customary international law and other
sources of international law play a negligible
role in international regulation of intellectual
property rights. It is possible that this state of
affairs is a result of neglect by international IP
lawyers.
Case law and International
IP Law
• Domestic judicial precedent, especially from
the US and powerful states may also have
enormous extra-territorial influence.
• With the emergence of international
arbitrations on various IP issues between
state and the judicial functions of the WTO
Dispute Settlement Board (DSB), it is
foreseeable that on the doctrines of consistent
application and legitimate expectations,
decisions of those panels on IP issues will
constitute part of the sources of IP law in both
domestic and international forums.
Scholarly Works as Sources
of International IP Law
• Scholarly works on intellectual property
law have been known to inform and
influence the decisions of both
international IP dispute resolution
panels and domestic courts. However,
it is too early to tell what influence
prominent authors will have on
international IP adjudication.
Customary International Law
as Source of Int. IP Law
• Customary international law has been of
limited impact in international IP law.
• Customary international law is defined both by
the evidence of state practice and by shared
perceptions of opinio juris sive necessitatis.
Generally speaking, rules of customary
international law evolve over long periods of
time as nations engage in more or less
consistent patterns of conduct which reflect
their shared perception of the required
behaviour in particular situations. An example
of emerging CIL in IP is internet regulation.
CIL and Internet Regulation
• In the area of electronic commerce,
especially the internet, states have
evinced a preference for private-sector
based self-regulation to legislative
solutions. Codes of conduct, guidelines
and enforcement mechanisms
developed by the private sector
suggest the emergence of a non-treaty
based regulatory system.
General Principles of Law
• Outside treaties, general principles of law
constitute the most important source of law in
international law. More importantly, they apply
to private persons and considering that most
IPRs are held by private persons, the scope of
applicability of general principles of law is
quite significant.
• General principles of law refers to principles
of law which are common to the different legal
systems of the world. Such principles may aid
arbitral bodies in the interpretation of treaties.
Egs include estoppel, acquiescence, etc.
The Domestic Application of
International IP Law
• It is one thing for a state to accede to a treaty
and another thing to figure out how the treaty
is to be applied in the domestic arena.
• The question thus is how does international
treaties on IP law take effect in the domestic
arena?
• The rule of thumb is that the place of a treaty
in the internal legal order of a state is
determined by the state’s constitutional law.
Domestic Application of
International IPR law
• There are two contending theories on
the application of international treaty
law at the domestic level.
• The first is the monist theory and the
second is the dualist theory.
• Where the line is drawn between
precatory (judicially unenforceable) and
obligatory (judicially enforceable) treaty
provisions is a matter of domestic
constitutional law.
The Monist Theory
• The monist theory conceives of norms or laws
in a hierarchical and unified order. In this
“pecking order”, international sits atop with
other forms of laws such the national, the
provincial or state, the municipal, etc taking
their positions in a descending order.
• In theory, treaties and conventions have direct
effect and applicability in the various domestic
levels without any need for a transformative
enactment. Monism professes the selfexecuting capacity of treaties.
The Dualist Theory
• The dualists contend that the Parliament of a
state is sovereign and as such, treaties
negotiated and acceded to by states have no
effect in the domestic legal order unless and
until the national Parliament has expressly
incorporated and re-enacted those treaties
into local law. Thus, while the making of
treaties is an executive act, the performance
of its obligations, if they entail alteration of
existing domestic law, requires legislative
action.
The Monist Theory
• Monism posits the direct applicability and
effect of treaties in the domestic legal order.
• In practice, however, the rules are not very
straightforward. It would seem that domestic
structures may delay or frustrate the direct
effect of treaties in states that profess
monism.
• For example, the United States is
constitutionally a monist state. It’s Constitution
states that “all treaties [of the US] shall be the
Supreme law of the land’). Yet, some treaties
it acceded lack automatic effect in the US.
19 USC 3512 & Suramerica
• For example, in various judicial decisions, US
courts have affirmed that “…the GATT does
not trump domestic legislation; if the statutory
provisions at issue here are inconsistent with
GATT, it is a matter for Congress and not this
Court to decide and remedy.”
• The confusion surrounding which treaties
have direct effect and those that do not in a
monist constitution has given rise to various
theoretical formulations.
Private Rights and Monism
• The doctrine or principle most often relied by
the courts in determining whether a treaty is
self-executing or not is to ask whether the
treaty creates a private right of action and
there is no apparent source outside the treaty
for the plaintiff’s right of action.
• The problem with this test is that treaties
create private right of actions in IPRs but it
cannot be said that “there are no apparent
sources” of the plaintiff’s right of action
outside of the treaties.
Private Rights & Monism
• Consequently, the line drawing exercise is
difficult. It has been suggested, however, that
the best place to start is to distinguish
“justiciablility” from the “intent-based” branch
of the self-execution doctrine and recognize
that what is called for in the “justiciability”
cases is a constitutional separation of powers
analogous to a political question decision.
• It cannot be gainsaid that the volume of
scholarly writings on this subject has not
really resolved the confusion.
Vazquez and the 4 Doctrines
• Vazquez has argued persuasively that “much
of the doctrinal disarray and judicial confusion
is attributable to the failure of courts and
commentators to recognize that for some time
four distinct ‘doctrines’ of self executing
treaties have been masquerading as one.”
• The four doctrines offer legitimate reasons
why some treaties may not have direct effect
in the municipal legal order.
The Four Doctrines
• Legislative action is necessary if:
• (a) the parties to the treaty intended that the
treaty’s objects be accomplished through
intervening acts of legislation;
• (b) the norm the treaty establishes is
“addressed” as a constitutional matter to the
legislature;
• (c) the treaty purports to accomplish what
under the Constitution may be accomplished
only by statute;
• No law confers a right of action on a plaintiff
seeking to enforce the treaty.
Monism in Practice
• In addition to the four doctrines posited by
Vazquez, some monist states often reserve
for themselves expressly the ultimate powers
of determining the rank or status of a treaty
vis-à-vis domestic laws.
• In making such reservations, it is not unusual
for considerations of self-interest to be
accorded significant weight. This policyoriented approach makes it difficult to theorize
on the applicability of international IPR
treaties in the domestic arena.
Monism in Europe
• Theoretically, international IPR treaty
obligations have direct effect in EU states,
provided the obligations are precise and
unconditional.
• This means that for a trade agreement such
as TRIPS to enjoy direct effect, it must not be
subject to any measures.
• In actual cases, however, at least with regard
to the GATT, there is need for restraint in
rushing to the conclusion that such
agreements have direct effect.
Monism in Europe
• By the Decision of 22 Dec. 1994, the Council
of the European Community ruled that “by its
nature, the Agreement (Uruguay Rounds)
establishing the WTO, including annexes
thereto, is not susceptible to being DIRECTLY
invoked in Community or Member States.”
• The short point thus is that the TRIPS
Agreement, notwithstanding the Monist
credentials of EU states, has no direct effect
in EU.
Monism in EU
• Under EU Law, a provision or treaty is said to
have direct effect in Member states if in
addition to creating private rights which an
individual or institution may assert before a
national or community courts, is unconditional
and unambiguous.
• There is thus a two-tiered test. The first tier is
to examine the purpose and nature of the
agreement to see if these exclude direct
effect. There is a presumption in favour of
direct applicability.
Monism in EU Law
• The second step is to determine whether the
agreement is unambiguous and unconditional
to warrant the inference that it was meant to
have direct effect.
• By this approach, various ECJ decisions have
upheld the direct applicability of some treaties
and conventions concluded on behalf of the
Community.
• On the other hand, it was by this approach
that in the International Fruit case, the EU
held that GATT was not directly applicable.
Monism in EU
• One week before the signing of the WTO
Agreements, the Commission submitted a
question to the ECJ asking whether the
Commission has the power to conclude the
WTO negotiations on behalf of the
Community.
• In its Decision, the ECJ held that the
Commission and Members states were jointly
competent to conclude, in particular, the
TRIPS agreement as a whole.
Monism in Europe
• If the Community had treaty-making power as
determined by the ECJ, do those agreements
enjoy direct effect?
• The distinction here is that while GATT had a
provisional character and consensual dispute
settlement procedures (factors which create
ambiguity and thus result in lack of direct
effect), the WTO regime is different.
• Unlike GATT, the WTO is a legal personality
and the juridicalization of its processes
strongly suggests that it may have direct
effect in EU.
Monism in EU
• Given that several articles of the TRIPS
Agreement require its signatories to
comply with provisions of other IPR
treaties, it arguable that accession to
TRIPS is tantamount to accession to
those other treaties which have been
incorporated by reference by
WTO/TRIPS.
Ratifying Acts and Monism in
EU
• The ratifying Acts of the EU make it
clear that TRIPS provisions are not to
have direct effect in EU.
National Application of Int.
Law in ‘Dualist’ States
• Like the monist schools, it is the constitutional
framework of a state that determines the
degree to which international IP law is applied
in any given circumstance.
• In Canada, as in other federal and dualist
states, the situation is somewhat complex.
Where a principle or obligation in international
IP law derives from CIL, the adoptionist
approach prevails. Where the obligation
derives from a treaty, the doctrine of
transformation is applicable.
Dualism
• The need to transform treaty obligations into
domestic norms by way of statute gives rise to
important constitutional considerations in
Canada and in other federal states.
• The first task in this process is to determine
which level of government has legislative
competence in respect of Canada’s
international obligation.
• The central or federal government is generally
regarded as having exclusive international
personality in the sense that only it may bind
the state to an international agreement.
Dualism
• The federal government has the
exclusive power to make treaties. This
rests on 3 considerations: the
principles of international law relating to
the power of component parts of
federal states to make treaties;
• the constitutions and constitutional
practices of federal states;
• The Canadian Constitution and
constitutional practice.
The Principles of Int. Law
• The question whether the members of a
federal union can make treaties or
international agreements has been studies at
length by the ILC, and by various experts on
the law of treaties.
• The ILC has taken the view that the question
whether a member of a federal union can
have a treaty-making capacity depends upon
the constitution of the country concerned.
• International law cannot by itself decide the
question. The answer is to be found in the
constitution of each federal state.
The Const of Federal States
• The majority of federal constitutions across
the globe reserve to the federal government
the responsibility for the conclusion of
international agreements and make it clear
that the constituent parts do not possess this
right.
• However, Switzerland, U.S., Germany and
Russia are federal states which constitutional
practices allows constituent parts to enter into
certain types of agreements with foreign
states.
• In such cases, there is always federal control.
Implementation of
International Treaties
• This is the process of giving effect to a treaty
within the national legal system. In Canada,
the vast majority of treaties have to be
implemented by legislation.
• This is the result of the constitutional
separation of powers. Although the executive
has the prerogative of concluding treaties, it
cannot make law. As a result, a treaty made
by the federal government will bind Canada
as a country, but its provisions do not affect
internal law until they have been implemented
by legislation.
CIL and Treaty Law
• A distinction must be drawn here between CIL
and treaty law.
• On CIL, there is no need for transformative
legislation. The courts simply adopt the CIL as
part of Canadian law.
• With respect to treaty law, the approach is one
of transformation.
• Some treaty provisions require administrative
enforcement by government officials, which
may be done without changes to Canadian
law.
Two Methods of
Transformation
• The first one is to incorporate the text of the
treaty into domestic law, either in toto. The
treaty then becomes a part of Canadian law
and is the source of rights and obligations.
• The second method is to incorporate the
substance of the treaty into Canadian law.
The treaty does not become a part of the
domestic law; it confers no rights and imposes
no obligations. The source of rights and
obligations is the local law that reflects the
substance and essence of the treaty norms.
Limitations of the 2nd Method
• Under the second method, questions may be
raised as to whether the treaty has in fact
been implemented.
• The test proposed by Laskin C.J.C. is that
“implementation must be manifest and not
inferred. The courts should be able to say, on
the basis of the expression of the legislation,
that it is implementing legislation.” Capital
Communications v. CRTC.
• The implementation of treaties in a federal
state poses some challenges.
Implementation of Int IP Law
in Federal States
• The question that often arises in dualist
states is to what extent does the
division of legislative powers contained
in sections 91 and 92 of the
Constitution Act (or similar provisions
or practices in other states) influence
the country’s obligations, particularly in
the areas of IP where international
undertakings is increasingly the major
source of domestic law?
A.G. Canada v. A.G. Ontario
• In 1935, Canada ratified three
conventions prepared by the Int Labour
Conference. The Parliament proceeded
to pass legislation in accordance with
the provisions of the conventions. On
appeal from the SC, the Privy Council
advised that the legislation was ultra
vires the federal Parliament; that
legislative competence was vested in
the legislatures of the provinces.
Provinces v. International
• What happens when there is a conflict
between the state’s obligation and a domestic
(provincial) law?
• May the provinces legislate in violation of
international?
• An understanding of the inter-relationship
between international legal norms and the
domestic legal system is of great importance
to lawyers in an interdependent world
characterized by complex transnational
transactions.
International IP law in
Canada
• Following ideas inherited from Britain,
Canadian courts have applied an admixture of
transformation and adoption. Even in
England, the bastion of transformative
doctrine, certain international legal norms
apply without the necessity of a transformative
act of Parliament. As Lord Lyndhurst,
speaking for an unanimous HOL declared in
1853, “the law of nations, according to the
decision of our greatest judges, is part of the
law of England.”
International Law in Canada
• The doctrine of transformation only
goes back to 1876 in the judgment of
Cockburn C.J. in R v. Keyn.
• In Canada, after a careful review of
Canadian case law, Professor
Macdonald has posited that Canada
has the same approach as England.
• See the Foreign Legations Case.
Provincial v. International
• Prof. Vanek and Justice La Forest have both
argued that the provinces have no power to
legislate contrary to international IP law.
• The incapacity of Canadian legislatures to
enact laws contrary to international law is
clearly suggested in a passage of the decision
of the Privy Council in Croft v. Dunphy.
• However, Prof. Macdonald disagrees. In his
view, within there spheres of competence,
provincial legislatures are supreme.
Provincial v. International
• The dominion and provincial governments
enjoy equal and plenary powers within their
individual spheres of competence; thus if one
may violate international law, so may the
other.
• If the English Parliament legislates in
unambiguous terms contrary to customary
international law that legislation is valid.
• There is no reason to believe that the English
rule of the supremacy of Parliament does not
apply to Canada.
Provincial v. International
• The English Parliament can override treaty
obligations with clear legislation; so may
Canadian Parliament.
• The supremacy of Canadian federal statutes
over treaties was recognized in the Swait
case.
• In sum, Prof. Macdonald argues persuasively
that federal and provincial legislatures, in
exercise of their supremacy, may legislate in
violation of any form of international law.
National v. International
• The question here is whether the federal
Parliament may legislate contrary to
international law.
• There is little doubt that dualist states have
supreme powers to determine which
international treaties would have effect in the
state. This may be by express legislation
against a treaty and /or through the
phenomenon of unimplemented treaties. In
Canada Labour Relations Board case, the
court held that a treaty may not alter local law
without legislative implementation.
Treaty Interpretation
• In the interpretation of statutes that implement
treaties, rules of statutory interpretation apply.
• In addition, however, the doctrines of
consistent interpretation and legitimate
expectation combine to yield an interpretative
stance that is more conducive to consistency
in the international legal order.
• The tendency of most courts, thus, is to take a
more international approach to the
interpretation of statutes that implement
treaties.
Treaty Interpretation
• In given statutes that implement treaties an
international flavour, questions are often
raised as to what range of sources the court
should limit itself in discerning the intent of the
treaty. In the National Corn Growers Case, the
SC held that the treaty itself and the travaux
preparatoires may be referred to in cases of
ambiguity.
• The same approach was also adopted in the
Pushpanathan case.
Unimplemented Treaties
• Although the courts have said that a
treaty must be implemented by
legislation in order to change existing
Canadian law, they have not wholly
excluded the influence of
unimplemented conventions or treaties.
• Where, through the interpretive
function of a court, a treaty obligation is
invalidated, what happens to Canada’s
obligation at international law?