TABLE OF CONTENTS FOREWORD Page Fair Use of Copyrighted Works in the Digital Age Khanh Pham and Shushik Mkhitaryan ……………………… 1 Collective Management of Copyright and Related Rights in Music: A Case Study of the United Kingdom and Ghanaian System Alfred Kumi-Atiemo …………………………………………… 21 Technological Protection Measures for Digital Works: A Legal Analysis Márcio Mello Chaves ………………………………………… 43 Fashion Forward or Fashion Victim: Intellectual Property Protection in the Fashion Industry Layne Randolph………………………………………………… 65 Economic Implications of Patent Claim Scope Eno-obong Usen ……………………………………………… 81 The Interface between Intellectual Property and Competition Law: Is the Refusal of a Patentee to License Anti-Competitive? Fanny Koleva ………………………………………………… -v- 107 Patent Ownership in view of Technology Transfer in GovernmentSponsored Research Dragan Ćorić ……………………………… ………….……… 127 Extraterritorial Technology in a Territorial Regime: Challenges after Cardiac Pacemakers v. St. Jude Medical Emily J. Zelenock …………………………………………………..… 141 The Legal Aspects of Technology Transfer Offices in Arab Public-Funded Universities Ahmed Abd Eltawab Elsisi and Shaikha Nasser Ali Al-Akzam … 159 The Optimal Scope of Patent Protection in Common Law and Civil Law Countries Zhao Wenhua and Zhang Zhu …………………………………..… 179 The Madrid Protocol for Trademark Registration: Would it be Convenient for Bolivia? Pablo Kyllmann …………………………………………….……… 207 A Comparative Study of Well-Known Trademarks Protection in Italy, Pakistan and Uzbekistan Saad Nusrullah, Luigi Mastroianni and Djakhagir Aripov … 221 Color and Combination of Colors as Trademark Chiara Gaido and Giselda Metaliaj …………………………..… - vi - 263 Can the Owner of a Mark Registered for Toy Cars Prohibit the Manufacture and Sale of Toy Cars which constitute Naturalistic Reproductions of Real Cars on which the Owner’s Mark appears? John Graziadei and Angela Saltarelli …………………………… 287 Analysis of the Geographical Indications (GIs) in the United States of America-Colombia FTA and Choice of Forum in Adjudicating a Geographical Indication’s Dispute Sofia Rodriguez-Moreno …………………………………….……. 319 Geographical Indications: A Review of GI Protection in Switzerland Larisa Thommen …………………………………………………… 333 The Patent Rights Enforcement in China Feiyu Lei ……………………………………………………………. 351 The Protection of Intellectual Property Rights (IPRs) in the Pharmaceutical Market after Patent Expiration. An Analysis of the Reverse Payment Settlements in Light of Competition Law Karoline Brandi and Federica Lorenzato …………………….… 367 Interplay between IPRs and Competition: Case of Information and Communication Technology Standards (ICT) Standards Larysa Kushner ……………………………………………………… 397 Challenge(s) of Access to Patented Technologies Incorporated in Information andCommunication Technology Standards: Application of Competition Law and Policy Simon Z. Qobo ……………………………………………………… - vii - 413 IPRs Infringement on Trade Exhibitions in China: In Search of a Practical Solution Hua Yu, Qing Yang ………………………………………………… 433 Access and Benefit Sharing System under Thai Plant Variety Protection Act 1999 Setthabut Ittithumwinit ……………………………………………. 451 The Public Domain and Traditional Knowledge: Friends or Adversaries in the Quest for Development? Ewan Danny Anthony Simpson …………………………………… 463 Creative Commons of Indigenous People: An Appraisal of the Public Domain Tensions and Customary Practices Yewande Gbola-Awopetu …………………………………………. 475 LIST OF PARTICIPANTS ………………………………………………. 487 - viii - FAIR USE OF COPYRIGHTED WORKS IN THE DIGITAL AGE by Khanh Pham and Shushik Mkhitaryan ABSTRACT Copyrights have been granted with the objective of providing more incentives for creative activities. However, as the ultimate goal of copyright legislation is not only protecting the right-holders but as well the interest of the public at large, certain exceptions and limitations (including fair use) to those exclusive rights have been introduced since the dawn of copyright. In the digital age, along with the modernization of the traditional copyright system, the copyright-holders also have sought for supplementary protection from technological measures and contract law. This has resulted in changes in international and national legislation as well as case law. These changes help to reassure the ―survival‖ of copyright system in the new context but also threaten to restrict the fair use doctrine. The scope of fair use as well as the interaction between ―fair use‖ and ―contracting around‖ in the digital era is not yet decided. Nevertheless, in order to protect the legitimate beneficiaries of fair use, copyright legislators in the U.S. and EU have codified certain exceptions for the protection of technological measures and some courts have given pro-―fair use‖ rulings. Based on this analysis, certain recommendations regarding anti-circumvention rules and the treatment of fair use doctrine v. contract doctrine for two developing countries, namely Armenia and Vietnam, is also one of the expected contributions of this paper to the broad topic. 1. WHAT IS COPYRIGHT? Copyright is a bundle of exclusive moral and economic rights of the author to his works. The granting of copyright is considered as a constitutional policy of promoting the progress of science and the useful arts.1 Works which qualify for copyright protection shall be the unique outcome of a creative activity in the domain of science, literature and art. Copyright protection provides two types of rights in the work: moral rights and economic rights. Moral non-economic rights of the author are his intellectual and personal ties to the work, granting the author the so called ―right of paternity‖ and ―right of integrity‖. Moral rights are not transferable and not subject to exhaustion. Along with moral rights the author has economic rights. Economic rights provide the economic interests of the author giving the author an exclusive right to authorize or to prohibit the use of his work or copies thereof. The right of receiving remuneration is an incentive for creation. In the contrary to moral rights, economic rights are transferable and are subject to exhaustion. It is with economic rights, that the concept of exceptions and limitations to copyrights arose. 1 See, for example, Art I of the U.S. Constitution states that Congress shall have the power ―to promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries.‖ 2 Fair Use of Copyrighted Works in the Digital Age ________________________________________________________________________________ 2. FAIR USE AND OTHER LIMITATIONS TO COPYRIGHT Protecting authors‘ rights had been the main reason of the existence of copyright law, which however is not the ultimate objective of copyright law; it is as well a method to achieve the purpose of ensuring the public‘s access to copyrighted material and promoting the public welfare.2 Therefore, copyright owners‘ rights are not untrammeled; they are subject to important exceptions and limitations or, as it is called in the American system, the ―fair use‖ doctrine. Fair use is traditionally defined as ―a privilege in others than the owner of the copyright to use the copyrighted material in a reasonable manner without his consent.‖3 Nowadays, it means that the use of a work shall be allowed without the consent of the author and without remuneration, however with the obligatory mention of the author's name and the origin of the work, provided that it is not of prejudice to the normal exploitation of the work and legitimate interests of the author to his work. As the original source of the term, the Anglo-American approach highlights more the idea of free use and freedom of speech. Some infringements are regarded as worthy of protection because they promote the free discussion about the quality of the work (e.g. criticism, review), or they enhance the general public understanding of literature or the art (e.g. parodies, satire).4 The purposes of copyright exceptions are various. The author‘s consent to a reasonable use of his copyrighted works has always been implied by the courts as a necessity to reach the objective of promoting the progress of science and the useful arts, since a prohibition of such use would prevent subsequent authors from attempting to improve upon prior works.5 The exceptions and limitations may be used to serve some public interests of more significance than the private benefit of the copyright owner. In this case, the realization of copyrights should not be dependent on the latter‘s consent. Some exceptions that reflect these wider interests include education, news reporting, efficient public services or the protection of the rights of the disabled.6 Another justification for the existence of ―fair uses‖ is that copyrights must come to an end somewhere. The rights should not extend into the regulation of wholly private or non-commercial activities, to over-protect the right holder‘s interest. Exceptions should cover common and socially beneficial uses of copyrighted works where formal permission requirements would impose excessively burdensome transaction costs on all parties.7 2 L. Luo, Legal Protection of Technological Measure in China, in EIPR Issue 2. 2006, 101. F.M. Abbott, T. Cottier and F. Gurry, The International Intellectual Property in an Integrated World Economy, Aspens Publisher, New York, 2007, 423. 4 E. Barendt, Freedom of Speech, Oxford University Press, 2005, 255. 5 F.M. Abbott el. al., supra note 3, at 423. 6 L. Edwards, Law and the internet, Hart Publishing, Portland Or., 2009, 204. 7 Ibid., at 204-205. 3 Khanh Pham and Shushik Mkhitaryan 3 ______________________________________________________________________________ As mentioned above, traditionally the fair use doctrine can be justified in case when the transaction costs are too high and prevent copyright owners and users from entering a license. But modern technologies have enabled copyright owners and users to negotiate individual licenses for digital works at a low cost,8 therefore, criteria to define a fair use exception must be focused more on the social and cultural aspects of copyrights. Moreover, to meet the original purpose of copyright system, the right-holders must have exclusive rights to fully exploit the economic potential of the work. That is why the fair use doctrine has always precluded a use that ―supersedes‖ the use of the original.9 Fair Use in International Treaties: The Berne Convention and TRIPS Agreement permit exceptions for fair use of copyrighted works. The availability and scope of the exceptions remain, for the most part, subject to national law. The Berne Convention, being the first international convention on the protection of literary and artistic works, provides that any type of use, but for the purposes of private use, educational and scientific research, etc. shall be subject to authorization and payment. Exceptions for fair use have been mentioned in various specific conditions, namely Art. 2bis (2) regarding press reporting of publicly given addresses; Art. 10 regarding quotation and use of work for teaching; Art. 10bis regarding reproduction of ―current affair‖ articles and use of work in reporting current events; Art. 11bis (3) regarding ephemeral recording by broadcasters. However, the ―three-step-test‖ set out in Art. 9 (2) of the Convention is the general guidance for member states to codify the fair use doctrine. Member States of the Convention can provide exceptions (1) in certain cases; (2) which do not conflict with a normal exploitation of the works; and (3) do not unreasonably prejudice the legitimate interests of the author. Although the TRIPS Agreement requires all the WTO members to comply with Art.1 to 21 of the Berne Convention (which includes Art. 9 (2)), the ThreeStep-Test has been reinforced in Art. 13 of this Agreement which does not confine exceptions only to the right of reproduction but to all internationally recognized exclusive rights. 8 C.M. Correa, Fair Use in the Digital Era, in IIC 2002, <http://webworld.unesco.org/infoethics2000/documents/paper_correa.rtf >. 9 F.M. Abbott el. al., supra note 3, at 423 4 Fair Use of Copyrighted Works in the Digital Age ________________________________________________________________________________ Under the WIPO ―Internet‖ Copyright Treaty, ―the need to maintain a balance between the rights of authors and the larger public interest, particularly education, research and access to information, as reflected in the Berne Convention‖ has been re-proclaimed.10 The Three-Step-Test has been adopted again in Art. 10 of WCT. Fair Use in the US, UK and Continental European Countries As early as 1841, in Folsom v. Marsh case, the fair use doctrine has been recognized in the US.11 With the power granted by Article I of the United States Constitution,12 the Congress has adopted the Copyright Act (1976) to codify the common law doctrine. Section 107 of the Act requires a case-by-case determination of whether or not a particular use is fair. It allows limited use of copyrighted material without requiring permission from the right-holders, such as for commentary, criticism, news reporting, research, teaching or scholarship. It provides for the legal, non-licensed citation or incorporation of copyrighted material in another author's work under a four-factor balancing test. The factors to determine fairness includes: (1) Purpose and character of the use, including whether the use is for commercial or non-profit educational purpose, transformative and productive or duplicative; (2) the nature of work or adaptation, (3) the amount and substantiality of the part copied taken in relation to the whole work or adaptation; and (4) the effect of the use upon the potential market for, or value of the work or adaptation. However, the distinction between fair use and infringement may be unclear and not easily defined. There is no specific number of words, lines, or notes that may safely be taken without permission. Acknowledging the source of the copyrighted works does not exempt the users from obtaining permission. As mentioned above, the term "fair use" originated in the United States, but has been added to several countries laws as well; a similar principle, fair dealing, exists in some other common law jurisdictions. Since the Copyright Act (1911), UK copyright law has provided for exceptions or limitations upon the exclusive rights of copyright owners, for the benefit of users of their works. In the Copyright and Patent Act (1988) (CDPA) they are described as ―permitted acts‖ and the relevant sections are nearly 60 in number.13 Unlike the US where a general defense of fair use is available (omnibus and open ended), the Anglo-Australian law provides for fair dealing for specific purposes within certain statutory limits. It is not enough that the copying or other dealing was carried out for the purpose of research or study, the dealing must be fair. Principles involving fair dealing defense include the degree and impression of the dealing which should be judged by 10 The Preamble of the WIPO Copyright Treaty (1996). F.M. Abbott el. al., supra note 3, at 423 12 See supra note 1. 13 L. Edwards, supra note 6, at 201 11 Khanh Pham and Shushik Mkhitaryan 5 ______________________________________________________________________________ criterion of a fair minded and honest person. Fairness is to be judged objectively in relation to the relevant purpose and is an abstract concept. Civil law jurisdictions have other limitations and exceptions to copyright. Opposing to the Anglo-American approach, protection of the author‘s rights in the European copyright system is in the centre of the law as authors are the weakest part in civil interrelations. Notwithstanding this fact, the legislators also stress that the interests of the public as a whole should not be ignored. As knowledge is a public good and access to knowledge is a human right there should be some balancing regulation between these two layers of the society, thus the legislators‘ conclusion on providing exceptions and limitation to the authors‘ rights but under certain conditions.14 Along with the progress made in the harmonization of different aspects of intellectual property laws, the issue of exceptions to copyrights is contained in many directives. Given that copies of software can be identical to the original, the EC Computer Program Directive narrowly tailored exceptions to such rights. The EC Directive on Databases also limits reproduction for private purposes only to non-electronic databases (Art. 6.2.a). The most important directive as far as exceptions to copyright protection are concerned is the Information Society Directive (2002/29/EC-Infosoc Directive). Besides the reintroduction of the three-step-test, Article 5 of the Infosoc Directive provides a list of mandatory and possible exceptions to the three exclusive rights that member states are required to provide. The only mandatory area of this Article (5.1), requires Member States to take account of ―temporary acts of reproduction which are transient or incidental [and] an integral and essential part of a technological process whose sole purpose is to enable transmission in a network between third parties by an intermediary, or a lawful use of a work, which have no ―independent economic significance‖ (mostly involving caching15). Subsections 2 and 3 of Article 5 detail possible exceptions to the reproduction and communication and ―making available to the public‖ rights. Member states are permitted to exempt from the reproduction rights copies for non-commercial purposes including private use, special acts by libraries, museums and educational establishments; in respect of ephemeral fixations made by broadcasting organizations by means of their own facilities and for their own broadcasts, etc. (Art. 5 (2)). Possible exceptions to the rights of reproduction and communication to the public in the following cases: 14 Article 10 of the European Convention on Human Rights provides freedom of speech mentioning that the article shall not prevent States from requiring the licensing of broadcasting, television or cinema enterprises. Notwithstanding the principle of free use of copyrighted works, there are provisions on liabilities for misuse of any such work that may be of prejudice to the reputation or the rights of the author or likely to mislead the public, unauthorized disclosure, etc. Paragraph 2 of the same article expressly states: ―The exercise of these freedoms, since it carries with it duties and responsibilities, may be subject to such formalities, conditions, restrictions or penalties as are prescribed by law and are necessary... for the protection of the reputation or the rights of others, for preventing the disclosure of information received in confidence, or for maintaining the authority and impartiality of the judiciary.‖ 15 Temporary copy of materials 6 Fair Use of Copyrighted Works in the Digital Age ________________________________________________________________________________ illustration for teaching and scientific research, dissemination of news, political speeches as well as extracts of public lectures; criticism, etc (Art. 5 (3)). The primary objective of this Article of the Infosoc Directive is to settle liability that could be placed upon host service providers, transmitters and access providers on the internet.16 With the limitation set forth in Art. 5(1), there is no general obligation to monitor for internet service providers (ISPs). In other words, ISPs are not liable for the data they transmitted even if it infringes copyright. However, the exemptions permitted under the Directive are prescriptive, with the permitted acts being listed within Article 5 (exemptions and limitations). Member states are therefore not able to deviate from or add to these exceptions. This is in order to ―ensure the proper functioning of the internal market‖ (Recital 31).17 This limitation constricts the ability of national states to respond to technological change and potential the new uses of information within society. The restriction could be seen as contrary to the WIPO Copyright Treaty of 1996 which the Directive is implementing. Under the terms of the WIPO Treaty, member states are permitted ―to carry forward and appropriately extend into the digital environment limitations and exceptions in their national laws which have been considered acceptable under the Berne Convention‖. To ensure that there are no barriers to the internal marketplace, the Directive must not be more restrictive than international treaties.18 Though the case by case approach of the U.S. proved to be more flexible than the rigid prescribed list in the EU Directive, it has been recommendable for the U.S. law to follow in part the practice of European copyright systems. While case by case fair use determination is still applied, the U.S. copyright law should specify precisely the kinds of uses of creative work that should be regulated by copyright law and certain uses that were beyond the scope of copyright law to make the system clearer and simpler.19 This ―hybrid‖ approach may be considered as an effective way to avoid the over-protection of copyrights (either by providing a very restrictive list of exemptions in the EU case or by the burden of proof or lawyer cost in the case of the U.S.). 16 M. Li, Fair use of Copyrighted Works in the Digital Age, Collection of Research Papers, Master of Laws in Intellectual Property, Turin, Italy, 2007, 64. 17 M. Wallace, The Information Society Directive (UK implementation): the end of educational and research use of digital works?,<http://www.bileta.ac.uk/DocumentLibrary/1/> 18 Ibid. 19 L. Lessig, Remix. Making Art and Commerce Thrive in the Hybrid Economy, The Penguin Press, 2008 , 266-267. Khanh Pham and Shushik Mkhitaryan 7 ______________________________________________________________________________ Digitization and Challenges to Copyright With the coming of the digital era, there arises a conflict between the fact that new digital technologies provide incentive to the free flow of ideas, knowledge and information, and the fundamental design of copyright law which is to limit the unauthorized flow of copyrighted works.20 From the copyright-holders‘ perspective, the digital environment brings great dangers to copyright protection. Information in digital form is intangible and can be reproduced instantaneously. Digital copies are different from printed copies as there is no difference between the original and a copy. Digital technology also eases the retrieval and distribution of works via the internet.21 After a certain period of bewilderment with the fear about ―the death of copyright‖, copyright and other forms of protection of intellectual property rights have been modernized so as to be appropriate for the digital age.22 This movement has lead to the introduction of WIPO ―internet‖ treaties (including the WCT mentioned above and WPPT23). The ―Digital Agenda‖ has been built up in the WCT in two agenda. In Agenda I, the right of reproduction has been expanded to temporary reproduction (Art. 1(4)) and the right of making available has been introduced under the ―umbrella solution‖ (Art. 8). In Agenda II, copyright protection has been enhanced with the revised limitation and exception (Art. 10), the introduction of technological measures (Art. 11) and Right Management Information (Art. 12). 3. NEW CHALLENGES FOR THE FAIR USE OF COPYRIGHTED WORKS IN THE DIGITAL AGE As mentioned above, along with technology development, there emerge new control mechanisms over access to copyrighted works. The previous broad reproduction rights and broad distribution rights are now exempted by technology. Access to content and copies has been restricted by the use of digital right management measures and licenses with restriction conditions, alternative business models. Those restriction measures pose new challenges for the traditional beneficiaries of ―fair use‖ doctrine. The development of right management protection technologies and the application of technical protection measures (TPMs) and anticircumvention measures Supported by the famous phrase by Charles Clark: ―the answer to machine is machine‖24, various technological measures have been developed to strengthen 20 P. Akester and F. Lima, The Economic Dimension of the Digital Challenge: A Copyright Perspective, IPQ, 2005, 80. 21 Ibid. at 71 22 L. Edwards, supra note 6, at 183. 23 WIPO Performances and Phonograms Treaty 24 A. Abdalla, International protection of intellectual property rights in light of the expansion of electronic commerce, Trafford, Victoria, B.C. 2005, 190. 8 Fair Use of Copyrighted Works in the Digital Age ________________________________________________________________________________ copyright protection in a digital environment which aim either to control access to content (access control) or to control the copying of content (copy control). Technological solutions such as digital watermarking25 and encryption26 have been used to develop copyright protection systems to limit use to a single user and to avoid redistribution or reuse of material.27 Although those technological protection measures (TPMs) may be effective with ordinary users, they can be neutralized, ―hacked‖ or circumvented by high-tech users. Thus, a market for illicit devices facilitating decryption and other forms of TPM circumvention has emerged.28 Therefore, anti-circumvention legislation has been introduced with the purpose of providing extra protection against piracy. At international level, Art. 11 of the WCT provides an independent legal protection for TPMs used by copyright owners which requires Contracting Parties to provide “adequate legal protection and effective legal remedies against the circumvention of effective technological measures that are used by authors in connection with the exercise of their rights under this Treaty or the Berne Convention and restrict acts, in respect of their works, which are not authorized by the authors concerned or permitted by law”. It can be interpreted from this provision that Contracting Parties are allowed to implement this obligation at their discretion provided that the implementation is adequate and effective to protect technological measures as required by the WCT. The U.S. adopted a minimalist approach when implementing the WCT, based on the understanding that any provision of the Treaty that had already been implemented in US law would not be addressed in new legislation.29 The Digital Millennium Copyright Act (DMCA) has been enacted in 1998 with a new chapter (section 1201-1205) that regulates the protection of TPMs. Section 1201 covers both the protection of ―access control‖ and ―copy control‖ technologies. The protection of technological measures established under section 1201 is threefold which prohibit (1) the act of circumvention of TPMs that protect access control; (2) 25 Digital watermarks are bits embedded in digital content, usually invisible in the absence of the proper software to detect and decode it. The watermarks can contain information such as the author‘ name and email address, ID number and a URL, information about who owns a work, how to contact the owner and whether a fee must be paid to use the work. A watermark can only be effective if the playback and record devices look for the watermark in that particular piece of content. 26 Encryption is a technological method used to obscure the meaning of a message. There are various types of encryption. Asymmetric encryption is the best suited for e-commerce, since it uses two different keys and only public keys need to be distributed. Each user generated two keys that are different: a private key and a public key. They keep their private key secret but send their public key to other users. The sender encrypts a message with the public key of the intended recipient and then sends it on to the recipient. Only the recipient‘s privat key can be used to decrypt the message. 27 P. Akester and F. Lima, supra note 20, at 71-72. 28 A. Abdalla, supra note 24, at 192. 29 N. Braun, The interface between the Protection of Technological Measures and Exercise of Exceptions to Copyright and Related Rights: Comparing the situation in the United State and the European Community, EIPR, Issue 11, 2003, 496. Khanh Pham and Shushik Mkhitaryan 9 ______________________________________________________________________________ trafficking in devices, services, etc. that circumvent ―access control‖ TPMs; (3) trafficking in devices, services that circumvent ―copy control‖ TPMs.30 All Contracting Parties implementing the WCT face the problem that, on the one hand, there is a need to protect the technological measures which right owners apply to the protected content, on the other hand, the beneficiaries of ―fair use‖ or other exceptions or works that fall into public domain need not be restricted in realizing the benefits. As another Contracting Party, the U.S. has tried to strike a balance between both positions by not prohibiting the act of circumvention itself of a ―copy control‖ technology. 31 The legislators were aware of the scenario where activities might be allowed under the ―fair use‖ doctrine but prevented by a ―copy control‖ technology. However, it is noteworthy that there is no obligation of the right owner to provide the beneficiary of ―fair use‖ defense with the means to enable the enjoyment of the content. In the contrary, the act of circumvention of an ―access control‖ technology is prohibited as ―access‘ to a work has to be distinguished from ―use‖ of work and the legislators‘ concerns with respect to the ―fair use‖ defense focused merely on the second act. The DMCA provides a closed list of limited exceptions permitting the circumvention of and/or trafficking in TMPs in respect of legitimate encryption research, computer security testing, reverse engineering for computer program, libraries (for the sole purpose of determining whether to acquire a particular work), and when it is necessary to achieve interoperability and used solely for that purpose. However, the DMCA does not mention the phrase ―fair use‖. In Europe, the Infosoc Directive deals with the protection of technology measures. Art. 6 (1) and (2) establish the scope and Art. 6 (3) sets forth the definition of the technological protection measures. The scope of protection is broad and obliges Member States to protect right holders against both the act of circumvention of any effective technological measure (Art. 6 (1)) as well as against the trafficking in circumvention devices and services (Art. 6 (2)). The content of Art. 6 (2) is similar to those set forth in section 1201 of the U.S. Copyright Act. The definition of technology measures in Art. 6 (3) refers to ―any effective technological measure… designed to prevent or restrict acts… which are not authorized by the right holder‖. Technological measures shall be deemed ―effective‖ where the use of a protected work is controlled by the right-holders through application of an access control or protection process or a copy control mechanism, which achieves the protection objective. The Directive does not distinguish between ―access control‖ and ―copy control‖ technology as in the DMCA. Art. 6 (1) to (3) the Infosoc Directive introduce a three levels of protection for digital works: copyright, TPMs and legal protection of TPMs (ACP). The same problem here is copyright‘s balance (level 1) can be jeopardized by the legal 30 31 Ibid. Ibid. at 497. 10 Fair Use of Copyrighted Works in the Digital Age ________________________________________________________________________________ protection (level 3) of TPMs (level 2). Art. 6 (4) of the Directive is designed to solve the dilemma but does not introduce exceptions to the liability of the circumvention of TPMs but rather introduce a unique legislative mechanism which foresees responsibility on the right-holders to accommodate certain exceptions to copyrights. If Art. 6 (4) is implemented properly, it can help in the finding of solutions by right-holders and beneficiaries of exceptions without weakening the effective protection of technological measures.32 Art. 6 (4) distinguishes between ―public policy‖ exceptions (para. 1) and ―private copying‖ exceptions (para. 2). Member States are obliged to introduce mechanisms to accommodate the exceptions only with respects to ―public policy‖ exceptions in Art. 5 of the Directive. The scope of the intervention of Member States is limited in the online environment where the making available of content on agreed contractual terms is involved. If the digital protection measures and anti-circumvention rules are applied properly, with very limited exceptions provided by DMCA and EC Infosoc Directive, there are concerns that right-holders are in a position to prohibit any type of use or to seek for payment for any use of their works. Therefore, they can supersede any rules allowing fair use.33 Besides, there are concerns that DRMs will be used for anti-competitive purposes, or to restrict the freedom of speech. There are cases in which the use of DRMs has proved to rendered competition and innovation. Lexmark v. SCC (6th Cir. 2004), regarding the control of the aftermarket for printer cartridges, held that it is not illegal to circumvent a technological measure that is blocking access to an unprotected idea. The Federal Circuit also held that authentication sequence does not effectively control access and does not effectively prevent all access to a work protected under copyright law and the Printer Engine Program is copyrightable, but not its functionality. 32 Art 6 (4) ―Notwithstanding the legal protection provided for in paragraph 1, in the absence of voluntary measures taken by rightholders, including agreements between rightholders and other parties concerned, Member States shall take appropriate measures to ensure that rightholders make available to the beneficiary of an exception or limitation provided for in national law in accordance with Article 5(2)(a), (2)(c), (2)(d), (2)(e), (3)(a), (3)(b) or (3)(e) the means of benefiting from that exception or limitation, to the extent necessary to benefit from that exception or limitation and where that beneficiary has legal access to the protected work or subject-matter concerned. A Member State may also take such measures in respect of a beneficiary of an exception or limitation provided for in accordance with Article 5(2)(b), unless reproduction for private use has already been made possible by rightholders to the extent necessary to benefit from the exception or limitation concerned and in accordance with the provisions of Article 5(2)(b) and (5), without preventing rightholders from adopting adequate measures regarding the number of reproductions in accordance with these provisions. The technological measures applied voluntarily by rightholders, including those applied in implementation of voluntary agreements, and technological measures applied in implementation of the measures taken by Member States, shall enjoy the legal protection provided for in paragraph 1. The provisions of the first and second subparagraphs shall not apply to works or other subjectmatter made available to the public on agreed contractual terms in such a way that members of the public may access them from a place and at a time individually chosen by them.‖ 33 C. M. Corea, supra note 7. Khanh Pham and Shushik Mkhitaryan 11 ______________________________________________________________________________ In Chamberlain v. Skylink (Fed. Cir. 2004) case regarding the prevention of the use of universal remote controls; the court held that circumvention is illegal only if it enables infringing copying, consumers have a right to use a copy (so far as copyright law does not explicitly restrict it). DMCA should not allow any company to attempt to leverage its sales into aftermarket monopolies, a practice that both antitrust laws and the doctrine of copyright misuse normally prohibit. However, there are also court findings in which the development of new programs/devices that promote competition was not considered as an exception for the protection of TPMs based on anti-trust ground. Cases include Universal v. Reimerdes (SDNY, 2000), Sony v. Gamemaster (2000), Reimerdes & Corley (2001), RealNetworks v. Streambox (2000), Blizzard v. Bnetd (2004). For other grounds of fair use, there also different court rulings. Freedom of speech could not help the defendant in Universal City Studios v. Corley (2nd Cir. 2001). However, in Felten v. RIAA (2002), the case was only dropped by Felten when the courts implied that scientists studying digital copying technologies would not be subject to the DMCA. The extended use of contract law to control access to and the use of digital copyright works Besides resorting to technological measures, the copyright-holders also seek for supplement protection under the law of contracts (which can be called ―contracting around‖ the Copyright law34). Since modern technologies permits right-holders to directly interact with users and to determine the conditions for access to and use of works, the cost of establishing and monitoring contracts have been reduced dramatically and contracts with ―a very fine-grained level of details‖ and a variable pricing mechanism have been enabled.35 Moreover, it is argued that copyright law was originally conceived as a mechanism for creating property rights in intangibles. The presumption is that voluntary exchange will be of benefit for both buyers and seller and voluntary exchange is facilitated by property rights. Therefore, individuals are free to make virtually any contract over copyrighted works they choose, whatever effects on ―fair use‖ or the ―first sale‖ doctrines.36 In fact, the massive use of contracts on terms and conditions dictated by suppliers to extend the copyrights beyond those granted by the copyright legislation is a real challenge to fair use doctrine. The enforcement of a particular type of contract: the "shrink wrap" license37 for software and of pre-determined conditions 34 V. R. Moffat, Rethinking Contractual Restrictions on Fair Use: Preemption and the Structure of Copyright Policymaking, (2007) < http://works.bepress.com/viva_moffat/1> 35 T. Hardy, Contracts, Copyright and Preemption in a Digital World, 1 RICH. J.L. & TECH. 2 (1995) <http://www.richmond.edu/jolt/v1i1/hardy.html> 36 Ibid. 37 The shrink-wrap license agreement purports to create a binding legal agreement (so it says) between the software vendor and the user. A ―shrink-swap‖ license is simply a set of terms printed inside the heat-shrunk wrapping of the commercial software. These terms constitute an ―offer‖ that 12 Fair Use of Copyrighted Works in the Digital Age ________________________________________________________________________________ attached to the commercialization of other digital works illustrate this threat.38 In Vault v. Quaid (5th Cir. 1988), Vault, a software developer, introduced a computer program named ―Prolok‖ that rendered other commercial software impossible to copy. Vauld sold Prolik with ―shrink-wrap‖ licenses. A Louisiana state statute expressly validated those ―shrink-wrap‖ licenses. Quaid, Inc. made copies of the Prolok program to reverse engineer its anti-copy scheme and then sold its software which can disable the Prolok mechanism and permit copying. In this case, Vault sued Quaid for copyright infringement and lost. The court held that Quaid‘s actions to be permissible even though they violated the license restrictions. The Louisiana statute that effectively prevented the running of such programs by validating Vault‘s license restrictions therefore conflicted with the U.S. Copyright Act and was preempted.39 In Warner Bros., Inc. v. Wilkinson (D.Utah 1981), appeal dismissed, (10th Cir. 1985), Warner Bros. involved ―blind bidding‖, a common practice in the motion picture industry. With blind bidding, motion picture distributors require that theatres agree to certain conditions before viewing the entire movie. The conditions may include guaranteeing certain minimum royalty fees.40 This practice has been considered very unfair for the theatre owners and in many state in the U.S., statutes have been enacted to prohibit or curtail such practice. Motion picture owners and distributors then challenged the statutes but failed. The courts held that states may impose restraints on what would otherwise be valid contracts relating to copyrights. Though the enforcement of unconscionable contractual terms may be denied by courts based on copyright or unfair competition or antitrust law,41 the asymmetry in the contractual relationship may still lead to overriding fair use and other statutory limitations to copyright.42 The land-mark conclusion reached in Vault did not seem to be reaffirmed in other contract cases in the U.S.43 The reasoning in these cases is that copyright should not preempt when the state law at issue requires elements of proof (offer and acceptance) of contracts which is not relevant to the U.S. Copyright Act. It can be concluded that the question of whether the ―fair use‖ doctrine (and copyright in general) preempt ―contract‖ the buyers is said to accept by the act of tearing open the plastic wrapping. Such license agreement should be challenged as adhesion contracts or invalidated on the ground of unequal bargaining strength. 38 C.M. Correa, supra note 7. 39 T. Hardy, supra note 35 40 Ibid. 41 The U.S Uniform Computer Infornmation Transactions Act (1999) authorizes a court to refuse enforcement to contractual terms that violate a "fundamental public policy" 42 R. Denicola, Mostly dead? Copyright law in the new millennium, Journal of the Copyright Society of the USA, vol.47, 2000, 198, quoted in C. M. Correa, supra note 7. 43 Gates Rubber Co. v. Bando Chem. Indus. (10th Cir. 1993); Nat'l Car Rental Systems v. Computer Assocs. Int'l (8th Cir.), cert. denied (1993); Valente-Kritzer Video v. Pinckney (9th Cir. 1989), cert. denied, (1990); Acorn Structures v. Swantz (4th Cir. 1988); Adobe v. Stargate (N.D. Cal. 2002), ProCD v. Zeidenberg (7th Cir. 1996). Khanh Pham and Shushik Mkhitaryan 13 ______________________________________________________________________________ doctrine has not yet settled and still left open for case-by-case judgments by the courts. It is also noteworthy that the use of contract not always restricts ―fair uses‖ but can support them. In the case of A.V. v. iParagigms LLC (2009), Rurnitin.com operated by the defendant iParadigms LLC compares the newly submitted works by the students against its database of existing student works in order to deliver an assessment to the educational institution customers regarding plagiarism. Before submitting, each student is asked to accept an e-contract. The lower court held that Turnitin.com made a fair use of the student works and the e-contract is a valid one and the 4th Federal Circuit reaffirmed this decision. 4. INITIATIVES AND RECOMMENDATIONS TO BALANCE THE INTEREST BETWEEN FAIR USERS AND COPYRIGHT OWNERS IN THE DIGITAL ENVIRONMENT Before going to the recommendations on how to ―protect‖ fair users against these above changes in legislation and case law, it is necessary to answer again the question regarding the importance of ―fair use‖ in the digital environment. Copyright-holders argue that the justifications underlying the exceptions and limitations such as fair use has been eliminated online44. As transaction cost for licensing has been reduced, there is no market failure to provide end-users with their needs. Besides, the loss for author‘s earnings is no longer insignificant but accumulatively significant. This argument, however, concentrates more on the economic aspects of copyright but not on its social and cultural aspects as other ―fair use‖ justifications do stand in whatever technological context. In the digital age, ―fair use‖ is more needed to promote User-Generated-Content (creative activity without a business structure); to promote remix, mash-up culture which can create a wider creative space; to ensure the freedom of speech (and freedom of expression in general); and to protect privacy45. Fully recognized the important balance between copyright-holders and fair users, some initiatives have been launched in the U.S., continental European Community to neutralize the threats of these above movements on the exercise of exceptions to copyrights. At corporate level, shared interest of platform and content owners (i.e., YouTube, Google Settlement) has been created. Under those, ―fair use‖ has been implemented with automated enforcement. However, there are concerns that automated system should be applied for detection only and not for removal. Removal should be done upon notice and ―fair use‖ should be considered prior to issuing a notice. Some authors have also come up with the idea of voluntary contributions46 to effectively exercise the rights conferred by copyright but not prejudice the benefit of fair users. However, there‘s not yet any ―real‖ experiment 44 A. Abdalla, supra note 24, at 194. L. Lessig, supra note 19 46 P. Akester and F. Lima, supra note 20, at 79 45 14 Fair Use of Copyrighted Works in the Digital Age ________________________________________________________________________________ with this. At national and regional level, under both the DMCA and the EC Infosoc Directive, a Committee is directed to examine the effects of the anti-circumvention rules and to adjust the list of exceptions in order to avoid the ―side effects‖ of those rules on issues related to copyright such as ―fair use‖. In Europe, besides adopting the human review to determine fair use, the Council of Europe has introduced human rights guidelines for ISPs (Council of Europe in cooperation with EuroISPA, 2008). The guidelines recognize that internet service is increasingly becoming a prerequisite for a comprehensive participatory democracy and that ISPs should not be put under a general obligation to actively monitor content and traffic data. This initiative has re-stated the rule set forth in the above-mentioned Art. 5 (1) of the Infosoc Directive. With the guidelines, the question of whether online service providers are obliged to screen/track all transmissions or not has been answered again. More certainty has been created for ISPs. This helps to balance between keeping them away from liability and engaging them in enforcement. Some Recommendations for Armenia and Vietnam: Regardless of the status of being Contracting Parties to WIPO ―internet‖ treaties or not, both Armenia and Vietnam have codified anti-circumvention rules as set by WCT and WPPT. Articles 22-26 of the Law of the Republic of Armenia on Copyright and Related Rights provide for ―free use of works‖ stating that ―Free use of a work shall mean the use of a work without the consent of the author and without remuneration, however with the obligatory mention of the author's name and the origin of the work, which does not prejudice the normal exploitation of the work and legitimate interests of the author to his work.‖ The Articles expressly state ―works lawfully made public‖ as to secure the authors‘ right of making the work public. Article 22 (2)(f) states that among others, the use of a work, except computer programs, for the purposes of court and administrative proceedings, to the extent justified by the purpose , shall as well be free, and in such cases the mentioning of the author‘s name and the source of the work is not obligatory. Chapter V of the Law concerns enforcement of the law and technical protection measures; namely Art. 67 Protection of Technological Measures and Art. 68 Protection of Rights Management Information provide for liability for circumvention of technical protection measures, which are in total compliance with the WCT and WPPT (Armenia is a member of these treaties in March 6, 2005). Copyright law in Vietnam is governed by the ―Intellectual Property Law,‖ effective July 1, 2006 and Decree 100/ND-CP/2006 implementing the Law. Like China, though Vietnam has not yet ratified WCT and WPPT, the law provides protection for temporary reproductions (Article 4(10)), and protection against circumvention of technological protection measures used by right holders to protect their works/subject matters in the digital environment (Articles 28(12) and 35(7)) and against trafficking in circumvention devices (Article 28(14)). Besides, right-holders Khanh Pham and Shushik Mkhitaryan 15 ______________________________________________________________________________ are allowed to ―apply technological measures to prevent acts of infringing upon intellectual property rights‖ as part of the right to self protection (Art. 198 (1) (a)). The IP Law also offers a broad range of exceptions to copyright and related rights. There are some exceptions that can be considered overly broad, e.g., Art. 25 (g) on ―[d]irectly recording and reporting performances for public information and educational purposes,‖ and Art. 25(k) regarding personal use imports, and Article 25(1)(e) on ―dramatic works and other forms of performing arts in cultural gatherings or in promotional campaigns, Art. 25(2) of the implementing Decree appears to allow the copying of a computer program ―for archives in libraries for the purposes of research.‖ A common character of the two copyright systems in respect to anticircumvention rules is that they are general in nature and there is no provision which provides exceptions to the protections of TPMs. These rules also do not address the relationship between TPMs and exceptions and limitations. It is not clear whether fair uses can be considered as a justifiable defence for violations of anti-circumvention rules. The role of ISPs is also not clarified. Besides, in both systems, there is no provision regarding the treatment of fair use doctrine when it conflicts with contract doctrine. The following recommendations can be adopted in the process of revision of those regulations: Regarding Anti-Circumvention Rules The Armenian copyright law provides for a definition of technological measure in compliance with the WCT47 but the Vietnamese law does not. It is necessary to give a legal definition of technological measures in the anticircumvention rules and set some limitations to the function of TPMs in Vietnam‘s IP Law and implementing decree. For both countries, it would be recommendable to introduce a general purpose clause for the exceptions to the protection of TPMs and to establish a committee to monitor and adjust this list of exceptions. The list should include exceptions to protect consumers‘ privacy, freedom of speech, etc. Besides, just like the approach taken in EC Database Directive, legal protection should be given to not only technological measures that related to copyrighted works but also those needed to protect investment in the creation/collection of material (under a sui generic regime). This will avoid the pro-investment tendency in the copyright enforcement and keep the copyright systems in the right track to the very ends they sought to attain. ISPs should not be imposed from monitoring obligation but encouraged to cooperate with the State for surveillance and enforcement of copyrights. 47 Art. 67 (2) of the Armenian Copyright law states ―A technological measure for the protection of copyright and related rights shall mean any device or their components, that in the normal course of their operation, are designed to prevent or restrict acts in respect of works or subject matters of related rights which are not authorized by holder of copyright or related rights.‖ 16 Fair Use of Copyrighted Works in the Digital Age ________________________________________________________________________________ Regarding the ―Contracting Around‖Iissue As mentioned above, preemption doctrine has not yet been recognized as a tool for addressing contractual restrictions on fair use. However, the doctrine should be applied since it is a way of acknowledging and emphasizing the policymaking role of the government. If the law has already defined in detail the proper uses of a copyrighted work, including its fair uses, it was based on a careful balance of interest and therefore, individuals should not be free to redefine that liability.48 Besides, along with promoting voluntary measures (agreements) to achieve the objective of certain specific exceptions/limitations, the law should ensure that rightholders provide beneficiaries of such with appropriate means of benefiting from them. CONCLUSIONS In the digital context, the copyright law has regulated more and seeks for technology and other branches of law to regulate more effectively. With the ratification of the control that technology can impose over every use of the copyrighted works (by TPMs and anti-circumvention rules) and the supplement of standardized contractual schemes, copyrights in the digital age are thus ―open to control in a way that was never possible in the analog age‖.49 However, more control of copyrighted works does not always help to promote innovation and creation. The protection of created works and their creators must always be balanced with the guarantee of public interest and fundamental freedoms. Fair use is designed to maintain such balance. The growing use of contracts and application of technological measures may threaten the fair use doctrine thus cause an unprecedented break in the balance inherent in all intellectual property system50 The relationship between anti-circumvention rules and fair use has been dealt with under the U.S. DMCA as well as EU Infosoc Directive with certain exceptions to the rules. There are also court rulings that were pro-―fair use‖. Nevertheless, fair use justifications were not strong enough in a variety of cases regarding anticircumvention rules under DMCA. The use of pre-described contracts has also been addressed by the U.S. courts with the principle of preventing contracts with unbalanced bargain power but preemption doctrine has not yet recognized. It is inevitable that maintaining the scope of fair use to promote access to valuable knowledge is even more important in developing countries like Armenia 48 COHEN has noted that ―if society values the fair use limits on copyright protection, it would be entirely logical to forbid or limit the ability to contract around them -particularly where the terms are non-negotiated and bind large numbers of consumers" (J. Cohen, WIPO Copyright Treaty Implementation in the United States: Will Fair Use Survive?, EIPR, Issue 5, 1999, 240) 49 L. Lessig, supra note 19, at 100. 50 S. Dusollier, Y. Poullet and M. Buydens, Copyright and Access to Information in the Digital Environment, (2000) <http://unesdoc.unesco.org/images/0012/001214/121406e.pdf>. Khanh Pham and Shushik Mkhitaryan 17 ______________________________________________________________________________ and Vietnam. Both countries have ratified anti-circumvention rules but exception clause should be introduced and monitored. To protect fair users in those two developing countries, it is also recommendable to apply the pre-emption doctrine in case of conflict between fair use doctrine and contract law. BIBLIOGRAPHY F. M. ABBOTT, T. COTTIER and F. GURRY, The International Intellectual Property in an Integrated World Economy, Aspens Publisher, New York, 2007 A. ABDALLA, International protection of intellectual property rights in light of the expansion of electronic commerce, Trafford, Victoria, B.C. 2005 P. AKESTER, A Practical Guide to Digital Copyright, Thomson-Sweet & Maxwell, 2008 P. AKESTER and F. LIMA, The Economic Dimension of the Digital Challenge: A Copyright Perspective, IPQ, 2005, 69-81 E. BARENDT, Freedom of Speech, Oxford University Press, 2005 N. BRAUN, The interface between the Protection of Technological Measures and Exercise of Exceptions to Copyright and Related Rights: Comparing the situation in the United State and the European Community, in EIPR, Issue 11, 2003, 496-503. J. COHEN, WIPO Copyright Treaty Implementation in the United States: Will Fair Use Survive?, in EIPR, Issue 5, 1999 C.M. CORREA, Fair Use in the Digital Era, in IIC 2002, <http://webworld.unesco.org/infoethics2000/documents/paper_correa.rtf >. S. DUSOLLIER, Y. POULLET and M. BUYDENS, Copyright and Access to Information in the Digital Environment, (2000) http://unesdoc.unesco.org/images/0012/001214/121406e.pdf. L. EDWARDS, Law and the internet, Hart Publishing, Portland Or., 2009 M. FICSOR, The Law of Copyright in the Internet. The WIPO Treaties and their Implementation, Oxford University Press, Oxford, 2002 (INT 1006) Y. GAUBIAC, Technical Measures and Interoperability in Copyright and Related Rights Law, UNESCO, e-Copyright Bulletin, April – June 2007, http://portal.unesco.org 18 Fair Use of Copyrighted Works in the Digital Age ________________________________________________________________________________ C. GEIGER, The Role of the Three-Step Test in the Adaptation of Copyright Law to the Information Society, UNESCO e-Copyright Bulletin, January - March 2007, http://portal.unesco.org T. HARDY, Contracts, Copyright and Preemption in a Digital World, 1 RICH. J.L. & TECH. 2 (1995) <http://www.richmond.edu/jolt/v1i1/hardy.html> B. KAPLAN, An Unhurried View of Copyright (Republished), Matthew Bender, 2005 M.F. KIGHTLINGER, A Solution to the Yahoo! Problem? The EC ECommerce Directive as a Model for International Cooperation on Internet Choice of Law, in 24 Michigan J. of Int. L. 2003, 719-766 L. LESSIG, Remix. Making Art and Commerce Thrive in the Hybrid Economy, The Penguin Press, 2008 M. LI, Fair use of Copyrighted Works in the Digital Age, Collection of Research Papers, Master of Laws in Intellectual Property, Turin, Italy, 2007 J. LITMAN, Digital Copyright, Prometheus Books, New York, 2006 A. LUCAS, Applicable Law in Copyright Infringement Cases in the Digital Environment, UNESCO e-Copyright Bulletin, October - December 2005, http://portal.unesco.org L. LUO, Legal Protection of Technological Measure in China, in EIPR Issue 2. 2006, 100-105 G. MAZZIOTTI, EU digital copyright law and the end-user, Springer, Berlin, 2008 R. MOFFAT, Rethinking Contractual Restrictions on Fair Use: Preemption and the Structure of Copyright Policymaking, (2007), < http://works.bepress.com/viva_moffat/1> R.T. NIMMER, Google Print Library Project” – Unfair Use of Copyright / J. BAND, M. SCHRUERS, Grokster in the International Arena, The Merits of Grokster (U.S.) and Sharman (Australia) compared. M. SCHOLOSSER, Fair Use in the Digital Environment, The Alert Collector, A Research Guide, volume 46, issue 1, 11-17 P. SCHONNING, Internet and the Applicable Copyright Law: A Scandinavian Perspective, in EIPR, 1999, 45 ff. Khanh Pham and Shushik Mkhitaryan 19 ______________________________________________________________________________ S. STOKES, Digital copyright: law and practice, Hart Publishing, Oxford, 2009 M. WALLACE, The Information Society Directive (UK implementation): the end of educational and research use of digital works?, (<http://www.bileta.ac.uk/DocumentLibrary/1/> H. WIESE, The Justification of the Copyright System in the Digital Age, in 24 EIPR 2002, 387 ff. WIPO, WIPO Intellectual Property on the Internet: A Survey of Issues, http://ecommerce.wipo.int, 2002 COLLECTIVE MANAGEMENT OF COPYRIGHT AND RELATED RIGHTS IN MUSIC – A CASE STUDY OF THE UNITED KINGDOM AND GHANAIAN SYSTEM by Alfred Kumi-Atiemo TABLE OF CONTENTS 1. INTRODUCTION 1.1. Abstract 1.2. Background : Why Writing the Topic 1.3. Definition of Copyright and Related Rights 1.4. Purpose of Copyright and Related Rights 2. WHY THE NEED FOR COPYRIGHT COLLECTIVE MANAGEMENT 2.1. History of Collective Management Organisations 2.2. Objectives/Functions of Collective Management Organisations 2.3. Legal Statutes - UK 2.4. Legal Statutes - Ghana 2.5. Structures of Collective Management Organisations 3. DOCUMENTATION - REPERTOIRE 3.1. National Repertoire 3.2. Foreign Repertoire 3.3. The Works of Authors who do not belong to Collective Management Societies and the Works of Unknown Authors 3.4. The Global Repertoire 4. 5. CLIENTS – RELATIONSHIP WITH CLIENTS 4.1. Contract with Clients CONCLUSION BIBLIOGRAPHY 22 Collective Management of Copyright and Related Rights in Music: A Case Study of the United Kingdom and Ghanaian System ________________________________________________________________________________ INTRODUCTION 1.1. Abstract Collective management of authors‘ rights has been seen as indispensable method of exploiting creative works. The system has worked over a century and half in developed countries in the creative industry especially in developing the music industry. However, in spite of the support and technical assistance for the developing world including African countries to set up and manage collective management organisations; it has been relatively difficult task for countries in SubSaharan Africa like Ghana to succeed. The essence of the paper is to do a comparative case study of collective management societies (CMS) in developed and developing countries with particular reference to the United Kingdom and Ghana and see if there are some best practices (lessons) that can be learnt from the developed world. It is the desire of the author as part of the recommendations at the end of the research paper that there will be an international treaty such as the TRIPS Agreement1 or a special treaty of the Berne Convention2 to govern the activities of collective management societies (CMS).3 Since the World Intellectual Property Organisation (WIPO) guidelines for CMS has not been helpful particular to developing countries such as Ghana. 1.2. Background: Why Writing the Topic.4 As stated in the abstract, collective management of authors‘ rights has been seen as indispensable method of exploiting creative works. The system has worked over a century and half in developed countries and has helped the development of the music industry. The World Intellectual Property Organisation (WIPO)5 and its developing partners such as United Nations Education, Scientific and Cultural Organisation (UNESCO), the International Confederation of Societies of Authors, Composers (CISAC) and collective management societies in developed countries have given support and technical assistance to African countries to set up collective management societies for effective management of copyright and related rights. However, in spite of the support and technical assistance to developing countries to collectively license, collect and distribute royalties on behalf of right owners, it has been relatively difficult task for countries in Sub-Saharan Africa like Ghana to 1 The TRIPS Agreement stands for the Agreement Trade-Related Aspects of Intellectual Property Rights. 2 Article 20 of the Berne Convention (1971) provides ―… countries reserve the right to enter into special agreements…‖ 3 Wherever collective management societies or (CMS) is used it also refers to Collective Management Organisations (CMOs) and are used interchangeable. 4 Interest of the author in the research. 5 Hereinafter, the World Intellectual Property shall be referred to as [WIPO]. Alfred Kumi-Atiemo 23 _______________________________________________________________________________ succeed.6 Such societies are often accused of lack of efficiency, transparency and abuse of incumbency due to the “de facto or de jury monopoly‖ they enjoy. This has generated various uprising and ‗factionalism‘ among rightholders especially in the music industry in Africa who are constantly agitating for reforms and formation of other competitive societies. In Ghana efforts, however, to set up rivalry societies7 has not succeeded as a result of constitutional issues and the need to amend the Copyright law whilst Nigeria saw a number of court cases between the Nigerian Copyright Commission (NCC) and various stakeholders who attempted to set up rivalry societies but could not secure approval from the NCC.8 Section 32B of the Nigerian Copyright Act (as amended in 1999) made it a prerequisite for approval by the Nigerian Copyright Commission for the operation of a collective management organisation in Nigeria.9 It was also noted in two landmarks Nigerian case law that “no collective society could operate as such unless it was approved under the relevant legal provisions.10 The focus of the paper therefore is to do a comparative study of collective management societies in developed and developing countries systems with particular reference to the United Kingdom and Ghana and see the sort of lessons that can be learnt from the developed world.11 The choice of the author of the British system is as a result of the long standing relationship between the two countries since the 19th century. Indeed the legal system in the United Kingdom has influenced the development of the Ghanaian legal system.12 The paper will focus on CMS in the music industry because of the potential the industry holds for Ghana and the Sub-Saharan Africa 6 CMS system has failed in Ghana and there is the need to rebuild the system. See Poku Adusei, The Evolution of Ghana‘s Copyright Regime Since Independence: A Critical Appraisal published in Ghana Law Since Independence, History, Development and Prospects, UGFL 2007 p11et seq. 7 Ibid p25, Musicians such as Charles Amoah, Rex Omar and Carlos Sakyi et al. played leading role in the fight for rival societies. 8 For further reading see, See John Asein, Nigeria Copyright Law and Practice, Abuja, 2004. 9 The Musical Society Nigeria Ltd. was not approved to operate as a collective management organisation. 10 See Musical Copyright Society Nigeria Ltd. v. Details Nigeria Ltd. (Suit No. FHC/L/ICS/434/95) and Musical Copyright Society Nigeria Ltd. v. Ade Okin Records (Suit No. FHC/L/CS/216/96) The law in Ghana now has been amended for rightholders desiring to form a society to seek approval from the sector minister. However, commentators are arguing that the power struggle problem which confronted other developing countries like Nigeria would soon be experienced in Ghana. 11 The author is mindful of the fact that collective societies operating in the two countries operate in heterogeneous environments and can therefore not be compared. However, the choice of the two countries is as a result of the long standing socio-political, legal and economic relationship between them as stated in the subsequent paragraph. 12 For in-depth study on the relation between the two legal systems see supra 6, p11-12. See also Marisella Ouma, Copyright and the Music Industry in Africa, in JWIP2004 p919. Poku Adusei, Kwame Anyimadu-Antwi and Naana Halm in Africa Copyright & Access to Knowledge Ghana Country Report 2008. 24 Collective Management of Copyright and Related Rights in Music: A Case Study of the United Kingdom and Ghanaian System ________________________________________________________________________________ as a whole.13 In Africa, music is seen as a way of life and like other cultural industries, it can be a source of wealth, music is seen as a kind of “cultural gold,” for developing countries if well managed.14 1.3. Definition of Copyright and Related Rights Copyright is a form of intellectual property (IP) which protect authors‘ and artists‘ creative expression. Legislatures and courts have consistently interpreted the term ―expression‖ to exclude the protection of ideas or methods of operation that might be embodied in an expressive work.15 There exist related rights to, or ―neighbouring on,‖ copyright. Works of the mind ―copyright‖ are created in order to be disseminated among as many people as possible, however, this cannot be done generally by the author him/herself, it requires intermediaries whose professional capability gives the works those forms of presentation that are appropriate to make accessible to a wider public. All persons who make use of literary, artistic or scientific works in order to make them publicly accessible to others require their own protection against the illegal use of their contributions in the process of communicating the work to the public.16 These include performers, producers of phonogram and broadcasting organisations, however, their contributions are not creative enough to meet the requirement of copyright, and hence, protection is attempted by means of related rights to copyright. These rights are generally referred to as related rights or neighbouring rights. 17 1.4. Purpose of Copyright and Related Rights The objective of copyright is the protection not only of the creators of work but also promotion, enrichment and dissemination of the national cultural heritage. Copyright constitutes an essential element in the developmental process of a country and its development to a large extent depends on the creativity of its people. Encouragement of individual creativity and its dissemination is a sine qua non for progress.18 13 The principles as discussed can be applied to other category of protected works as well. Supra note 12 Ouma, p. 920. 15 For further reading on copyright, works protected and types of rights granted by copyright see Fredrick M. Abbott, Thomas H. Cottier and Francis Gurry, International Intellectual Property in an Integrated World Economy, Aspen Publishers, 2007 p413et seq., also see provisions of article 2 – 18 of the Berne Convention. 16 WIPO Intellectual Property Handbook: Policy, Law and Use, Geneva p.47. 17 Whenever the term copyright is used, it should be understood to refer to both copyright and related rights. 18 Supra note 16 p41. 14 Alfred Kumi-Atiemo 25 _______________________________________________________________________________ 2. WHY THE NEED FOR COPYRIGHT COLLECTIVE MANAGEMENT 2.1. History Historically, collective management organisation (CMO) was introduced as early as the 19th century for musical works whose authors were clearly powerless to control their use individually.19 The foundation of the very first society was closely linked to the named of Beaumarchais. He led the legal battles against theaters which were reluctant to recognize and respect authors economic and moral rights. Those victorious battles, led, on his initiative, to the foundation of the Bureau de législation dramatique in 1777, which was later transformed into the Société des auteurs et compositteurs dramatiques (SACD), the first society dealing with the collective administration of authors‘ right. This encouraged Honoré de Balzac, Alexandra Dumas, Victor Hugo and other French writers to follow suit in the field of literary more than half a century later when they constituted the Société des gens de letters (SGDL) whose general assembly met, for the first time, at the end of 1837.20 However, the events leading to a fully developed collective administration started only in 1847 when two composers, Paul Henrion and Victor Parizot and a writer, Ernest Bourquet, supported by their publisher, brought a lawsuit against “Ambassadeurs”, a ―café-concert‖ in the Avenue des Champs-Elsyées in Paris. They saw a flagrant contradiction in the fact that they had to pay for their seats and meals in the “Ambassadeurs”, whereas nobody had the intention of paying for their works performed by the orchestra. They took the brave and logical decision that they would not pay as long as they were not paid as well. In the litigation, the authors won; the owner of the “Ambassadeur” was obliged to pay a substantial amount of fees. Enormous new possibilities were opened for the composers and text-writers of non-dramatic musical works by that court decision. It was clear, however, that they would not be able to control and enforce their newly identified rights individually. The realization led to the foundation of a collecting agency in 1850, which was soon replaced by the still functioning ―Société des auteurs, compositteurs et éditeur de musique” (SACEM).21 At the end of the 19th century and during the first decades of the 20th century, similar authors‘ organisations (so-called performing rights societies) were formed 19 The first authors‘ societies that were more than mere professional associations of authors and also fought for the recognition of authors‘ rights in their works were established in France. 20 According to Paul Florence in the Management of Authors‘ Rights and Neighbouring Rights in Europe, in RIDA 2003, SGDL now has the status of association. 21 The historic account of Collective management is quoted as Dr. Mihály Ficsor gave in Collective Management of Copyright and Related Rights, WIPO Publication, Geneva 2002 p18-19. 26 Collective Management of Copyright and Related Rights in Music: A Case Study of the United Kingdom and Ghanaian System ________________________________________________________________________________ in nearly all European countries and in some other countries as well. Cooperation developed rapidly among those organisations and they felt a need for an international body to coordinate their activities and contribute to a more efficient protection of authors‘ rights throughout the world. It was in June 1926 that the delegates from 18 societies set up the International Confederation of Societies of Authors and Composers (CISAC). The membership of CISAC has been constantly widening since then and now also includes, in addition to the more traditional ones, societies dealing with other types of works (such as works of fine art and audiovisual works.22 2.2. Objectives/Functions of Collective Management Organisations Authors and performers can choice from a whole range of methods of management adapted to the nature of work and performance, and the rights conferred by such works and performance; and the status of the author or performer. Some of them manage their interests themselves, although uncommon, some may also use the services of ―agents‖23 to act as intermediary between them and users. Even so, the laws protecting rightholders have not disregarded individual management: controls on contractual practices have been established in order to protect authors, who are considered to be the weak party in negotiations concerning their economic rights. Some laws have also provided a protective framework for exploitation contracts involving neighbouring rights where the ordinary law of contracts did not seem sufficient on its own. However, experience has shown that in certain cases, individual management is unable to meet the requirements of the exploitation of works and performances, especially where secondary use of works and performances are concerned, even within an organized contractual framework. This is particularly true in the case of musical works whose reproduction and performance cannot be controlled individually due to the number of frequency of such acts and the variety of communication channels.24 When a work appears on the market, the public starts to take interest in it. The disks or cassettes sold commercially are sooner or later used 22 For in-depth information on the activities and contributions of CISAC to the growth and development of collective management over the years, visit the CISAC http://www.cisac.org/CisacPortal/security.do;jsessionid=C44C52A97DC654ED6A6C418EF6C204 66?method=before (date last accessed 18th February, 2010). 23 There are various types of agents that can be used in the making of a work or performance available to the public, notable amongst them in the music industry is the services of publishers or phonogram producers. Their activities and the important role they play, the author hopes to discuss in another forum.as it is beyong the scope of this paper. 24 The advent of new technology such as the internet makes the situation much complicated. For an in-depth analysis of this challenges see, inter alia, Marco Ricolfi, Individual and Collective Management of Copyright in the Digital Environment, in Paul Torremans (edited by) Copyright Law: A Handbook Contemporary Research, Edward Elgar Publishing Ltd., 2007, p283et seq.; published work 2008, M.M. Frabboni, Online Music Licensing, the calm after the storm, Entertainment Law Review, 2006, 17 (2), p65-69. Alfred Kumi-Atiemo 27 _______________________________________________________________________________ for the purposes of broadcasting and/or public performance in restaurants, hotels, shops and other public places. The author or composer is rarely consulted; the work follows, so to speak ―the law of the market‖.25 The authors or composers have realized they are completely unable to monitor what happened to their works that were published. They had the choice between resigning to their fate – considering the uses of their works as the appendage of the success of the sales of copies – or defending their rights.26 On the other hand given the scope of usage of music outside the private sphere – for purposes of public performance, broadcasting programmes or production of phonograms, rightholder could look for publishers who would act as intermediaries between creators and the public. According to the legal provisions, user organisations are obliged to contact authors in advance so as to know whether, how many times and under what financial conditions the composers and/or authors would consent to their works being performed or broadcast. However, users found this a difficult task seeking clearance from rightholders who were scattered all over the world and where they were able to make such contacts, experience shows that most composers never responded to those contacts.27 It should therefore be noted that such a method would quite simply be absurd. The use of music for the masses requires a special service where the copyrights are gathered together by one person or organisation, thereby allowing users to respect them more easily. This need for specialized organisation in the form of concentration of copyrights, one-stop-shop28, where such clearance can be obtained, facilitated the need for collective management organisations or societies. Collective management societies on behalf of members simply the procedure for “negotiations, calculation of fees and facilitate access to works and distribute royalties to its members,” consequently reduce administrative cost for both rightholders and users.29 Collective management societies are therefore in a better position in establishing appropriate and efficient monitoring and fee calculation mechanisms which would work in favour of both their members and clients. Thus, in conclusion, tracing the owners and obtaining permission was not necessary when the client knows there exist such one stop-shop in its operational territory, as they ameliorate the cumbersome tracing problem. 25 The law of demand and supply in economics. As narrated the history of collective management above, this struggle for defense led to Paul Henrion et al. with the support of their publisher, bringing a lawsuit against “Ambassadeurs”, a ―café-concert‖ in the Avenue des Champs-Elsyées in Paris in 1847. 27 See Dr. Ulrich Uchteenhagen in Copyright Collective Management in Music, WIPO Publication No. 789(E) p.12. 28 Supra 24, as stated, the advent of the information age has created serious challenges to rightholders. To overcome this, major corporations are using a centralised form of license for online music. A typical example is the Warner/Chappell Music Launches initiative for Pan-European Digital Licensing (P.E.D.L.) which is discussed later. 29 Major users of services of corporate firms are often referred to as clients so the article will refer to users of copyright works as clients of CMS. This will be explained in chapter 4 below. 26 28 Collective Management of Copyright and Related Rights in Music: A Case Study of the United Kingdom and Ghanaian System ________________________________________________________________________________ 2.3. Legal Statutes: Nature & Status of Collective Management Organisation – UK Before we look at the legal statutes in the United Kingdom (UK) and Ghana governing collective societies, it will be appropriate to comment briefly on the nature and status of CMS in general as they differ from one jurisdiction to the other. The nature and status of CMS may differ in various respects depending on the choice of legal regime involved. They differ in respect of the form and the extent of governmental supervision, whether as private, public or semi-public societies. CMS also differ in respect of the scope and the types of rights they manage. Some mange exclusively performing rights, some manage a combination of performing rights and mechanical reprographic rights whilst in other countries especially developing countries CMS mange works in all categories, ―trilogy‖ of economic rights.30 Finally, CMS differ in respect of whether they are the only CMS in the jurisdiction responsible for the management of the rights, ―de facto or de jury monopoly” or there are more than one such organisation in the field.31 Collective management began in the UK early in the twentieth century when it was also realized that in many circumstances it was virtually impossible for an individual owner of an intellectual property right to police all potentially infringing uses. This gave rise to the idea of collective licensing, whereby rights were assigned to a society or such a society was given the right to grant licenses on behalf of the right-owner and to enforce those rights against infringers. The UK Copyright Act 1911 gave impetus and even before the Act was adopted the Mechanical Copyright Licenses Copyright Ltd. (MECOLICO) was formed in order to collect and distribute mechanical royalties from the gramophone companies.32 Soon afterwards, in 1914, the Performing Rights Society Ltd. (PRS) saw the light of the day with the specific aim to collectively administer public performance rights in musical works.33 A role, PRS has up-to-date successfully played on behalf of its members and went to court whenever the need arose to enforce the rights of its members and principals.34 Collective management organisation in UK has always been private and there had been various societies which were incorporated after PRS to administer other category of works subject to the statutory regulatory 30 Supra note 27, p.18. For some examples of each type see Dr. Mihály Ficsor supra note 26, p38 et seq. 32 Gramophone Co. Ltd. v. Stephen Cawardine & Co. [1934] gave credence to development of collective licensing in UK. For chronological account of the development of CMS in the UK see Paul L.C. Torremans, Collective Management in the United Kingdom (and Ireland), in Daniel Gervais (edited by) Collective Management of Copyright and Related Rights, Kluwer Law International, 2006, p227et seq. 33 For historic account of PRS incorporation see http://www.prsformusic.com/SiteCollectionDocuments/AboutMCPS-PRS/PRSMEMART.pdf (last visited 3rd February, 2010) 34 To cite a few case law to support the assertion: - Performing Rights Society v. Hammonds Bradford Brewery Co. Ltd. [1935] AII ER 270; Jennings v. Stephens [1936] AII ER 409 and Performing Rights Society v. Harlequin Record Shop Ltd. [1972] 2 AII ER 828. 31 Alfred Kumi-Atiemo 29 _______________________________________________________________________________ authority.35 It is worth mentioning that the Mechanical Copyright Society Ltd. (MCPS) and the Performing Right Society (PRS) entered into an alliance, known as the MCPS-PRS Alliance, which became operational in 1997. The MCPS-PRS Alliance was further rebranded as “PRS for Music” in January, 2009. For purposes of this paper, the focus will be on societies relating to the music industry, particularly PRS for Music, and currently operating as CMS. 2.4. Legal Statutes: Nature & Status of Collective Management Organisation – Ghana Although Ghana, since early the twentieth century, has legal framework concerning the protection of intellectual property rights including copyright and related right; the concept of collective management of rights was introduced in 1986 following the enactment of the Copyright Law, 1985 (PNDCL 110). Ghana like all other English speaking countries in Sub-Saharan Africa were colonized by Britain, the UK therefore applied the Copyright Act of 1911 and subsequent Acts to all the colonies. Ghana for instance had the Copyright Ordinance, 1914 (CAP 126) with its enabling Copyright Regulations 1918, the Ordinance sought to carry into effect within the colony the fore mention British Copyright Act. After independence in 1957, not much was done to enact Ghana‘s own laws, the common law system was carried over with a mere cosmetic changes.36 The 19661Copyright Act (Act 85) and the Copyright (Fee) Regulation of 1969 (L.I. 174) respectively therefore borrowed the UK Copyright Act of 1956 which remained in force until 1985. The Act 85 and its L.I. only added more materials as far as protectable subject matter of copyright was concerned. As a result of technological challenges which confronted copyright protection in the 70s and 80s, Ghana enacted its own copyright law P.N.D.C Law 110 of 198537 to meet the demands of the challenges and also to take into cognizance international norms such as provisions of the Berne Convention and the Rome Convention. Section 42 of the PNDCL 110 made provision for “the establishment of a non-profit making society of body corporate which shall, among other things, be responsible for authors, the promotion and protection of the interest of authors and, in particular the collection and distribution of any royalties or other remuneration accruing to authors in respect of their rights as was provided under the law”. In pursuant to that mandate a semi-quasi society, the Copyright Society of Ghana (COSGA) was set up in 1986 and like other developing countries, 35 Section 128A of the English Copyright, Designs and Patents Act 1988 ("the Act") confer such statutory regulatory authority on the Secretary of State. 36 Supra note 6, Adusei p13-24 and note 12, Ouma p921-923. 37 P.N.D.C Law 110 of 1985 has since been repealed by the enactment of Copyright Act 690 of 2005. The Act 690 took into consideration Ghana‘s obligation under the TRIPS Agreement and other international treaties such as the WIPO Copyright Treaty (WCT) and the WIPO Performances and Phonograms Treaty (WPPT). 30 Collective Management of Copyright and Related Rights in Music: A Case Study of the United Kingdom and Ghanaian System ________________________________________________________________________________ COSGA, managed works in all categories.38 COSGA enjoyed both “de facto or de jury monopoly” as the law and regulation made provision for a single society to administer all categories of works.39 There were two great setbacks to the substantive law and the regulation which are:- one, the lack of possibilities for the formation of several collective societies to the promotion and protection of different creators.40 The interest of literary authors are entirely different from the interest of musical, artistic authors etc., therefore such unrelated interests been put together to be administered by a single society as stated above rather achieved a detrimental result for creators. COSGA has not been able to organize its general assembly after a failed General Assembly in 1992 elected a literary author as its president which music composers opposed. COSGA only ended up administering public performance of music right owners. Again, lack of a provision in the law for a supervisory authority to supervise the activities of COSGA, accounts for accusations and counter accusations against the operation of the society. This has affected public image of COSGA and its overall performance. Nonetheless, these anomalies have been corrected by the Copyright Act, 2005 (Act 690); the Act provides for formation of several collective societies to the promotion and protection of different creators.41 It also gives the Minister of Justice the responsibility to make regulation and supervise the activities of CMS so formed.42 Again the Act provides for a Copyright Tribunal to settle disputes such as license schemes, tariff related disputes etc.43,44 with the activities of the Tribunal subject to appeal.45 The provision for an appeal by an aggrieved party is informed by abuse of power and biases which such tribunals in African are often accused of. 2.5. Structures of Collective Management Organisations The structures of collective management organisations are relatively the same, the structure however, differ slightly depending on the choice of its 38 COSGA operated under the P.N.D.C Law 110 of 1985 between 1986 and 1992 until the regulation governing the activities of COSGA, the Copyright Society of Ghana Regulations 1992, L.I.1527 was promulgated in 1992. 39 There is no significant judicial pronouncement s in the development of collective management of authors‘ rights in Ghana. The only case law that can be cited is Copyright Society of Ghana v. Afreh [1999-2000] 1 GLR 135. 40 L.I.1527 Regulation 2 of the LI states the objects of the COSGA as:(a) to represent and protect the professional, economic, moral and other interests of authors of literary, musical, artistic, dramatic and other works. (b) to serve as a collecting society for the collective administration of copyright of the members of the Society. 41 Section 49(a) of Act 690 (Act 205) 42 Section 49(c) 43 Sections 51-58 44 Supra note 35 Sections 145-151 also provides for Copyright Tribunal ("the Tribunal"). The Tribunal has the right pursuant to 128(A) and (B) also to make decision on licensing schemes, it may either confirm or vary a license or licensing scheme section 128 B(3). The decisions of the Tribunal is also subject to an appeal to the High Court pursuant to s. 152 of the Act 45 Supra note 43Section 58 Alfred Kumi-Atiemo 31 _______________________________________________________________________________ regulation, legal regime involved and the form and the extent of governmental supervision, whether as private, public or semi-public societies. A general structure of a CMS consist of a general assembly constituted by members and principals of the CMS which elect a board, president or chairpersons, committees appointed by the board; general administration/commission headed by a chief executive officer which run the day-to-day affairs of the CMS. It also determines the procedures through which authors become members and principals of the CMS and how works are assigned to a CMS concerned. Details of the structure of PRS for Music are part of the PRS Rules and Regulations46 whilst that of COSGA can be found in the COSGA Regulation.47 3. DOCUMENTATION – REPERTOIRE 3.1. National Repertoire The repertoire of a CMS means all the works for which the society is entitled to grant to third parties, administer or grant its clients authorization for use. For a society to operate successfully without any limitation to the content of its repertoire, it must hold the global repertoire where it is able to encompass not only works of its nationals but also works originating from all countries and the continents. This begins with the national repertoire, i.e. works created or published by the specific members and principals of the society. The society is obliged to prove which authors it represents, its status and capacity to represent authors, composers and publishers. A good CMS must from the onset concentrate all its efforts on keeping a repertoire which is as complete as possible. To achieve this, authors must be aware of the existence and functions of their national society and furthermore be convinced to enroll with the CMS as principals and subsequently become members. Trust in the CMS is a major factor and the level of management of its documentation. The PRS for Music over the years has been able to establish and built that level of trust and confidence required as a corporate body to operate, its membership now stands at about 65,000.48 In Ghana, it has not only been difficult to tell the membership of and the repertoire COSGA holds at the moment, its membership is also dwindling each day in and day out. This can be attributed to lack of proper filing system and accountability which affect most organisations in developing countries. It is difficult to readily ascertain the total number of works 46 Source see:-http://www.prsformusic.com/SiteCollectionDocuments/AboutMCPSPRS/PRSRULES.pdf (date last accessed 19th February, 2010). 47 Supra note 40 Regulation 3-14. 48 Source PRS for Music website for membership information www.prsformusic.com/SiteCollectionDocuments/Membership/MA2andannexes.pdf (date last accessed 10th February, 2010). 32 Collective Management of Copyright and Related Rights in Music: A Case Study of the United Kingdom and Ghanaian System ________________________________________________________________________________ which have been assigned to COSGA) by its members.49 Members of COSGA have also lost trust in the society due to accusations of alleged lack of transparency and accountability and this has subsequently affected the quality of the relationship COSGA has as members and principals are no longer interested in assigning news works or updating their records with the society. These have also affected the relationship COSGA has with its major clients as most of its clients year after year feel no longer obliged to pay attention to renewing or signing new contracts with the society or pay royalties for the works they use. The above description has characterised the operations of CMS not only in Ghana but in some developing countries. COSGA and CMS in some developing countries can therefore learn from their counterparts in the developed world how to build and establish trust required to operate as corporate bodies with their principals, members, clients and the general public within their operational environment. 3.2. Foreign Repertoire The rights relating to foreign repertoires are conferred as part of the ―reciprocal representation contracts‖ which the national CMS signs with foreign sister societies. These contracts signed between societies which are based on the CISAC and BIEM models50 have come under close scrutiny especially by antitrust bodies, in the EU in particular, as the terms and conditions of such agreement are seen as anti competitive. The scrutiny is beyond the scope of this paper.51 The reciprocal representation contract itself does not give a society the mandate to represent other societies in its territory. It is other well developed international documentation such as the CISAC CAP/IPI documentation which contained detailed information on the foreign authors, composers and publishers a society represents.52 This information system which is shared amongst CMS assists in administering foreign repertoire. 49 COSGA still uses paper filling system and the same declaration forms used since its inception 1986. 50 Articles 1-3 of the CISAC model agreement define the rules of governing such reciprocal agreement. 51 For in-depth analysis of reciprocal agreements and the reaction of the EU Antitrust see inter alia, Enrico Bonadio, Copyright Collective Licensing and the EU initiatives in the on-line music field, in DANTe 2006, p387et seq. Also see M.M. Frabboni, The current discussion on collective management of rights in the EU, Economic Concerns, paper presented at the Workshop on the Law and Economics of Intellectual Property and Information Technology, July 22-23 2005, Universitá Carlo Cattaneo Castellanza LIUC 7 (available at http://www.liuc.it/ricerca/istitutoecomicsjuly2005/papers/frabboni_LIUCpaper.pdf), M.M. Frabboni, Cross Border Licensing and Collective Management: A Proposal for the On-Line Context, in Entertainment Law Review, 2005, 16 (8), 204. 52 CAP means ―composers, authors and publishers‖ whilst IPI stands for Interested Party Information. They contain relevant information relating to authors, composers and publishers who are affiliated to CMS as members and principals. For detailed discussions on what constitute such documentation system and how it works, see supra note 27 Uchtenhagen, p58-67. Alfred Kumi-Atiemo 33 _______________________________________________________________________________ CMOs in Europe including PRS for Music have over the years utilised such reciprocal agreements to widen its repertoire and licensing even into the online music field. This includes but not limited to the Simulcasting Agreement signed on 16th November, 2000 by CMS. The Simulcasting Agreement which included PRS for Music had 31 countries; this was followed by the Webcasting Agreement in 2003. It is also worth mentioning the Santiago Agreement signed in October, 200053 as some of the many of such reciprocal agreements. The PRS for Music has been involved in all these reciprocal agreements and many more and now is in a position to grant Pan-European licensing for European repertoire which cover the EU member states. Two of such initiatives of late which PRS for Music is involved are “the Pan-European Digital Licensing Initiative (PEDL”) and “the Centralised European Licensing and Administrative Service (CELAS). The PEDL initiative was launched in June 2006 by Warner Chappell Publishing, European CMS representing author and music publishers were invited to join. Some of the CMS which joined the initiative were PRS for Music (UK), STIM (Sweden), SACEM (France), SGAE (Spain), BUMA-STEMRA (the Netherlands). These CMS were designated as non-exclusive licensing agents of Warner/Chappell Music for the mechanical rights54 of its Anglo-American repertoire. Licenses are granted on a short term basis (1-2 years) and tariffs are based on the country of destination. In principle, any European CMS may join the initiative, provided it complies with a set of specific criteria intended to ensure transparency, efficiency and accountability.55 The CELAS GmbH is also a new entity which was established in 2007, based in Munich, and is jointly owned by the German CMS, Gema and by the UK CMS PRS for Music. CELAS was set up to also provide cross-border licensing and administration services on a pan-European basis to right holders for on-line and mobile exploitations. The entity is theoretically “open for all types of right holders”; however, currently it only licenses the mechanical rights of EMI music Anglo-American repertoire. The licenses cover all interactive and some noninteractive forms of exploitation, including ring-tones, downloads, streaming and web-casting. In 2008 CELAS entered into agreements with several commercial users, including 7Digital, iTunes, Nokia, Real and Omnifone. By the end of January 2009, licenses have been granted to more than 20 of the largest digital providers in Europe56. 53 For information about the pros and cons of each of these agreements and how they were received by antitrust bodies, clients and members of CMS involved see Bonadio, supra note 51 p395 -399. 54 Mechanical rights means a piece of music reproduced as a physical product. 55 For further reading on ―the Pan-European Digital Licensing Initiative (PEDL‖) http://findarticles.com/p/articles/mi_pwwi/is_200606/ai_n16451812/ (last visited 18th February, 2010). 56 For further reading on the Centralised European Licensing and Administrative Service (CELAS) see http://www.internationallawoffice.com/newsletters/detail.aspx?g=aabcf6cf-9152-4dd7-b8d5fb3faf9834fc 34 Collective Management of Copyright and Related Rights in Music: A Case Study of the United Kingdom and Ghanaian System ________________________________________________________________________________ COSGA like most developing countries‘ societies began very well from its initial stages with a number of reciprocal representative agreements with foreign societies which were members of CISAC. But the competence to manage its owner repertoire has dwindled with time, COSGA has not been able to analyse or exchange any of the documentations mentioned above with sister societies. Although sister societies constantly send documentation on their repertoires to COSGA, the latter has not been able to analyse, administer, nor send its own to other societies.57 3.3. The works of Authors who do not belong to Collective Management Societies and The Works of Unknown Authors Clients such as broadcasting organisation58 broadcast or use works created by authors and composers who may not be members and principals of CMS. Experience has shown that this practice is unavoidable as clients cannot determine, with the best will in the world, who is and who is not affiliated as members or principals of a CMS. Nor can clients easily determine which society to seek authorisation from for works of authors who do not belong to the society concerned in its territory of operation. Clients often conclude by arguing that the authorisation to broadcast the works granted by a CMS is general in scope and covers all sorts of musical works.59 The big question is: which should the attitude be of the CMS when it discovers, in the lists of broadcast works, works created by non-member or ―unknown authors‖?60 Should the CMS remove these works on the grounds they are not part of its documented repertoire or should it by contrast include them in its distribution work? The general practice is that CMS are seen as firms established in the interest of the public to provide services to everyone and not only those who wish to use it or who are members or principals of the society. CMS thus manage works of authors who do not belong to the CMS based on a solid legal foundation: “business management without a mandate.”61 The non-member or the unknown author cannot know what happens to his/her works and he/she is unable to act 57 A search at COSGA showed a number of documentation on foreign repertoire including the repertoire of BUREAU BURKINABE DU DROIT D'AUTEUR (BBDA) i.e. the collective society of Burkina Faso. 58 Whenever broadcasting organisations are referred to, it includes webcasters and organisations/individuals that commercialised copyright protected works on the internet. 59 Supra note 55 and 56. 60 ―Works of unknown authors‖ often termed as ―orphan works‖ are works in respect of which the right owner cannot easily be ientified and/or located. 61 This is a quasi-contract relationship between two persons, one of which relies on the other in case of incapacity. Also article 3 of the Berne Convention provides the principle of ―national treatment‖. Alfred Kumi-Atiemo 35 _______________________________________________________________________________ him/herself. During such situation the CMS can intervene by carrying out business without a mandate, according to the legal definitions, “in order to prevent damage with which the non-member or unknown author is threatened”. The CMS then collect royalties; pay the share of royalty collected on his/her behalf, after administrative expenses have been deducted. The payment of non members or unknown authors, however, should not be subject to the condition that the author must join the CMS beforehand. The percentage of fees to be deducted must correspond to the rate applied to the management of the rights of members and principals affiliated to the CMS in the normal manner. Where the CMS manages to identify the author, it is obliged to pay the royalty within the deadlines prescribed by the applicable law. This period varies between two and five years. Whilst CMS in developed countries including PRS for Music have been able to administer works of authors who do not belong to the CMS and works of unknown authors including works of foreign origin and have created accounts for such authors, it has been very difficult to manage such works in developing country. COSGA has not been able to administer such works, collect royalties and pay the authors concerned. This is attributed to the difficulties with which COSGA has to administer works of its members and principal as it is unable to identify works of its own members and principals. As being practiced by COSGA at the moment, the minimal money paid by clients are shared among its members subjectively without sound best practice. It is therefore the wish of the author that developing countries should be assisted to overcome the administrative challenges they face in order to broadened their scope of operation. Ghana would need such technical assistance as new CMS are envisaged for all categories of copyright works under the ACT 690. 3.4. The Global Repertoire Global repertoire consists, in each county, of the national or a repertoire specific to the CMS, the foreign repertoire entrusted to the CMS under reciprocal representation contracts with sister societies of other countries as discussed above. And also the works of non-members or unknown authors may be included in the repertoire through the application of business management without a mandate also discussed above. It is worth mentioning that not all states have adopted a system of ―extended collective licensing, however, every CMS must be able to play its role as an intermediary between production and consumption on the music market. To play this role effectively, the CMS must be able to authorise its clients to use the global repertoire on the conditions that every effort is made to be the owner or assignor of the repertoire. A role CMS in developed world have played very well using approved international documentation system such as the CISAC CAP/IPI documentation system. Although clients in Ghana and all developing countries presume CMS in their territories possess such mandate and on that assumption use the global 36 Collective Management of Copyright and Related Rights in Music: A Case Study of the United Kingdom and Ghanaian System ________________________________________________________________________________ repertoire, COSGA has not been able to effective manage the global repertoire as mentioned above. This is an area that needs rethinking in collective administration of such rights vis-á-vis authorisation for public performance. There is at the moment a regime of “free commercial usage musical works” by TV and radio stations62 for economic benefits without corresponding remuneration to authors who created such works. It is worth mentioning that this practice of ―free usage of musical works‖ for commercial activities at the detriment of authors cannot, in the imagination of any fair minded person, constitute permitted or fair use under the current copyright dispensation.63 Efforts should therefore be made to correct such practices which are not only detrimental to the creative industries but also discourages foreign investment flow into Ghana and other developing countries. It is also worth adding that whilst management of such global repertoire must be encouraged, care must be taken to ensure that agreements that would be reached between sister CMS to promote global repertoire are without ―customer allocation clauses‖ or ―territorial restriction clause.‖64 Management of such global repertoire must, however, be encouraged without ―customer allocation clauses‖ or ―territorial restriction clause.‖65 4. CLIENTS – RELATIONSHIP WITH CLIENTS 4.1. Contract with Clients The paper will be incomplete without a comment regarding clients of CMS. Indeed - like every corporate entity - CMS have their own clients. As a matter of fact, all those who use music for professional or commercial purposes should be treated as partners of the authors‘ society in the music market – or as ―clients‖ and not as ―users‖66 – the word ―user‖ which has been used in the development of CMS system conveys lack of respect for these major partners who play crucial role in making authors works available to the public. Broadcasting organisation and other users relied on the consent of CMS in order to be able to carry out their duties; the clients were often seen as subservient or inferior in relation to these authors‘ societies. CMS thus were often seen as awkward; in their arbitrary billing system which often left clients with missed feeling after their first contact with CMS as is 62 Ghana at the moment has 47 authorised TV stations and 217 F.M. stations with total of 177 radio stations in operation. Source Ghana‘s National Communication Authority website:http://www.nca.org.gh/index.php?option=com_content&view=article&id=199&Itemid=113 (visited 17th February 2010) 63 See Adusei supra note 6, p25. 64 See Bonadio, supra note 51, p396 -397. 65 See Bonadio, supra note 51, p396 -397. 66 See Uchteenhagen, supra note 27, p12 Alfred Kumi-Atiemo 37 _______________________________________________________________________________ being witnessed in Ghana at the moment. CMS often solely took decisions whether or not to authorise a client the use of its repertoire and fixed the royalties as they deemed fit. For decades numerous CMS, particularly in developing world, have not signed contracts with clients. Clients were unilaterally ―authorised‖ and their obligations took the form of conditions for the grant of authorisation. And in extreme cases as is still the case in Ghana, the authorisation was combined with the invoice issued after the royalty had been paid. This created tensions and disagreements which much often than not worked against CMS not only from the point of view of clients but also from the point of view of antitrust authorities, as this unilateral method of authorisation was accompanied by legal failings. As stated above, clients relation building based on trust and confidence is a major area CMS in developing countries including COSGA would need support from their developed counterparts to build to enable CMS in developing countries to succeed. 5. CONCLUSION In conclusion, the failure of CMS in Ghana and most developing countries does not mean the CMS system is not workable; the system has worked over a century and half in developed countries in the creative industry especially in the music industry. The failure of CMS in Ghana and for that matter for some developing countries are due to a number of factors, some of which have been summed up by Dr. Poku Adusei in his article67 as follows:- first, the fight against capitalist interests, since time immemorial, has never been easy to surmount; secondly, the failure of the musicians to establish vibrant collective societies to pursue a common legal cause; thirdly, the failure of institutions such as the Musicians Union of Ghana (MUSIGA), the National Communications Authority (NCA), the National Commission On Culture (NCC), the Ministry of Justice and the courts to enforce the legislative framework to the core.‖ The net effect has been negative on the music industry as musicians are unable to get equitable remuneration for commercial use of their works. All hopes are not lost:- Ghana is currently working on a new regulation to govern the activities of CMS and, the legislators may help to strengthen the new CMS that will be formed to function well and avoid any ambiguity that have confronted management of rights in Ghana over the years. This can be done by detailing in the regulation of what can be managed and what cannot be managed by a CMS in Ghana.68 As stated above management of global repertoire must also be encouraged in developing countries also ―customer allocation clauses‖ or ―territorial restriction clause.‖ These CMS should be encouraged to make efforts to be the depository of the global repertoires as being done by the European 67 See Adusei, supra note 6, p25 Section 49(3) provides that ―the he Minister may by legislative instrument make Regulations for the formation, operation and administration of societies‖. 68 38 Collective Management of Copyright and Related Rights in Music: A Case Study of the United Kingdom and Ghanaian System ________________________________________________________________________________ Commission in the EU instead of allowing proliferation of CMS to manage each economic right. It however should be stressed that the trilogy of economic rights for each category of work can be exercised either by the author him/herself or by a national CMS, authorised for this purpose and placed rather under State surveillance.69 Thus excluding any form of dissent and any two-track system which is being agitated for in Ghana today by stakeholders; authors are already aware of the alternative between the individual exercise of their rights and collective rules governing these rights. To conclude, CMS so formed should be encouraged to make efforts to be the depository of the global repertoires in the category of work set up to managed. However, such efforts should in no way affect authors of their right to become members of a CMS of their choice or limit clients in their choice to any monopolistic CMS established in their operational territory. A comprehensive system of reciprocal representation contracts based on the CISAC/BIEM70 models between CMS would allow the author to become a member where he/she wishes and clients to obtain authorisation of CMS of their choice without weakening the system. Whatever the author‘s place of membership, his/her works will form part of the global repertoire and wherever a client chooses to seek authorisation from, it might still have access to the global repertoire and/or multi-territorial license. The freedom of membership and clients corresponds to the element of free competition between CMS which affects neither their monopoly position “de jure or de facto”, nor the content of the global repertoire. Again, in order to cut short any arbitrary attempt, a good number of legislators especially in Europe have stipulated a legal constraint obliging authors‘ societies to consent any use of music in their repertoire, which would be requested by all clients willing to pay the fee charged irrespectively of their operational territory. This legal constraint is a clear indication that any arbitrary consideration must be eliminated from CMS. The new CMS in Ghana must learn from such best practices and domesticate it in their interest. Furthermore, CMS now negotiate contracts and tariffs71 simultaneously with client and in most cases with associations on behalf of their members. The resultant negotiation is then submitted for approval or amendment by a competent authority. This practice has helped to reduce the tension, if not eliminated, as through the combination a situation is avoided in particular where contradictory opinions on certain tariff-related provisions again become inflamed during the discussion of the 69 COSGA‘s failure is due to lack of proper supervision by the then National Commission on Culture and the Copyright Office. 70 CISAC was defined at the beginning of the paper. BIEM however is defined as the International Bureau of Societies Managing Recording and Mechanical Reprographic Rights. 71 Tariff means the determination of the royalties applicable to a particular circle of clients for the use of music during a particular period. The good experience acquired from international best practices is that tariffs are often based on a percentage of the income of a client. Alfred Kumi-Atiemo 39 _______________________________________________________________________________ content of the contracts. There is an appreciable difference between a client who undertakes through its signature to pay a tariff-related royalty and a client who does not respect an authorisation condition. The author recommends that developing country CMS adopt such approach to avoid animosity which has characterised their operations. The publication of Dr. U. Uchtenhagen, ―the Setting-up of New Copyright Societies: Some Experiences and Reflexions,‖ can be of immense benefit in that direction. CISAC would also need to strengthen its technical cooperation towards capacity building of CMS in developing countries including Ghana to make the CMS much more effective and relevant in the 21st Century. Finally, the author recommends the adoption of an international treaty under the auspices of WIPO, which could be called “WIPO Collective Management Organisation Treaty (WCMOT)”. To be spearheaded by WIPO and CISAC for CMS operations. Such a treaty could be seen as a special treaty of the Berne Convention72 like the WIPO Copyright Treaty (WCT) to govern the activities of CMS. It will replace the WIPO guidelines73 on CMS and technical assistance provided for such CMS, which have not been helpful particular to developing countries like Ghana. 72 Article 20 of the Berne Convention (1971) provides ―… countries reserve the right to enter into special agreements…‖ Also article 1(1) of the WCT states, ―This Treaty is a special agreement within the meaning of Article 20 of the Berne Convention…..‖ 73 For up to date information on technical assistance see WIPO publication No. PCIPD/1/7 of the Permanent Committee on Cooperation for Development Related to Intellectual Property on ―Promotion and Development of Collective Managemen t of Copyright and Related Rights. 40 Collective Management of Copyright and Related Rights in Music: A Case Study of the United Kingdom and Ghanaian System ________________________________________________________________________________ BIBLIOGRAPHY F.M. Abbott - T.H. Cottier – F. Gurry, International Intellectual Property in an Integrated World Economy, Aspen Publishers, 2007 WIPO Intellectual Property Hand Book, Administration of Copyright, WIPO Publication No. 489(E) M. Ficsor, Guide to the Copyright and Related Rights Treaties administered by WIPO & Glossary of Copyright and Related Rights Terms, WIPO Publication No. 816 U. Uchtenhagen, the Setting-up of New Copyright Societies: Some Experiences and Reflexions, WIPO Publication No. CD 926 M. Fiscor, Collective Management of Copyright and Related Rights, WIPO Publication No. 855(E) U. Uchtenhagen, Copyright Collective Management in Music, WIPO Publication No. 789(E) D. Gervais, Collective Management of Copyright and Related Rights, Kluwer Law International 2006 P. Adusei, The Evolution of Ghana‘s Copyright Regime Since Independence: A Critical Appraisal published in Ghana Law Since Independence, History, Development and Prospects, UGFL 2007 M. Ricolfi, Individual and Collective Management of Copyright in the Digital Environment, polished work 2008 M. OUMA, Copyright and the Music Industry in Africa, in JWIP 2004, 919 ff. J. Asein, Nigeria Copyright Law and Practice, Abuja, 2004 H. Cohen Jehoram, The Future of Copyright Collecting Societies, EIPR, 2001, 134ff. P. Florenson, Management of Authors‘ Rights and Neighbouring Rights in Europe, in RIDA 2003, 2 ff. E. Bonadio, Copyright Collective Licensing and the EU initiatives in the online music field, in DANTe 2006 ff P. Gillierson, Collecting Societies and the Digital Environment, in 37 IIC 2006, 939-969 Alfred Kumi-Atiemo 41 _______________________________________________________________________________ P. Adusei, K. Anyimadu-Antwi, M. Halm, Ghana Country Report, African Copyright and Access to Knowledge (ACA2K), 2009 The English Copyright, Designs and Patent Act 1988 Copyright Law of Ghana, PNDC Law 110 of 1985 Copyright Society Regulation L.I.1527 Copyright Act 690, (2005) M.M. Frabboni, A Difficult Future for Reform on Collective Management of Rights, Entertainment Law Review, 2005, 144-148 M.M. Frabboni, The current discussion on collective management of rights in the EU, Economic Concerns, paper presented at the Workshop on the Law and Economics of Intellectual Property and Information Technology, July 22-23 2005, Universitá Carlo Cattaneo Castellanza LIUC 7 (available at http://www.liuc.it/ricerca/istitutoecomicsjuly2005/papers/frabboni_LIUCpaper.pdf ) M.M. Frabboni, Cross Border Licensing and Collective Management: A Proposal for the On-Line Context, in Entertainment Law Review, 2005, 16 (8), 204 M.M. Frabboni, Online Music Licensing, the calm after the storm, Entertainment Law Review, 2006, 17 (2), 65-69. TECHNOLOGICAL PROTECTION MEASURES FOR DIGITAL WORKS: A LEGAL ANALYSIS by Author: Márcio Mello Chaves Advisor: Giancarlo Frosio TABLE OF CONTENTS 1. INTRODUCTION 2. BRIEF TECHNOLOGY CLARIFICATION a. Digitization of Works, Internet and the Access to Contents b. Technological Protection Measures i. Technological Protection Measures on Digital Works c. Digital Rights Management (DRM) d. The Analog Hole 3. LEGAL BACKGROUND a. Anti-circumvention Provisions b. Users' Rights and Public Interest i. Introduction to Fair Use and Legal Exceptions to Copyright ii. Visually impaired Exceptions a. Recent Trends at the International Level 4. KNOWLEDGE PROTECTION a. Content Protection of Digital Works b. Digital Libraries 5. CONCLUSION: TPM vs Users' Rights and Public Interest: Who Should Prevail? 6. BIBLIOGRAPHY 44 Technological Protection Measures for Digital Works: A Legal Analysis ___________________________________________________________________________ 1. INTRODUCTION On a traditional point of view in the field of Intellectual Property Rights or IPRs, copyrights have as a main objective the incentive to authors and artists in general to create, granting a temporary, economical monopoly on their creations and is called the dynamic benefit. This traditional overview has been updated by new analysis concerning the static point of view. According to that doctrine, the static benefit allows IPR owners to overuse property rights based on the right to exclude others from using the protected works1. Such monopoly, granted by the country where the creation occurred, has to be enforced by the IPRs owners, which have the burden of actively policing infringement on every territory (principle of territoriality) on the limits on the jurisdictional reach of laws and regulatory actions of countries.2 In addition, the digitalization of works such as music and movies had a tremendous impact on those industries when technology switched from analog to digital, with global reach of illegal distribution. As consequence of such burden, IPR owners take measures to control the use of their digital works in the online environment through technology, measures which could be grouped into two separate categories: (i) measures that are deployed to limit access to protected content to users who are authorized to such access, such as cryptography, passwords and digital signatures; and (ii) measures that are deployed to control the use of protected content once users have access to the work. In the digital world, however, the scenario becomes more complex due to the ease to copy. In that matter, an effective way to avoid piracy has been the usage of Technological Protection Measures (TPM), the object of the present study. Such active rather than passive enforcement has undeniable benefits for IPR owners as it reaches the problem's cause instead of its consequences. Aside from the effectiveness brought by the TPM to the works in the digital format, some of the tools used deserve a special attention due to the consequences of an abuse of the IPRs that could affect copyright exceptions. In this study, the user‘s rights and public interest will be the focus. In particular, I will review the conflict between two counterpoising interests: the right to enforce IPRs by means of TPM versus User‘s rights and Public Interest. Another important issue to be addressed is the legislation that concerns Information Technology and shares common problems from around the world. As 1 W. M. LANDES & R. A. POSER, The Economic Structure of Intellectual Property Law, Harvard University Press, Cambridge, 2003, p. 12. 2 Idem. Márcio Mello Chaves 45 ______________________________________________________________________________ stated by MOORE3, technology develops at rampant speed, causing great difficulties for the legislation to keep up with and resulting in last minute changes of bills. The scope of the present study is to analyze, technically and legally, the TPM in the digital environment. The technical analysis will be toned down to allow better understanding of the legal analysis. The prevention of IP infringements by technological means is one of the most dynamic areas related to the enforcement of intellectual property rights, in both the legal and technological arenas. Faced with an ongoing period of dramatic commercial losses caused by counterfeiting and piracy as well as IP infringements in general, IP right owners have made over the past years, vast efforts to develop measures and technologies aiming to protect their products from being copied. New technologies usually bring challenges, but also opportunities: (i) the visually impaired and the organizations which provide to them access to information and knowledge have on technology a great ally; (ii) libraries have changed their traditional view of being a simple collection building for provision and preservation of printed material activities to become providers of material in alternative formats, such as audio books or digitized material. As I will propose, works under TPM, including those under Digital Rights Management – DRM – can invert the logistics of the authorizations required to have access to them through copyright exceptions for users rights (i.e. fair use) and public interest (i.e. the visually impaired, digital libraries). The exercise of copyright exceptions for their benefit allow under certain conditions the use of a work without any authorization, but works under TPM could require such authorization to avoid breaching anti-circumventing legislation. As an effect, ―the exercise of exceptions for the benefit of the visually impaired, including the operation of the libraries for the blind, has been affected by important shifts regarding the copyright protection of works in the global information infrastructure‖.4 At last, it is crucial to explain the interdisciplinary importance and context of this study. Computer technicalities can seem extremely complicated to the law student; the same way, legal technicalities have the same effect on computer engineering students. The challenge faced by the current study is to find a simple, yet complete on its terms, explanation, since technical terms do not facilitate law interpretation and vice versa. 3 Moore's theory suggests that computer's processing capacity doubles every two years. G. Moore E. Cramming more components onto integrated circuits. Electronics Magazine, 1965. 4 G. LUNG, Copyright Exceptions for the Visually Impaired - International Perspective, lecture presented in the 70th IFLA General Conference and Council, Buenos Aires, 2004. 46 Technological Protection Measures for Digical Works: A Legal Analysis ________________________________________________________________________________ 2. BRIEF TECHNOLOGY CLARIFICATION a. Digitization of Works and the Internet Technologies have major developments from time to time, drastically changing previous technologies. The digitalization phenomenon and the internet are two of those examples and to better understand the current situation faced by this study it is of great importance to first analyze their how they affected IPRs. Technology made possible to convert works such as music, movies or books beyond mere human capacity. Computer language converted images and sounds to zeros and ones (0, 1), making possible to obtain perfect copies of works in digital format. But the digitalization of works mentioned above alone did not cause the digital revolution that currently challenges IPR owners. Many of the current problems, especially in the uncontrollable levels faced nowadays, happened due to the widespread use of the Internet, beyond any prediction.5 Over the last years, the growing access to personal computers caused the Internet to grow exponentially. The Internet is being used by approximately 1.73 billion people worldwide, representing 25.6% of the world population with a 380.3% growth since 2000, being of great importance to individuals and the global society as a whole, with economic, cultural and, inevitably, legal impacts.6 b. Technological Protection Measures TPM are technological methods, which certify the authenticity (physically) or control the access to or the use of a copyrighted work (digitally), and hence facilitate authorized use of copyrighted material. Although this study will focus on the second type of TPM, a brief explanation on the first type will be given for illustration and better understanding. As stated before, enforcement of IPRs are crucial to any IPR owner and, as a way to better identify legitimate copies of works, distinguishing them from counterfeited illegitimate ones, physical TPM were developed. Holograms, stickers, microscopic labels, or banderoles, placed on products prior to their distribution on the market are common examples largely used. 5 J. KANG, History of the internet: internet basics and protocols. http://law.ucla.edu/faculty/kang/scholarship/scholarship.htm. defending an academic origin which followed the military network ARPANET in the sixties as an alternative to unique and centralized computer storage to military data. Based on the open structure and broad usage, scientists exchanged research data using the later called ARPA-INTERNET for academic purposes only. In order to make the data transmission, which was inconsistent due to the great variety of computers and Operational Systems (OS), uniform, the TCP-IP protocol was developed.) 6 World Internet Stats – Use and Population Statistics, 2010, available at http://www.worldinternetstats.com. Márcio Mello Chaves 47 ______________________________________________________________________________ Physical TPM therefore enable customers and authorities to be aware of the legitimacy of a product, reacting when facing infringing content on the market. Nonetheless, they can be forged in a way that confuses both users and authorities. Besides simple stickers, far more complex stamps with holograms are created, which can be relatively costly and hard to forge, but are also produced by counterfeiters, making it harder to both users and authorities to identify illegitimate products. 7 Digital TPM, on one other hand, can be grouped into two separate categories8: (i) measures that are developed to limit access to protected content to users who are authorized to such access, such as cryptography, passwords and digital signatures; and (ii) measures that are deployed to control the use of protected content once users have access to the work. DRMs, on the other hand, are sophisticated systems9 inserted into the lifecycle of the copyrighted work, usually including a set of technological tools for protecting the content as well as monitoring the users' behavior and controlling payment terms. i. Technological Protection Measures on Digital Works The TPM used in the digital works are highly developed as result of their easiness to make perfect copies of digital content. Digital systems such as the binary codes, are represented by zeros (0) and ones (1), hence making possible the reproduction of works perfectly despite the number copies or the media it was fixed.10 As IPRs owners have the burden of actively policing every territory in which infringement occurs, its enforcement simply treats the symptoms of the disease and, as most of the medical treatments, it can be really expensive to its rightful owners. That analogy was followed on January 1986, when two Pakistani programmers, released one of the first computer viruses in history, the ©Brain.11 7 Good examples of complex holographic stamps are in the Microsoft`s products with the Certificate of Authenticity – COA, that vary from versions, sellers and products. Available at: http://www.microsoft.com/howtotell/content.aspx?pg=coa 8 See in general on TPM in R. ARIDOR-HERSHKOVITZ, Antitrust Law – A Stranger in the Wikinomics World? The John Marshall Journal of Computer and Information Law, 2010. 9 Idem. 10 See in general on digital TPM in R. TOCCI, Digital Systems: Principles and Applications. Prentice Hall, 2006. 11 The ©Brain (also know as Lahore, Pakistani, Pakistani Brain, Brain-A, UIUC and the Pakistan Flu), was created to stop and track pirate copies of the Farooq Alvi brothers‘ heart monitoring program for the Apple //e series. The ―virus‖ came with the users‘ address, phone numbers and a message telling the user that their machine was infected and, for inoculation, the user should call them. The company owned by Basit and Amjad, was sued for damages right after receiving phone 48 Technological Protection Measures for Digical Works: A Legal Analysis ________________________________________________________________________________ What could be seen as just a prank or a demonstration of computer knowledge was, in fact, not only the first MS-DOS computer virus but also, the first technological protection measure in the software industry.12 That first example of TPM was then followed by a series of TPM such as serials and encryption methods by the high-tech industry, with a far less negative impact on their users. The easiness to copy digital content demanded additional legal protection and its failure came with the Content Scrambling System technology, CSS13, to the Digital Versatile Disk, DVD. In 1999, shortly after the popularity of DVD players in the USA, this TPM tool, sponsored and developed by the main entertainment and high-tech companies and supposedly inviolable, was circumvented by a 15-year old programmer, Jon Lech Johansen, later known as DVD-John.14 Nowadays, digital TPM are very well developed. Ironically, the same internet that helps to disseminate illegitimate copies of digital works now helps IPR owners: through online software authentication, up-to-date technological protected content confronts legitimate licenses with the illegitimate copies, as an attempt to block unauthorized use of such digital works. This type of digital TPM has had good results once that it is usually used when installing or updating software, but is limited to this kind of content. c. Digital Rights Management (DRM) The term digital rights management or DRM is a general term, which means management of works to, digitally or not (e.g., use of access codes to limit use of photocopiers), include copy restrictions. DRM inserts on digital works digital licensing agreements, digitally setting legal permissions to establish what one can and cannot do.15 It is mostly important to mention that DRM itself is not the copy protection that TPM include on works16, but only relies on them to control and/or restrict the calls from several countries demanding that they disinfect their PCs and, shortly thereafter, the company was quickly dissolved. R. FORD & E. H. SPAFFORD, Happy Birthday, Dear Viruses, Science Magazine, 2007, p. 210. 12 Idem. 13 See in general on CSS technology in the DVD Copy Control Association website: http:// http://www.dvdcca.org/css/. 14 Jon Lech Johansen, Jon Lech Johansen's blog. Available at http://nanocr.eu/. For more information on the CSS related U.S. cases, see Universal City Studios v. Reimerdes (S.D.N.Y. 2000) and Universal City Studios, Inc. v. Corley (2nd Cir. 2001). 15 See in general on Digital Rights Management in P. AKESTER. Technological accommodation of conflicts between freedom of expression and DRM: the first empirical assessment. Social Science Research Network, 2009. 16 R. ARIDOR-HERSHKOVITZ. Antitrust Law – A Stranger in the Wikinomics World? The John Marshall Journal of Computer and Information Law, 2010, p. 02. Márcio Mello Chaves 49 ______________________________________________________________________________ use and access to digital content on electronic devices with such technologies installed. DRM is applied to enforce limitations on the use and transfer of copyrighted digital content. MP3 and AAC songs, JPEG and GIF pictures, MPEG and DivX videos, Playstation, Wii and PC games, are some of the formats in which DRM that have in their lifecycle a set of technological tools for protecting the content. The technological tools set in the DRM works can be used to even monitor the user behavior and control payment terms.17 DRM technology can be classified as (i) first-generation or (ii) secondgeneration: the first is merely sought to control copying, while the second seeks to control viewing, copying, printing, altering or using in any other way that digital content18. A very well known example of a DRM that uses TPM is the Apple‘s FairPlay, which consists on encrypting Advanced Audio Coding (AAC) to control the access to copyrighted works. It imposes licensing schemes through several restrictions on the use of the AAC encrypted files such as the number of devices a song can be played. d. The Analog Hole The analog hole or analog loophole19 or reproduction problem is considered a fundamental and inevitable vulnerability in copy protection schemes for noninteractive (software is excluded) works in digital formats which can be exploited to duplicate copy-protected works that are ultimately reproduced using analog means. 20 It is based on the fact that it is simply impossible to simultaneously display and conceal a signal. In particular, an audio signal must be converted to analog before it reaches the speaker/screen.21 Once digital information is converted to a human-perceptible (analog) form, it is a relatively simple matter to digitally recapture that analog reproduction in an unrestricted form, thereby removing any restrictions placed on copyrighted work. It 17 P. AKESTER, supra, p. 15. P. AKESTER, supra, p. 15. 19 See in general on analog hole in D. SICKER, P. OHM & S. GUNAJI, The Analog Hole and the Price of Music: An Empirical Study. Journal on Telecommunications and High Technology Law, 2007. 20 The term "analog hole" was first popularized by the Motion Picture Association of America and some of its members during speeches and legislative advocacy in 2002; this term later fell into disrepute within the industry after it was abbreviated to "a. hole" (which was misconstrued as an allusion to the word asshole), thus being replaced by analog reconversion problem, analog reconversion issue and similar terms. 21 L. M. EZRA.The Failure of the Broadcast Flag: Copyright Protection to Make Hollywood Happy. Hastings Communications and Entertainment Law Journal, 2005, p. 384. 18 50 Technological Protection Measures for Digical Works: A Legal Analysis ________________________________________________________________________________ is usually followed by quality loss of the work copied, which many times result in a low percentage of use among copyright exceptions beneficiaries.22 Although the technology for creating digital recordings from analog sources has existed for some time, it was not necessarily viewed as a "hole" until the widespread deployment of TPM. For example, bootleg films may have poor audio, or highly washed-out video. At a minimum, copy protection can be circumvented for types of material whose value is aesthetic, and does not depend on its exact digital duplication. In general, performing a digital-to-analog conversion followed by an analog-to-digital conversion results in a worse quality copy, except if used high quality conversion equipment to reduce the loss of quality, to the point where such noise is essentially imperceptible to the human senses. For instance, playing a video in a DVD player and using a DVD recorder to record the output can create a high-quality copy of the video. Regardless of any digital or software copy control mechanisms, if sound can be heard it can also be recorded using a microphone. And if images such as pictures or movies can be seen by the eye, they can also be recorded by a camera. For texts, the image can be converted back to text using optical character recognition (OCR). The movie industry legally tried to eliminate the analog hole23. Technologically, IPR owners tried to block the analog hole by degrading analog signals to interfere with some recording devices.24 Some vendors claim to have developed equivalent techniques for preventing recording by video capture cards in personal computers. Recording devices can be required to screen analog inputs for watermarks (or Macrovision or CGMS-A) and limit recording as a condition of private contracts. Set-top boxes can have its analog outputs entirely disabled, or to degrade the analog output quality, when particular programming is displayed.25 Despite the fact that the abovementioned technologies can be quite advanced and beyond the capacity of most people to circumvent them, in theory it is possible to bypass all these measures by constructing a player that creates a copy of every 22 See D. SICKER et al., supra, p. 05. In 2002 and 2003, the U.S. motion picture industry publicly discussed the possibility of legislation to "close the analog hole" — most likely through regulation of digital recording devices, limiting their ability to record analog video signals that appear to be commercial audiovisual works. These proposals are discussed in the Content Protection Status Report, User Broadband and Digital Television Promotion Act, and Analog Reconversion Discussion Group. 24 Macrovision attempt to defeat recording by VCRs by outputting a deliberately distorted signal, crippling the automatic gain control for video, causing the brightness to fluctuate wildly. 25 P. ARKESTER, Technological accommodation of conflicts between freedom of expression and DRM: the first empirical assessment, Centre for Intellectual Property and Information Law, Cambridge, 2010. 23 Márcio Mello Chaves 51 ______________________________________________________________________________ frame and sound it plays.26 Motion Picture Association of America has even recommended the use of a camcorder as an alternative to circumventing the Content Scrambling System on DVDs for educational purposes, indicating that this technique could have acceptance when dealing with copyright exceptions. 27 3. LEGAL BACKGROUND The internet global reach also enhanced international integration, challenging jurists to the applicable law. Nonetheless, intellectual property law has the advantage of being rather recent, thus conceived with a different perspective and nowadays with legal standards imposed by International Treaties, subject to examination on this chapter. In this scenario, two conflicting interests received legislative treat: (i) the anti-circumvention legislation and (ii) the user‘s rights for fair use and the public interest of the visually impaired and the libraries exceptions to copyrights, appearing internationally in the WIPO Treaties, with proportional effects on national legislations. Since the goal of this study is to give an international overview on this matter, three main groups of legislation will be analyzed: (i) international treaties, (ii) the American legislation and (iii) the European Union legislation. The three legislation different levels are important to show the wide acceptance of the TPM and the necessary legislative changes that could be required to insert previsions to the copyright exceptions. Before reaching a conclusion on this topic, it is mandatory for the present study to describe some the most important legal background behind TPM. a. Anti-Circumvention Provisions i. WIPO Treaties – The WCT and the WPPT Starting with the international level legislation, two WIPO treaties dated from 1996 need to be mentioned: the Copyright Treaty (WCT) and the Performance and Phonograms Treaty (WPPT), recently ratified by the European Union.28 Known as ―The WIPO Treaties‖ they entered into force in 2002 establishing an international legal framework for TPM.29 The two treaties state in their 26 Nonetheless, certain contents could not be benefitted by the analog hole. For obvious reasons, interactive works such as videogames cannot be circumvented through analog reconversion methods, which can copy signals only, not the rules used to generate those signals. 27 J. CHENG. MPAA: teachers should videotape monitors, not rip DVDs. Ars Technica, 2009. 28 The EU ratified the WIPO Internet Treaties on December 14 th, 2009. 29 A status quo of the implementation as of April 01, 2003, can be found in a WIPO Survey on Implementation Provisions of the WCT and the WPPT. 52 Technological Protection Measures for Digical Works: A Legal Analysis ________________________________________________________________________________ ―Obligations concerning Technological Measures‖30 chapter that counties shall provide adequate legal protection and effective legal remedies against the circumvention of effective technological measures in connection with the exercise of rights under these Treaties or the Berne Convention and that restrict acts, in respect of their works, which are unauthorized concerned or permitted by law.31 However, WIPO Internet treaties implementation in national legislation has provided sometimes rather different solutions to the treaties‘ obligations. Acts of circumvention or preparatory acts or making available of equipment aiming to circumvention, legal remedies that are provided for the interrelation between the use of technological protection measures and the limitations and exceptions of copyright, i.e. for educational purposes, are some of the differing known legislative solutions. These last may render more difficult when protection measures for copyrighted content are deployed and require well-balanced legislative solutions. ii. United States Legislation The American legislation concerning DRM is commonly analyzed due to its impact on technology. Approved in 2001, the Digital Millennium Copyright Act (DMCA) created an extra protection to copyrighted works in the digital era and complied with the WIPO Internet Treaties, amending Title 17 of the U.S. Code with the § 1201 ―Circumvention of copyright protection systems‖. According to the §1201, owners of a valid copyright on a work, effectively controlled by a technological measure are protected from having it circumvented to allow third parties to access without authorization. Therefore if a product is designed or produced primarily for circumvention, made available despite only limited commercial significance other than circumvention or marketed for use in circumvention of the controlling technological measure, it infringes the right protected by the DMCA. Despite the explicit provision that states the prohibition of anti-circumventing technologies, Article 17 of the U.S.C. § 1201(a)(1) requires that the Librarian of Congress issue exemptions32 from the prohibition against circumvention of accesscontrol technology. Such exemptions,33 which have to be revised and renewed every three years, have to be granted when access-control technology has had a substantial adverse effect on the ability of people to make non-infringing uses of copyrighted works. 30 Article 11 of the WCT and Article 18 of the WPPT. Idem. 32 See generally on Copyright Exemptions in W. HARTZOG. Falling on Deaf Ears: Is the "FailSafe" Triennial Exemption Provision in the Digital Millennium Copyright Act Effective in Protecting Fair Use? Journal of Intellectual Property Law, 2005. Recommendations on Section 1201(a)(1) title 17, of the United States Code. 33 In 2000 there were only two exemptions, number that doubled in 2003 and tripled in 2006. Exemption history and full text can be accessed in http://www.copyright.gov/1201/. 31 Márcio Mello Chaves 53 ______________________________________________________________________________ The six current exemptions (2006)34 are: (i) non-profit libraries, archives, educational institutions35, (ii) law enforcement, intelligence, and other government activities, 36 (iii) reverse engineering, 37 encryption research,38 exceptions regarding minors39, protection of personally identifying information,40 security testing 41 and certain analog devices and certain technological measures.42 iii. European Union Legislation The European Union Legislation concerning TPM is located in the 2001/29/European Copyright Directive from May, 22nd. Articles six makes reference to the protection of technological measures designed to prevent or restrict acts, in respect of works unauthorized by IPR owners. The directive defines Technological Measures as ―any technology, device or component that, in the normal course of its operation, is designed to prevent or restrict acts, in respect of works or other subject matter, which are not authorized by the right holder of any copyright or any right related to copyright as provided for by law or the sui generis right provided for in Chapter III of Directive 96/9/EC‖.43 It also demands that the technological measures must be ―effective‖, through application of an access control or protection process, such as encryption, scrambling or other transformation of the work or other subject matter or a copy control mechanism, which achieves the protection objective.44 This directive states in article 6 of the ―Obligations as to technological measures‖ that Member States shall provide: (i) adequate legal protection against the circumvention of any effective technological measures, which the person concerned carries out in the 34 See generally on Copyright Exemptions in W. HARTZOG. Falling on Deaf Ears: Is the "FailSafe" Triennial Exemption Provision in the Digital Millennium Copyright Act Effective in Protecting Fair Use? Journal of Intellectual Property Law, 2005. Recommendations on Section 1201(a)(1) title 17, of the United States Code. 35 Section 1201(d) title 17, of the United States Code. 36 Section 1201(e) title 17, of the United States Code. 37 Section 1201(f) title 17, of the United States Code. 38 Section 1201(g) title 17, of the United States Code. 39 Section 1201(h) title 17, of the United States Code. 40 Section 1201(i) title 17, of the United States Code. 41 Section 1201(j) title 17, of the United States Code. 42 Section 1201(k) title 17, of the United States Code. 43 Directive 2001/29/EC of the European Parliament and of the Council of 22 May 2001 on the harmonization of certain aspects of copyright and related rights in the information society. 44 Article 6 (1) of the Directive 2001/29/EC. 54 Technological Protection Measures for Digical Works: A Legal Analysis ________________________________________________________________________________ knowledge, or with reasonable grounds to know, that he or she is pursuing that objective; and (ii) adequate legal protection against the manufacture, import, distribution, sale, rental, advertisement for sale or rental, or possession for commercial purposes of devices, products or components or the provision of services. In addition, these last must be promoted, advertised or marketed for the purpose of circumvention, have only a limited commercially significant purpose or use other than to circumvent and be primarily designed, produced, adapted or performed for the purpose of enabling or facilitating the circumvention of, any effective technological measures. At last, as a main provision to the present study, the directive determines that in the absence of voluntary measures taken by IPR owners, including agreements with other parties concerned, countries must take appropriate measures to ensure that they make available to the beneficiary of an exception or limitation provided for in national law the means of benefiting from that exception or limitation, to the extent necessary to benefit from that exception or limitation and where that beneficiary has legal access to the protected work or subject matter concerned.45 Such prevision therefore assures the rights originated in the fair use doctrine and the visually impaired exceptions, further analyzed in the following topics. b. User's Rights and Public Interest i. Introduction to Fair Use and Legal Exceptions to Copyright Despite of not being the core of this study, it is mandatory to contemplate some concepts of the Fair Use exceptions to Copyright legislation46. In American copyright law,47 the fair use doctrine establishes the conditions under which the IPRs owners do not need to be asked for permission, allowing third parties to use copyrighted works as long as four conditions are observed48: 45 Idem at n. 44. See in general on fair use doctrine in T. K. ARMSTRONG, Digital Rights Management and the Process of Fair Use. Harvard Journal of Law & Technology, 2006. 47 Although the doctrine only existed in the U.S. as common law until it was incorporated into the Copyright Act of 1976, 17 U.S.C. § 107, the legal concept of "test copyright" was first ratified in the British 1709 Statute of Anne followed by the courts creation of the doctrine of "fair abridgment" in Gyles v Wilcox, evolved into the modern concept of fair use. 48 The four fair use factors where firstly introduced by the classic opinion of Joseph Story in Folsom v. Marsh, 9 F.Cas. 342 (1841), in which the defendant had copied 353 pages from the plaintiff's 12volume George Washington biography in order to produce a two-volume work. 46 Márcio Mello Chaves 55 ______________________________________________________________________________ (i) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes; (ii) the nature of the copyrighted work; (iii) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and (iv) the effect of the use upon the potential market for or value of the copyrighted work. Amongst the most common cases of fair use are those used for commentary, criticism, news reporting, research, teaching or scholarship and parodies. Copyright exceptions happened as a way of ―counterbalance the minimum standards of protection, limiting the strict application of the rules regarding exclusive rights‖49. Most copyright legislations worldwide hold in their texts such previsions50 but legal texts usually have a numerus clausus effect. Therefore, although exceptions must be limited to those hypotheses, interpretations to other fair uses arise such as user‘s rights and recent trends at international level, as occurred with the exceptions for the visually impaired. ii. Visually Impaired Exceptions a. Recent Trends at the International Level The meeting held in December 200951 in Geneva at the WIPO‘s headquarters turned eyes to an ever existing problem faced by the visually impaired52: getting access to reading content made available through copyrighted works. Nearly sixty countries 53 have statutory exceptions to allow access and conversion to Braille or other reading formats without previous consent of authors but a global consensus is still far from reality. 49 F.M. ABBOT; TH. COTTIER; F; GURRY, International Intellectual Property in an Integrated World Economy, Aspen Publishers, 2007. 50 Canada, Israel, South Korea, Brazil and many other countries have specific legislative prevision on the fair use as a direct consequence of two International Treaties: The Berne Convention (Article 9 (2), 10, 10 bis, and 11 bis (3) and the TRIPS Agreement. 51 World Intellectual Property Organization Standing Committee on Copyright and Related Rights (SCCR) Nineteenth Session, December 14-18, 2009. 52 The term visually impaired persons refers to blind or partially sighted people. According to the World Health Organization, 161 million people worldwide are blind or visually impaired and another 153 million have an uncorrected visual impairment, of which 87 per cent live in developing countries. 53 Treaty Proposal made by Brazil, Ecuador and Paraguay before the Standing Committee on Copyrights and Related Rights WIPO. WIPO Treaty for Improved Access for Blind, Visually Impaired and other Reading Disabled Persons, Geneva, 2009. Available at: http://www.wipo.int/meetings/en/doc_details.jsp?doc_id=122732. 56 Technological Protection Measures for Digical Works: A Legal Analysis ________________________________________________________________________________ The United Nations Universal Declaration on Human Rights and the United Nations Standard Rules on the Equalization of Opportunity for Disabled People are the main international instruments to this matter. They allow such exception to secure the right to access information and knowledge to blind or partially sighted people.54 As stated in the Berne Convention, the TRIPS Agreement and the WIPO Internet Treaty, any exception for the visually impaired must pass the three-step test, which are as follows: (i) (ii) (iii) the exception must apply to certain special cases limited to specified groups of users and covering certain kinds of works and uses; it must be satisfied in the sense that such uses may not have the potential to conflict with a normal exploitation of the work and; the use must be considered in order to determine if the exception should be subject to a requirement to pay equitable remuneration, or qualified as a free use. It is important to mention that many current national copyright laws include specific provisions addressed to this exception: the United States, in the Section 121 of the Copyright Law (the Chafee Amendment of 1996); the European Union, on Article 5(3)(b) of the Directive 2001/29/EC on the Harmonization of Certain Aspects of Copyright and Related Rights in the Information Society of 2001; Brazil, in the Article 46 of the Copyright and Related Rights Law 9.610 of 1998, among others that fall out of this study‘s scope. The ways these exceptions are used also vary greatly from country to country, restricting or extending them, with different types of royalties collection. The restrictions can be to certain types of works or rights or to the inexistence of commercially available versions. The exceptions can be extended to governmental organizations, authorized entities or individuals acting on behalf of the visually impaired, or any noncommercial basis for the visually impaired. The Braille system, for instance, usually allowed free or under compulsory licenses, sometimes is extended to other formats such as audio, large print and electronic formats. Yet, no reference is made on those legislations to technologically protected works and the conflict with the anti-circumventing laws, which brings in the need to insert on international legislation specific provisions referring to that matter, as further suggested in the conclusion of this study. 54 G. LUNG, supra n. 4. Márcio Mello Chaves 57 ______________________________________________________________________________ 4. KNOWLEDGE PROTECTION a. Content Protection of Digital Works History has taught us that the means of information preservation are as important as the means to access it. Cave men‘s paintings survived thousands of years; information stored on paper several centuries, but information stored digitally may not be recoverable due to the rampant technology development, which makes digital created works rapidly inaccessible. Around seven million pages of new information are added to the Internet every day. Scientific journals are choosing it as their primary publication venue. Nonetheless, storage and access systems are not always compatible with the goals of long-term preservation and access.55 As a pioneer system, the LOCKSS Program, initiated by Stanford University Libraries, was launched to aid librarians whose mission is to build collections and transmit today's intellectual, cultural, and historical content to the future generations. LOCKSS (Lots of Copies Keep Stuff Safe) is open source software that provides librarians a way to collect, store, preserve, and provide access to their own, local copy of authorized content. The system converts a personal computer into a digital preservation appliance, creating low-cost, persistent, accessible copies of web based content as it is published. Accuracy and completeness of LOCKSS appliances is assured through a peer-to-peer polling and reputation system. Despite the fact that Project LOCKSS only acts through express consent of authors, the idea behind it shows really shows the reality of what could happen to hundreds of thousands of information which could be lost due to works protected with TPM. Preservation of this huge amount of information created exclusively in the digital format is extremely important and could result in an important font of data for us in a near future and to the generations to come. b. Digital Libraries Technology is changing the way people deal with the once thought unchangeable instruments: books. The nowadays so present term e-book56 is subject to several studies, which have as main objective the possibility of a 55 See generally on Project LOCKSS at http://www.lockss.org/lockss/About_Us. See generally on e-books in T. C. FOLSOM, Can't Stop the Signal: The Library in Space and Transformational Copyright Law-Specifying Fair Use in the Public Interest, Social Science Research Network, 2009 and J. T. L. GRIMMELMANN, The Google Book Search Settlement: Ends, Means, and the Future of Books, NYLS Legal Studies Research Paper, 2009. 56 58 Technological Protection Measures for Digical Works: A Legal Analysis ________________________________________________________________________________ complete substitution of physical books, p-books, to new technological devices from Amazon‘s Kindle to the recent Apple iPad. Nonetheless, e-books alone do not have direct impact on copyright exceptions for information preservation and knowledge divulgation as libraries do. Google Books project to digitalize every book, indexing information for the purpose of searching and selling has drawn attention to what can become tomorrow‘s libraries.57 Libraries, which have always depended on physically preserving and storing books, due to national statutes, started making copies of materials for research and preservation. Now, the growing trend to content creation exclusively on electronic format has drawn the attention to the huge amount of information that has to be stored and organized.58 Although national legislations that have library exceptions to copyrighted works could apply directly to e-books or to digitalization of works, TPM could also get in the way of using such exception. Since they depend on voluntary actions from TPM users, the road from requesting the use based on the exception becomes tortuous and mostly uncertain, questioning the validity of the protection measures59. 5. CONCLUSION: TPM VS USERS' RIGHTS AND PUBLIC INTEREST: WHO SHOULD PREVAIL? Technology has developed to give to the visually impaired and to contentprotecting libraries the opportunity to gain access to certain works which, in other times, would be virtually inaccessible. Despite the great advantage brought by such development, it also brought a set of technological restrictions that limit the use, not rarely in a complete disregard to unauthorized uses protected by copyright exceptions. As this brief study has the objective to give an overview focused on the legal aspects of the TPM in the digital environment, the uniqueness of this specific market demands a specific approach from studies concerning the enforcement and genuine use of IPRs by their owners. Excessive use of such rights through TPM emerges as the focus of discussions. As an attempt to follow technological development, copyright law is constantly changing. Those changes affect both IPR owners on one hand, users and 57 The recent settlement in The Authors Guild, Inc., et al. v. Google Inc., Case in the New York District Court brought good success probability to the Google Books Project. 58 See generally on digital libraries in T. HANNIBAL. Building Universal Digital Libraries: An Agenda for Copyright Reform. Pepperdine Law Review, 2006. 59 P. AKESTER, supra n. 15, p. 15. Márcio Mello Chaves 59 ______________________________________________________________________________ special communities, such as libraries and the visually impaired, on the other, bringing up the question: who`s interests should prevail? The EU Information Society Directive made the measures required to solve potential problems voluntary instead of compulsory.60 IPR owners complain that one of the reasons they have not introduced voluntary measures is the absence of legal obligation, which leads them to help beneficiaries on a case-by-case basis. In order to achieve balance between protection of works, to allow proper compensation for their owners and stimulate creativity, and the reasonable exceptions for user‘s rights and public interest, legislation, nationally or internationally, fail to present a practical and convincing solution. Technology itself may not give the solution to this problem once that circumventing TPM have legislative prohibitions. In this scenario, three solutions could be given to the situation proposed: (i) the creation of an administrative system that assures that beneficiaries from copyright exceptions have access to the pledged digital works; (ii) the use of the analog hole and (iii) the solely insertion on international treaties of the obligation to embrace in the national legislations such exceptions, allowing the use of TPM circumventing tools when not properly respected. Although TPM has not impacted on many acts permitted by law, certain permitted acts are being affected by their use despite of the existence of technological solutions which enable partitioning and authentication of users to accommodate those permitted acts through privileged exceptions. Beneficiaries of privileged exceptions who have been prevented from carrying out those permitted acts due to TPM brought up a legal dilemma between the rights of IP owners to enforce their works, using the anti-circumventing legal shield, and the interests represented by the legally protected copyright exceptions. The current existing onus some legislations have on content owners to accommodate privileged exceptions, making available to the lawful beneficiaries, are simply voluntarily. The effect of a voluntary action is usually the absence of an active conduct, which can many times simply impede beneficiaries to have access to digital works. The use of the analog hole could be a solution to the issue, apparently dismissing the creation of an administrative system and/or the insertion on international and national legislation. Nevertheless, as it is usually followed by 60 Article 5.3.(b) of the Directive EC/ 2001/29 on the Harmonization of Certain Aspects of Copyright and Related Rights in the Digital Environment. 60 Technological Protection Measures for Digical Works: A Legal Analysis ________________________________________________________________________________ quality loss61 of the work copied and the limitations to certain types of digital works, it could result in a low percentage of use among copyright exceptions beneficiaries. On the other hand, the creation of an administrative system to which the alleged beneficiaries request access to TPM protected content expressing their needs is also an option. The request could either (i) be granted if the content has already been willingly by IPR owners, (ii) be forwarded to IPR owners to provide the TPM-free work or, (iii) in case of express or implicit denial, circumvented by the administrative system itself. Along with this previous solution is the solely insertion on international treaties the obligation to embrace in the national legislations the exceptions, allowing the use of TPM circumventing tools when such exceptions are not properly respected. The absence of an administrative body to link the beneficiaries request to IPR owners would simplify the process of implementation of such solution. The two above-mentioned solutions are surely complex and would require further development and analysis by governments and international bodies to inserted in the related legislation, but could put an end to this legal dilemma, making sure no right surpasses the other. Despite the complex situation faced as result of this conflict of interests, TPM are unlikely to disappear. The IPR owners such as the editors, movie and music industries maintain permanent lobby to avoid or at least mitigate any attempt to reduce the reach of copyrights, and copyright-exception beneficiaries and governmental bodies which defend their rights must stand up to this arm war, apparently still far from ending. BIBLIOGRAPHY F.M. ABBOT, TH. COTTIER & F. GURRY, International Intellectual Property in an Integrated World Economy, Aspen Publishers, 2007 P. AKESTER. Technological accommodation of conflicts between freedom of expression and DRM: the first empirical assessment. Social Science Research Network, 2009. P. AKESTER & F. LIMA, The Economic Dimension of the Digital Challenge: A Copyright Perspective. IPQ, 2005. 61 See R. A. REESE, Will Merging Access Controls and Rights Controls Undermine the Structure of Anticircumvention Law?, Berkeley Technology Law Journal, 2003. Márcio Mello Chaves 61 ______________________________________________________________________________ E. ALBACEA, M. PAYONGAYONG & A. PINPIN, Computer Ethics. UPOU, Los Baños Philippines, 2005. R. ARIDOR-HERSHKOVITZ. Antitrust Law – A Stranger in the Wikinomics World? The John Marshall Journal of Computer and Information Law, 2010. T. K. ARMSTRONG, Digital Rights Management and the Process of Fair Use. Harvard Journal of Law & Technology, 2006. N. BRAUN, The Interface between the Protection of Technological Measures and the Exercise of Exceptions to Copyright and Related Rights: Comparing the Situation in the United States and in the European Community. EIPR, 2003. D. BURK, Legal and Technical Standards in Digital Rights Management Technology. Minnesota Legal Studies Research Paper, 2005. BUSINESS SOFTWARE ALLIANCE. Sixth Annual BSA-IDC Global Software Piracy Study, 2008. C. COLSTON, J. GALLOWAY & K. MIDDLETON. Modern Intellectual Property Law. Routledge Cavendish, 2005. C.M. CORREA, Fair Use in the Digital Era. International Review of Industrial Property and Copyright Law, 2002. K. D. CREWS, Study on Copyright Limitations and Exceptions for Libraries and Archives. Social Science Research Network, 2008. L. M. EZRA. The Failure of the Broadcast Flag: Copyright Protection to Make Hollywood Happy. Hastings Communications and Entertainment Law Journal, 2005 T. C. FOLSOM, Can't Stop the Signal: The Library in Space and Transformational Copyright Law-Specifying Fair Use in the Public Interest. Social Science Research Network, 2009. R. FORD & E. H. SPAFFORD, Happy Birthday, Dear Viruses, Science Magazine, 2007. G. FREDERICK, Software Piracy: Some Facts, Figures, and Issues, Arstechnica, March 12, 2007. J. M. GARON, What If DRM Fails? Seeking Patronage in the iWasteland and the Virtual O. Michigan State Law Review, 2008. 62 Technological Protection Measures for Digical Works: A Legal Analysis ________________________________________________________________________________ U. GASSER. Protection of Digital Content: Moving Forward Towards a Best Practice Model. The Berkman Center for Internet & Society Research Publication Series, 2006. U. GASSER. iTunes: How Copyright, Contract, and Technology Shape the Business of Digital Media - A Case Study. The Berkman Center for Internet & Society Research Publication Series, 2004. J. GINSBURG, R. GORMAN & A. LATMAN, Copyright For The Nineties: Cases and Materials: 1997 Cumulative Supplement and Statutory Appendix, Michie Butterworth, Charlottesville, 1997. J. GINSBURG & S. RICKETSON, Inducers and Authorisers: A Comparison of the US Supreme Court‟s Grokster Decision and the Australian Federal Court‟s KaZaa Ruling. Columbia Public Law and Legal Theory Working Papers, 2006. J. T. L. GRIMMELMANN, The Google Book Search Settlement: Ends, Means, and the Future of Books. NYLS Legal Studies Research Paper, 2009. T. HANNIBAL. Building Universal Digital Libraries: An Agenda for Copyright Reform. Pepperdine Law Review, 2006. R. HIGGINS et al., Counterfeit Goods. J.L. & Econ., 1986. L. JIARNI, New development in Digital Copyright Protection in China: the Landmark case of zheng Chengsi v. Shusheng, EIPR, 2006. JOHNSON, The Economics of Copying, 93 J. Pol. Econ., 1985. D. JOHNSON & D. POST, Law And Borders: The Rise Of Law In Cyberspace. Standford Law Review, 1996. J. KANG, History of the internet: internet basics and protocols. http://law.ucla.edu/faculty/kang/scholarship/scholarship.htm. M. KATSH, Law in a Digital World. Oxford: Oxford University Press, 1995. I. R. KERR et al, Technological Protection Measures: Tilting at Copyrights Windmill. Ottawa Law Review, 2002. W. LANDES M. & R. POSNER, The Economic Structure of Intellectual Property Law, Harvard University Press, Cambridge, 2003. M. LEMLEY, Ex Ante Versus Ex Post Justifications for Intellectual Property, 71 U. Chi. L. 2004. Márcio Mello Chaves 63 ______________________________________________________________________________ A. LUCAS, Applicable Law in Copyright Infringement Cases in the Digital Environment, http://portal.unesco.org/culture/en/ev.phpurl_id=29336&url_do=do_topic&url_se ction=201.html G. LUNG, Copyright Exceptions for the Visually Impaired - International Perspective. Lecture presented in the 70th International Federation of Library Associations General Conference and Council, 2004. MICROSOFT, The Surprising Risks of Counterfeit Software in Business. Microsoft Corporation White Paper, 2005. G. E. MOORE. Cramming more components onto integrated circuits. Electronics Magazine, 1965. R. A. REESE, Will Merging Access Controls and Rights Controls Undermine the Structure of Anticircumvention Law? Berkeley Technology Law Journal, 2003. C. A. ROHRMANN. Curso de Direito Virtual. Del Rey, 2005. P. RONCAGLIA, Enforcement: Perfecting the System, Italy 3rd edition: IP Focus, 2008. D. SICKER, P. OHM & S. GUNAJI, The Analog Hole and the Price of Music: An Empirical Study. Journal on Telecommunications and High Technology Law. Bolder, 2007. J. SULLIVAN, WIPO Study on Copyright Limitations and Exceptions for the Visually Impaired, 2006. R. TOCCI, Digital Systems: Principles and Applications. Prentice Hall, 2006. WBU, Treaty Proposal made by Brazil, Ecuador and Paraguay at WIPO SCCR. WIPO Treaty for Improved Access for Blind, Visually Impaired and other Reading Disabled Persons, WIPO, Geneva, 2009. FASHION FORWARD OR FASHION VICTIM: INTELLECTUAL PROPERTY PROTECTION IN THE FASHION INDUSTRY by Layne Randolph TABLE OF CONTENTS 1. INTRODUCTION 2. TRADEMARK INFRINGEMENT CONSIDERED COUNTERFEITING 3. COPYRIGHT INFRINGEMENT IN FASHION DESIGN NOT UNIVERSALLY TREATED AS DESIGN PIRACY 4. EU TERRITORIES GRANT MULTI-TIERED IP PROTECTION S FOR FASHION DESIGN 5. SPARSE IP PROTECTION FOR US FASHION DESIGN 6. US DEBATES THE PROS AND CONS OF COPYRIGHT PROTECTION FOR FASHION DESIGN 7. PROPONENTS OF THE ACT: FASHION DESIGN IS A CREATIVE WORK AND DESERVES PROTECTION TO DETER PIRACY 8. OPPONENTS OF THE ACT: THE ACT WOULD HAVE A CHILLING EFFECT ON THE US FASHION INDUSTRY BECAUSE LESS PROTECTION EQUALS MORE INNOVATION 9. CONCLUSION: LEVEL OF IP PROTECTION GRANTED NOT DETERMINING FACTOR BIBLIOGRAPHY 66 Fashion Forward or Fashion Victim: International Property Protection in the Fashion Industry ________________________________________________________________________________ 1. INTRODUCTION ―Fashion is made to become unfashionable,‖ according to Coco Chanel. Ms. Chanel may have been an accidental intellectual property (IP) guru, decades ahead of her time. She unwittingly referred to an aspect of fashion that some modern IP scholars claim is the crux of the reason why they oppose stronger IP protection for fashion.1 The nature of fashion is such that regardless of what is created, it has likely been borrowed or referenced from someone else‘s work. The standard thinking is that there are only so many ways to cover the body, and the determination of what is original is very subjective. And while much of the current focus of the IP world revolves around gaining and maintaining IP protection of creative works; in certain circles, IP specialists strongly assert that IP protection should be granted only in exceptional circumstances to reward innovation truly worthy of a limited monopoly in a free market. Not surprisingly, this debate is particularly intense in fashion where the boundaries between inspiration and imitation shift, are questioned, and by virtue of the subject matter will never be defined by any sort of bright line test. The top fashion capitals of the world are London, Milan, Paris and New York and so for the purposes of this paper we will focus on Europe and the United States. Of these, the European fashion design protection is better established. The most controversial battle over fashion design protection at the moment occurs in the United States, where fashion design has been left largely outside of the purview of IP protection and where many fashion designers argue for an amendment to the US Copyright Act to protect original fashion designs from copyists. The US battle wages among those who argue that fashion is better off in a low IP environment, and those who argue that fashion designs are no less creative than other protected industries and deserve similar protection. 2. TRADEMARK INFRINGEMENT CONSIDERED COUNTERFEITING No discussion of IP protection in fashion would be complete without a discussion of brands, i.e. trademarks. Trademark law has traditionally been the source of the strongest IP protection for the fashion industry, as the trademarks serve to identify the products and their source to consumers and function as advertising to create good will and awareness in the product.2 Designers have the ability to successfully assert monopolistic rights in their brands and to litigate to stop the counterfeiting of them, often with the aid of law enforcement officials. The penalties are strict because many of the counterfeiters use the industry as a money laundering opportunity and as a vehicle to commit more dangerous crimes. 1 See K. RAUSTALIA & C. SPRIGMAN, The Piracy Paradox: Innovation and Intellectual Property in Fashion Design, Virginia Law Review, Vol. 92, p. 1687, 1691 (2006). 2 Lanham Act, 15 U.S.C. § 1127. Layne Randolph 67 ____________________________________________________________________________ Partly aided by the fact that the international counterfeiting in goods trade has been working in conjunction with organized crime, these counterfeiters can now face not only fines but also potential imprisonment if found to be infringing on trademark rights.3 Designers know that strong protections exist for their trademarks and many splash their brands and logos all over the products so as to attempt to protect their rights from infringement. From the double F‘s of Fendi to the LV‘s of Louis Vuitton, top designers know that a logo or brand name built into the product is the best and strongest offense in the world of counterfeiting. But, there is a major loophole in law enforcement and it‘s the banning of a fake label but not a fake design. And while in the US ―it is perfectly acceptable to sell merchandise that copies a fashion design and style, and these are called ―knock-offs‖, it is against the law to sell merchandise that copies a trademark.‖4 Because of the strength of trademark protection in fashion and the virtually harmonious application of trademark law internationally, most conflict over IP protection in fashion relates not to the counterfeiting of trademarks, but instead, the counterfeiting of fashion designs5. It‘s the fashion design itself, the shape of the bag, the cut of a sleeve or the overall impression of a garment that causes the most discord among industry officials, lawyers, legislators, judges and designers themselves. 3. COPYRIGHT INFRINGEMENT IN FASHION DESIGN NOT UNIVERSALLY TREATED AS DESIGN PIRACY Fashion design counterfeiting (more commonly referred to as design piracy) is nothing new, and even in concept causes debate ranging from the Miuccia Prada argument that copying is the highest form of flattery (―We let others copy us, and when they do, we drop it‖) to the Council of Fashion Designers of America‘s argument that fashion designers are creators of independent expression no different from authors or painters, and therefore deserve a similar form of intellectual property protection. The debate ranges between giving a designer all of the rights of an artist in his designs, to the most open and free market perspective that more 3 If infringement is willful, a court may treble the award of damages and profits and in some cases, a plaintiff may recover reasonable attorneys' fees. The Trademark Counterfeiting Act of 1984 (18 U.S.C. 2320) made counterfeiting a federal crime and allows the destruction of the counterfeit labels, packages and the machines for making them. Additionally, the federal counterfeiting statute provides for fines of up to $2 million dollars and prison terms of up to 10 years, or both, for individuals, and fines of up to $5 million for business entities. 4 J. BARNETT, Shopping for Gucci on Canal Street: Reflections on Status Consumption, Intellectual Property, and the Incentive Thesis, 91 VA. L. REV. 1381 (2005). 5 M. NIMMER & D. NIMMER, Nimmer On Copyright § 2.08[H][1], Bender, New York, 1997 at 2143 to 2-144 (2009) (noting the difference between the terms ―fabric design‖ and ―dress design,‖ and defines ―dress design‖ as ―the design that graphically sets forth the shape, style, cut, and dimensions for converting fabric into a finished dress or other clothing garment.‖). 68 Fashion Forward or Fashion Victim: Intellectual Property Protection in the Fashion Industry copying is better for society but also for designers as well, since it speeds up the design cycle and keeps customers consuming and designers producing.6 However, ―while digital technology has made the fashion industry much more efficient and has facilitated creativity, the same technology has also facilitated counterfeiting and piracy‖7 which means that with the advent of digital technology and virtually instantaneous information sharing, the copyists can beat the originators at their own game, often knocking off fashion designs exactly, reproducing them in cheaper fabrics and with much less attention to detail, and mass producing and selling them to mega-stores worldwide before the creators have had the chance to produce one version for sale. Both European and American territories have attempted to deal with these issues and have taken decidedly different approaches to the situation. While Europe employs a vast array of IP protections to cover fashion designs, the American approach has been to apply as little protection as possible. An analysis of each is in order. 4. EU TERRITORIES GRANT MULTI-TIERED IP PROTECTIONS FOR FASHION DESIGN In the European Community, fashion designers have the ability to avail themselves of design protection, both registered and unregistered. The community design system defines a design as "[t]he outward appearance of a product or part of it, resulting from the lines, contours, colors, shape, texture, materials, and/or its ornamentation."8 All designs receive three years of protection whether or not they are registered. With registration, the initial period of protection is five years, but designers can increase the protection to up to 25 years with renewals. This registration provides a rebuttable presumption of validity and an exclusive right to use the registered design.9 Also, a single distinguishing feature may produce a unique overall impression and justify protection.10 Designs must be new and have an individual character in order to be eligible for design protection. The originality will be viewed from the standard of the informed user, i.e. a fashion consumer, and it must be apparent to the public that it 6 See K. RAUSTALIA & C. SPRIGMAN, supra note 1, at 1689. LECG, Economic Analysis of the Proposed CACP Anti-Counterfeiting and Piracy Initiative Prepared for the Coalition Against Counterfeiting and Piracy (CACP), at 14 (Nov. 2007), available at http:www.lexisnexis.com/documents/pdf/20080610072737_large.pdf. 7 8 Office for Harmonization in the Internal Market, The Community Design, Frequently Asked Questions on the Community Design, Question 1.1, http://oami.europa.eu/en/design/faq.htm (last visited February 2010). 9 M. NIMMER & D. NIMMER, Nimmer On Copyright, supra note 5, § 12.11[A], at 12-196 (stating that courts may "examine the underlying facts" of a registration to rebut the presumption of validity); see also Council Regulation No. 6/2002, art. 85, 2001 O.J. (L 3) 20 (EC) ("Validity [of a registration] may be challenged only with a counterclaim for a declaration of invalidity."). 10 Mega Zipper (registered Community Design no. 000823414-0002. OHIM). Layne Randolph 69 ____________________________________________________________________________ is different from products that already exist.11 Unregistered European designs must meet the same criteria as registered designs in that they must be new and have an individual character. While unregistered designs are automatically protected for three years, they are only protected against deliberate copying and the design owner must prove that an infringer had knowledge of the design, in order to prevail in an infringement action.12 France goes one step further and specifically provides copyright protection to the three-dimensional garment on the basis that fashion is art13 and the French Design Act extends patent-like protection to designs, where infringement is based on use and not copying14 and specifically provides for protection for fashion articles.15 In contrast to the more liberal French system, the EC law protects all types of design without singling out fashion design for special protection. And yet, there is little use of this type of protection by fashion designers in Europe16 and in fact, there are few lawsuits concerning fashion designs.17 While increased IP protection would seem to produce a more enforceable right, these factors suggest that not to be the case. Certainly, litigation activity is not the only representation of enforcement actions taken but nonetheless provides some information of market activity. Perhaps most interestingly however, fast-fashion is the most rapidly growing segment of fashion in the world; a segment that regularly copies top designers looks and reproduces them for the mass market. Three of the top fast-fashion companies are in Europe: H&M (Sweden), Zara (Spain), and 11 Council Regulation 6/2002 on Community Designs, 2001 O.J. (L 3) 5 art. 11. Council Regulation 6/2002 on Community Designs, 2001 O.J. (L 3) 4 art. 4., stating that the design owner must demonstrate that the item has individual character and prove the date that the article was made public). 13 J.H. REICHMAN, Design Protection in Domestic and Foreign Copyright Law: From the Berne Revision of 1948 to the Copyright Act of 1976, Duke L.J. 1143, 1153 (1983), see also C. PROPRIÉTÉ INTELLECTUELLE, art. I, L112-2 (14) (Act No. 94-361 of 10 May 1994 art. 2 Official Journal of 11 May 1994), available at http://www.legifrance.gouv.fr. 14 V. MANLOW, Designing Clothes: Culture And Organization Of The Fashion Industry, Transaction Publishers, 2007. 15 C. PROPRIÉTÉ INTELLECTUELLE, supra, note 13, specifically lists as protected works ―creations of the seasonal industries of dress and articles of fashion. Industries which, by reason of the demands of fashion, frequently renew the form of their products, particularly the making of dresses, furs, underwear, embroidery, fashion, shoes, gloves, leather goods, the manufacture of fabrics of striking novelty or of special use in high fashion dressmaking, the products of manufacturers of articles of fashion and of footwear and the manufacture of fabrics for upholstery shall be deemed to be seasonal industries‖. 16 Although Europe is a breeding ground for haute couture design houses, surprisingly fashion designs accounted for only 8.98% of all design registrations. See Statistics for Community Designs 2006, Breakdown by Class, at 10 (Dec. 31, 2006), available at http://oami.europa.eu/pdf/office/SSC007-Statistics_of_Community_Designs_2006.pdf (last visited February 2010), (listing registered Community designs by class). The class used is Locarno Classification 02, which applies to clothing, shoes, and accessories. See Locarno Classification. (However, under the community design system, registration is optional; many designers may opt not to register because they are given three years of protection for free). 17 Kal Raustalia & Christopher Sprigman, supra note 1, at 1722. 12 70 Fashion Forward or Fashion Victim: Intellectual Property Protection in the Fashion Industry Topshop (U.K.)18 These models of fashion design piracy not only exist but are allowed to thrive in the more fashion design IP protective environment of the EC.19 For these reasons, the thoughtful IP scholar must question whether the granting of more IP protection truly dissuades copyists thereby creating stronger IP in fashion design, or whether there may be other, more relevant issues at play. 5. SPARSE INTELLECTUAL PROPERTY PROTECTION FOR US FASHION DESIGN In terms of levels of protection for fashion worldwide, the US‘s level is quite low. Most intellectual property laws were not written with fashion protection in mind. Although certain elements of fashion can be protected by various forms of IP protection, the majority of fashion designer‘s rights slip through the cracks of the IP system. The basic premise at the heart of US fashion design protection is the notion that apparel is useful and therefore outside copyright protection. Current US copyright law covers ―original works of authorship fixed in any tangible medium of expression‖20 and specifically includes: (1) literary works; (2) musical works, including any accompanying words; (3) dramatic works, including any accompanying music; (4) pantomimes and choreographic works; (5) pictorial, graphic, and sculptural works; (6) motion pictures and other audiovisual works; (7) sound recordings; and (8) architectural works.21 Certain elements of fashion design are specifically protected under US IP law. Two-dimensional fashion design sketches are protected as pictorial works under copyright law, however, the threedimensional garment exists in a virtually copyright-free zone. While an aesthetic component of the fashion design can be protected if physically or conceptually separable,22 the garment in its totality is considered to be primarily used for covering the body and therefore does not rise to the necessary standard for copyright protection because it is generally considered to have a ―utilitarian function‖ as a ―useful article‖.23 Design patents provide some protection for the non-useful, ornamental elements of a fashion design but the standards required to obtain a design patent are 18 DPPA Testimony of Christopher Sprigman, Associate Professor, University of Virginia School of Law, infra note 35 (stating that stores like H&M, Zara, and Topshop are three of the largest retail culprits of copying high end designs and selling them at affordable prices). Professor Sprigman argues that the fact that there is widespread copying and minimal litigation in Europe means that the design protection system has done nothing to affect the way the industry operates. 19 See Kal Raustalia & Christopher Sprigman, Where IP Isn‟t, UCLA Sch. of Law Pub. Law & Legal Theory Research Paper Series, No. 07-05 (2007). 20 See U.S. Copyright Act, 17 U.S.C. § 102 (2000). 21 Id. 22 United States District Court For The Central District Of California, 2006, Express, LLC v. Fetish Group, Inc., 424 F. Supp. 2d 1211, 1224–25, 1228–29 (C.D. Cal. 2006) (holding that, although the utilitarian aspects of a camisole could not be protected, lace and embroidery elements were copyrightable because they were irrelevant to the utilitarian aspects of the camisole). 23 U.S. Copyright Act, 17 U.S.C. § 101. Layne Randolph 71 ____________________________________________________________________________ extremely difficult to meet. A design patent is a type of patent that protects the inventor of ―any new, original and ornamental design for an article of manufacture‖ for fourteen years24. The design element seeking protection must be novel and nonobvious,25 which excludes inspiration because it requires that the new creation advance beyond prior art in a way that is not obvious.26 Moreover, this patent protection is limited by the expense and time involved in obtaining patent protection, because although very few items or garments meet the standards of patentability, even if they did, a patent takes months or years to obtain, which is generally unworkable in the fast-paced fashion world. The limited protection afforded US designers by application of design patent or copyright protection gives way to an extended protection under trademark law.27 Typically, trademark law gives the strongest and most enforceable protection against infringement universally. Even the Burberry plaid has become a legitimate trademark28, namely because the pattern has acquired a secondary meaning that can be protected under trademark law. In the US trademarks are relatively easy to obtain and do not require registration for legal protection.29 A subset of trademark law in the US is trade dress protection for iconic designs, which requires source identification and secondary meaning. This protection encompasses signature/iconic looks so recognizable that they have acquired secondary meaning.30 Secondary meaning is difficult to achieve and usually arises only after a significant amount of time in the public eye, and therefore, trade dress protection is not readily available to most designers for their designs, and certainly rarely available to the new or small designer. Moreover, trade dress protection is rarely available to designers due to the fact that the primary significance of the feature must be to identify the source, which is a standard that will rarely be met with clothing due to its inherent usefulness. Some US fashion designers have chosen to confront this IP protection void by proposing an amendment to the US Copyright Act which would grant a limited copyright protection to fashion designs. 24 U.S. Patent Act, 35 U.S.C. § 171 (2006). U.S. Patent Act, Conditions for Patentability, 35 U.S.C. §102 (2002). 26 United States Supreme Court, Gorham v. White, 81 U.S. 511 (1871). 27 United States District Court for the Southern District of New York, Diane von Furstenberg Studio, LP v. Forever 21, Inc., No. 07-2413 (S.D.N.Y. Mar. 29, 2007). Without any legal authority to support design infringement, von Furstenberg‘s lawsuit was primarily based on infringement of copyrighted fabric designs. 28 US Trademark, Ser. No. 73, 170, 890, Reg. No. 1,241,222 (filed May 17, 1978). 29 U.S. Patent & Trademark Office, Trademarks, Basic Facts, Should I Register My Mark?, http://www.uspto.gov/web/offices/tac/doc/basic/register.jsp, (last modified 12/30/2009, last visited February 2010), (stating that registration, while not required, provides many benefits to the registrant). 30 T. MCCARTHY, McCarthy on Trademarks and Unfair Competition § 7:91 (4th ed. 2008). 25 72 Fashion Forward or Fashion Victim: Intellectual Property Protection in the Fashion Industry 6. US DEBATES THE PROS AND CONS OF COPYRIGHT PROTECTION FOR FASHION DESIGN The Design Piracy Prohibition Act (―DPPA‖)31 is a bill to prohibit design piracy in the US, and according to some proponents, to prevent the US from becoming a safe haven for design piracy and to promote international harmonization of IP protection. The DPPA bill pending in the US Senate would amend the Copyright Act to provide copyright protection to fashion designs after requisite registration of an original design. Under copyright, an owner can rarely bring an action for an article that is not registered.32 "Original, as the term is used in copyright, means only that the work was independently created by the author (as opposed to copied from other works), and that it possesses at least some minimal degree of creativity."33 The standard of protection under DPPA is ―all expression not copied in its entirety from others that contains a modicum of creativity‖ extended to the appearance as a whole of an article of apparel, including its ornamentation. And apparel is defined as ―men's, women's, or children's clothing, including undergarments, outerwear, gloves, footwear, and headgear; handbags, purses, and tote bags; belts; and eyeglass frames.‖ 34 However, the DPPA would not protect any design that has been made public prior to the law‘s enactment. Those designs, lacking in originality, will belong to the public domain. The standard of infringement under the DPPA would be ―closely and substantially similar‖35, and defenses to infringement would include merely reflecting a trend, and independent creation. One criticism of the bill is the test of "substantial similarity" that courts would be required to use to determine if articles 31 Design Piracy Prohibition Act, H. REP. NO. 5055, 109th Cong. (2006), Design Piracy Prohibition Act, H. REP. NO. 2033, 110th Cong. (2007), S. 1957, 110th Cong. (2007), Design Piracy Prohibition Act, H. REP. NO. 2196, 111 th Congress (2009-2010). On March 30th, 2006, H.R. 5055 was introduced to Congress. The bill proposed an amendment to Title 17, United States Code to provide protection to fashion design. Hearings were held to discuss the bill on July 27th, 2006, but a debate on the issue was never brought to the House floor and H.R. 5055 was thus never put to a vote. The 110th Congress saw an almost identical bill, H.R. 2033, introduced on April 25th, 2007. Although it was referred to a subcommittee on May 4th, 2007, the bill was once again abandoned and cleared at the end of the Congressional session. On Apr 30, 2009, the bill was referred to the House Committee on the Judiciary. 32 U.S. Copyright Act, 17 U.S.C. § 411 ("Except [for certain actions] no action for infringement of the copyright in any United States work shall be instituted until preregistration or registration of the copyright claim has been made in accordance with this title."). 33 1 M. NIMMER & D. NIMMER, Nimmer On Copyright, supra note 9, at §§ 2.01[A], [B], 1990. 34 DPPA Hearings, supra note 31, A Bill to Provide Protection for Fashion Designs: Hearing Before the House Subcommittee on Courts, the Internet, and Intellectual Property, 109th Cong., 2nd sess. (2006) at § 2(a)(2). 35 Written Statement on H.R. 5055, ―The Design Piracy Prohibition Act‖ presented to the Subcommittee on Courts, the Internet and Intellectual Property, U.S. House of Representatives, by Susan Scafidi, Associate Professor of Law and Adjunct Professor of History, SMU, Visiting Professor, Fordham Law School, at 812 available at 2006 WL 2127242 (F.D.C.H.). Layne Randolph 73 ____________________________________________________________________________ are infringements of protected articles.36 The substantial similarity liability standard ―presents one of the most difficult questions in copyright law, and one that is least susceptible of helpful generalizations.‖37 The bill is aimed at deterring the counterfeiting of fashion design by changing the behavior of would-be infringers. By creating financial liability for direct copying (paying any profits to original design holder), the copyists would have strong incentive not to directly copy another designer‘s design exactly. With damages for infringements suggested at the greater of $250,000, or $5 per copy, this infringement standard could incite a plethora of litigation, and the ―fast-fashion‖ designers would presumably be most negatively affected by the DPPA. 7. PROPONENTS OF THE ACT: FASHION DESIGN IS A CREATIVE WORK AND DESERVES PROTECTION TO DETER PIRACY The Council for Fashion Designers and Artists (―CFDA‖), a non-profit trade association for American fashion and accessory designers, represents a small number of elite and often very successful designers including Tom Ford, Calvin Klein, Ralph Lauren, and Diane von Furstenberg.38 CFDA argues that American designers need protection for their designs in order to remain innovative and competitive in today‘s fashion industry. Essentially, the pro-DPPA arguments focus on the deterrent factor behind the bill, and that the rampant copying of fashion designs hurts the industry. The DPPA proponents also assert that copyright protection may strengthen the American fashion brands, pointing to the French protection of fashion as an art form which has helped maintain the pre-eminence of the French fashion industry. Susan Scafidi, a professor of Fashion Law at Fordham University School of Law, is a vocal supporter and one of the sponsors of the Bill39. She argues that it‘s the small designer who suffers the most without copyright protection-they have no trademark to brand per se, and their designs are knocked off without recourse. Small and start-up designers are at great risk if their designs are not protected by copyright because small designers cannot rely on their reputation or trademark to make up for lack of design protection and cannot afford litigation for enforcement.40 She argues the law would change the behavior of the large fast36 4 M. NIMMER & D. NIMMER, Nimmer On Copyright, supra note 9, at § 13.03[A], at 13-34.1 to -34.3 (2007) (providing "substantial similarity" as the standard for copyright infringement); see also U.S. Copyright Act 17 U.S.C. § 1309(e) (using the same standard for infringement of vessel hulls). 37 M. NIMMER & D. NIMMER, Nimmer On Copyright, supra note 9, at § 13.03[A]. 38 For the membership roll, see Council of Fashion Designers of America, http://www.cfda.com/members (last visited February, 2010). 39 Written Statement on H.R. 5055, supra note 35, Scafidi Testimony, at 814. 40 S. SCAFIDI, Intellectual Property and Fashion Design, in 1 Intellectual Property and Information Wealth, Peter K. Yu, 2006, at 117 (stating that even if a famous designer‘s new line is knocked off, consumers may still be willing to pay higher prices for the trademarked version. Emerging designers, by contrast, cannot depend exclusively on brand recognition for protection against design piracy. The author went on to quote a young designer who explained the problem as 74 Fashion Forward or Fashion Victim: Intellectual Property Protection in the Fashion Industry fashion companies that knock off the small designer‘s ideas and that if these companies know that they cannot make an exact copy, they will be required to innovate-which she rightly states as the goal of IP. If they do copy, a cease and desist letter may be enough to stop them since they know the designer has a prior right. Other proponents of the DPPA further assert that the relatively short term of protection afforded—three years—is particularly suited to the fashion industry‘s shorter life cycles.41 8. OPPONENTS OF THE ACT: THE ACT WOULD HAVE A CHILLING EFFECT ON THE US FASHION INDUSTRY BECAUSE LESS PROTECTION EQUALS MORE INNOVATION The American Apparel and Footwear Association (AAFA) strongly oppose the DPPA, citing the chilling effect such a law would have on the US fashion industry. The AAFA and other opponents to the bill believe that a low IP environment is beneficial to the US fashion industry, and that copyright protection would curb creativity and innovation in fashion design. Opponents to the bill cite various reasons for their stance. Legal scholars argue that due to the referencing and borrowing inherent in the fashion industry cycles, originality is difficult to define and monitor and too low of a bar for copyright protection in fashion.42 But by far the most convincing arguments relate to the principal at the core of the bill, that the copying of fashion design must be deterred in order to encourage innovation. Many DPPA opponents assert that in reality the contrary is true, that copying in the fashion industry does not stifle innovation, but rather that copying is beneficial to the fashion industry. This concept, developed by Kal Raustiala & Christopher Sprigman, is referred to as ―The Piracy Paradox‖.43 The Piracy Paradox arises from the premise that desirable designer fashions get copied by lower-end producers and are then picked up by the masses. By the time the masses have adopted the fashions, the consumers of designer fashions are looking for the next trend. Therefore, the copying of the fashion designs creates a faster trend cycle which benefits the fashion industry by inducing rapid turnover and additional sales. And Raustiala and Sprigman argue that the consumer is the one who wins in this scenario, because the consumer has access to affordable yet fashionable products. The conventional thinking is that unauthorized copying of fashion designs tarnishes a brand‘s image by confusing the public and commingling the designer‘s image with that of cheaper and less desirable products she sees it: ―[Famous designers] can just sell their trademarks. We [unknown designers] have to sell our designs.‖ 41 Design Piracy Prohibition Act, H. REP. NO. 2196, 111 th Congress (2009-2010) at § 2(f). 42 U.S. Copyright Act, 17 U.S.C. § 1301(b)(1) ("A design is ‗original‘ if it is the result of the designer‘s creative endeavor that provides a distinguishable variation over prior work pertaining to similar articles which is more than merely trivial and has not been copied from another source."). 43 K. RAUSTIALA & C. SPRIGMAN, The Piracy Paradox: Innovation and Intellectual Property in Fashion Design,, supra note 1, at 1692. Layne Randolph 75 ____________________________________________________________________________ (or inversely, literally stealing a design to produce a design copy under a different brand and stealing the consumer as well). The piracy paradox theory essentially turns this theory on its head, and asserts that once a high-status customer senses that the fashion trend has become ordinary, the high status customer moves on to the next trend. But for the ordinary consumer the trend stays in place longer and even extends to the mass market, at which time the ordinary consumer moves on to the next trend. Because of the cyclical nature of the industry and the constant need for new products and trends to feed the cycle, the over-arching theory behind the piracy paradox is that fashion design works best in a low-IP environment where designs can be pirated/copied most effectively. In fact, ―the low-IP regime acts as an accelerant of innovation.‖44 And then there is the nearly universally accepted notion that much of fashion design is an accepted derivative work i.e., a work that appropriates certain design elements of a specific design but is still distinguishable to the average consumer. 45 This derivation is helpful to those consumers who wish to flock to the latest designs while still being distinguishable in some way.46 And, the designers of the original fashions most often accept this type of derivative work as a part of the world of fashion, and simply move on to the next design and trend rather than spend time and money fighting every knock-off which may just as well be considered a derivative work. It should be stated that the piracy paradox, while certainly applicable for the major fashion conglomerates, leaves small designers outside of the analysis. It‘s as if the proponents of the piracy paradox believe that fashion innovation is solely a top-down affair, when industry experts know that this is often not the case. Street fashion and young/small designer fashion is often copied by the major conglomerates themselves, with little to no recourse when considering the time and expense needed for the creator to pursue litigation. In this arena, the more established designer would simply argue inspiration as a defense to a substantially similar design, without the added protection of the DPPA. The cost of arguing whether a second design is substantially similar to the original design is significant in terms of time and money. Additionally, by the time a court reaches a final decision, the fashion design will likely no longer be in vogue47. Therefore, it is this segment of the US fashion industry that will suffer without further protection, even though the industry as a whole may thrive. A direct copy, however, is certainly almost never looked upon with favor, especially if done by a direct competitor who is likely to steal the original 44 K. RAUSTIALA & C. SPRIGMAN, Where IP Isn‟t, supra note 19, at 1209. U.S. Copyright Act, supra, note 23. 46 C. SCOTT HEMPHILL & J. SUK, The Law, Culture, and Economics of Fashion, 61 STAN. L. REV. 1147 (2009). 47 L. HEDRICK, Tearing Fashion Design Protection Apart at the Seams, 65 WASH. & LEE L. REV. 215, 272 (2008). 45 76 Fashion Forward or Fashion Victim: Intellectual Property Protection in the Fashion Industry designer‘s sale/customer.48 However, the same designer who may be willing to litigate a direct competitor‘s knock-off, may not care quite as much if fast-fashion industry copies his designs49 for some of the exact reasons stated in the piracy paradox theory. Frankly, there are many reasons why European designers may not choose registration or the courts as a way to protect their fashion designs. Therefore it is difficult to accept the notion that design protection is not fully enjoyed in the EU as a rationale for not providing additional IP protection in the US, although many opponents to the DPPA are quick to do so. But beyond whether the European or the American approach to provide legal protection for fashion design is better, the bigger question for the DPPA revolves around the concept of territories when looking to impose new protections and requirements. 9. CONCLUSION: LEVEL OF IP PROTECTION GRANTED NOT DETERMINING FACTOR Opponents of the DPPA commonly refer to the Piracy Paradox as evidence that while there may be a dearth of IP protection for fashion design in the US, there is no correlating negative effect to the industry because the US has a thriving fashion industry.50 The EU fashion industry and market are thriving too,51 even in the face of blatant fashion design piracy52 and an apparent under-utilization of protections. However, an identical system of protection in the US may not produce the same effect due to cultural differences in the territories. Taken one step farther, to introduce added IP protections could have a chilling effect on the marketplace, one that doesn‘t exist in European markets due to the differences in the civil law systems. "Unlike in Europe where there is a weak civil litigation system, here in the States we have a very powerful civil litigation system and we are a society teeming with lawyers, including obviously a class of litigation entrepreneurs that accesses the Federal courts."53 48 T. JACKSON & D. SHAW, The Fashion Handbook 177 (Routledge 2006), See also Yves Saint Laurent S.A. v. Societe Louis Dreyfus Retail Management S.A., Tribunal de Commerce, Paris (1994) E.C.C. 512 49 J. BARNETT, Shopping for Gucci on Canal Street: Reflections on Status Consumption, Intellectual Property, and the Incentive Thesis, supra at note 4 at 1385. 50 U.S. Marketline Report 2007. Industry reports on the apparel industry indicate that the U.S. menswear market generated $106 billion in 2007, the US women‘s wear market generated revenues of $175.3 billion, and the US infants‘ wear market generated revenues of $9.9 billion. Thus, according to these figures, the total U.S. fashion industry generated $291.2 billion in 2007. 51 Global Marketline Report 2007 stated that revenues of the global fashion industry range somewhere between $750 billion and $862 billion. 52 Testimony on H.R. 5055, ―The Design Piracy Act‖, given July 27, 2006 before the Committee on the Judiciary, U.S. House of Representatives, Subcommittee on Courts, the Internet, and Intellectual Property, given by Christopher Sprigman, Associate Professor, University of Virginia School of Law (stating that stores like H&M, Zara, and Topshop are three of the largest retail culprits of copying high end designs and selling them at affordable prices. Professor Sprigman argues that the fact that there is widespread copying and minimal litigation in Europe means that the design protection system has done nothing to affect the way the industry operates). 53 Testimony on H.R. 5055, supra note 52 at 4 (stating that ―[W]e fear that H.R. 5055 might turn the industry‘s attention away from innovation and toward litigation.‖). Layne Randolph 77 ____________________________________________________________________________ Although the two territories operate with very different levels of IP for fashion designs, it would appear that the level of IP protection available is not determinative of success in the fashion industry. With increased protections and incentives for litigation in the US, the market could change dramatically in ways that would not necessarily be expected in the EU, i.e. more legal protection in the US would probably equal more litigation and a potential stall to fashion innovation as designers act out of an abundance of caution for fear of crossing the inspiration/imitation line. Whether IP protections granted are many or are few, the best environment for a thriving fashion industry still appears to be one in which the utilization of the IP protection is low. And within each territory, it would be advisable to structure the level of protection taking into account that territory‘s cultural norms as regards utilization. Finally, we must address the issue of the technological advances that allow the fashion cycle to recycle itself at a pace inconceivable only a few years ago. To a certain extent, design copyists are able to take the punch out of the piracy paradox with their ability to copy designs before the original designer can produce one garment. No longer does the mass market not have to wait for fashion trends to trickle down, through fast-fashion and the like the mass market is often on the edge of fashion just as quickly as the top designer‘s customers. This may be the best argument for additional IP protections for the original designer, both the original top fashion house designer and the small emerging designer. The DPPA may not be the perfect solution, but a limited and specific protection could certainly provide a proactive response to industry changes as they occur. Certainly there is no easy answer to this conundrum, other than for fashion and IP legal experts to remain alert to potential risks inherent in their applicable territory, risks which may not be so great that a radical change is immediately necessary, but which may require future intercession. Because even if we find that current IP protections are well-suited to their territory and the industry today, there may very well come a point at which these protections are no longer adequate which would warrant adjustments. For the moment, however, the debate over whether now is the time for intercession rages on. 78 Fashion Forward or Fashion Victim: Intellectual Property Protection in the Fashion Industry BIBLIOGRAPHY Articles J. BARNETT, Shopping for Gucci on Canal Street: Reflections on Status Consumption, Intellectual Property and the Incentive Thesis, in Virginia L. Rev., 2005. L. HEDRICK, Tearing Fashion Design Protection Apart at the Seams, 65 WASH. & LEE L. REV., 2008. T. JACKSON & D. SHAW, The Fashion Handbook, Routledge, 2006. V. MANLOW, Designing Clothes: Culture And Organization Of The Fashion Industry, Transaction Publishers, 2007. T. MCCARTHY, McCarthy on Trademarks and Unfair Competition, Thomson West, 2008. M. NIMMER & D. NIMMER, Nimmer On Copyright, Bender (1990). M. NIMMER & D. NIMMER, Nimmer On Copyright, Bender (2007). K. RAUSTALIA & C. SPRIGMAN, The Piracy Paradox: Innovation and Intellectual Property in Fashion Design, in Virginia L. Rev., 2006. K. RAUSTALIA & C. SPRIGMAN, Where IP Isn‟t, in UCLA Sch. of Law Pub. Law & Legal Theory Research Paper Series, 2007. H. REICHMAN, Design Protection in domestic and Foreign Copyright Law: From the Berne Revision of 1948 to the Copyright Act of 1976, Duke L.J. 1143 (1983). S. SCAFIDI, Intellectual Property and Fashion Design, in 1 Intellectual Property and Information Wealth, Peter K. Yu, 2006. Laws and Treaties Council Regulation No. 6/2002 on Community Designs, 2001 O.J. (L 3). C. Propriété Intellectuelle, art. I, L112-2 (Act No. 94-361 of 10 May 1994 art. 2 Official Journal of 11 May 1994). Design Piracy Prohibition Act, H. REP. NO. 5055, 109th Cong. (2006), Design Piracy Prohibition Act, H. REP. NO. 2033, 110th Cong. (2007) and S. 1957, 110th Cong. (2007). Design Piracy Prohibition Act, H. REP. NO. 2196, 111th Congress (2009-2010). Layne Randolph 79 ____________________________________________________________________________ Lanham Trademark Act, 15 U.S.C. § 1127. Trademark Counterfeiting Act, 18 U.S.C. 2320 (1984). U.S. Copyright Act, 17 U.S.C. (2006). U.S. Patent Act, 35 U.S.C. (2006). Cases United States District Court for the Southern District of New York, Diane von Furstenberg Studio, LP v. Forever 21, Inc., Case No. 07-2413 (S.D.N.Y. Mar. 29, 2007). United States District Court For The Central District Of California, Express, LLC V. Fetish Group, Inc., 424 F. Supp. 2d 1211 (C.D. Cal. 2006). United States Supreme Court, Gorham v. White, 81 U.S. 511 (1871). Tribunal de Commerce Paris, 1994, Yves Saint Laurent S.A. v. Societe Louis Dreyfus Retail Management S.A., E.C.C. 512, case «Yves Saint Laurent». Additional Sources Global Marketline Report 2007. LECG, Economic Analysis of the Proposed CACP Anti-Counterfeiting and Piracy Initiative Prepared for the Coalition Against Counterfeiting and Piracy (CACP), 2007. Mega Zipper (registered Community Design No. 000823414-0002. Office for Harmonization in the Internal Market). Office for Harmonization in the Internal Market, The Community Design, Frequently Asked Questions on the Community Design, Question 1.1, http://oami.europa.eu/en/design/faq.htm (last visited February 2010). Testimony on H.R. 5055, ―The Design Piracy Act‖, given before the Committee on the Judiciary, U.S. House of Representatives, Subcommittee on Courts, the Internet, and Intellectual Property, by Christopher Sprigman, Associate Professor, University of Virginia School of Law (2006). Written Statement on H.R. 5055, ―The Design Piracy Prohibition Act‖ presented to the Subcommittee on Courts, the Internet and Intellectual Property, U.S. House of Representatives, by Susan Scafidi, Associate Professor of Law and 80 Fashion Forward or Fashion Victim: Intellectual Property Protection in the Fashion Industry Adjunct Professor of History, SMU, Visiting Professor, Fordham Law School (2006). U.S. Marketline Report 2007. U.S. Patent & Trademark Office, Trademarks, Basic Facts, Should I Register My Mark?, http://www.uspto.gov/web/offices/tac/doc/basic/register.jsp, last modified 12/30/2009, last visited February 2010. US Trademark, Ser. No. 73, 170, 890, Reg. No. 1,241,222 (filed May 17, 1978). ECONOMIC IMPLICATIONS OF PATENT CLAIM SCOPE. by Eno-obong Usen TABLE OF CONTENTS 1. INTRODUCTION. 2. CLAIMS Broad Patent Claim Scope Narrow Patent Claim Scope 3. COMPARISON Pros and Cons of Broad and Narrow Scope Infringement Direct Infringement Indirect Infringement - Induced Infringement - Contributory Infringement 4. INFRINGEMENT 5. CONCLUSION BIBLIOGRAPHY 82 Econimic Implications of Patent Scope 1. INTRODUCTION: The baseline rationale for intellectual property right is to grant exclusivity to its owner as a means of discouraging free-riding and encouraging innovation1. The right so granted consist mainly of patrimonial and non-patrimonial (moral) right. The non-patrimonial aspect (moral right) consist of the right to paternity and integrity it pertains mostly to copyright and some neighbouring rights while the patrimonial right consist of the exclusive right to authorise or prevent others from making, using, selling or otherwise dealing in the invention without the prior consent of the right holder2. This pertains to other branches of intellectual property rights. Patents right are mainly patrimonial3. The scope of the patent right determines the extent of the exclusionary characteristic of the grant4. Patent has its strong area of influence secondarily concealed behind the words used to define its scope5 . The scope of protection plays an important role in the decision by an inventor whether to patent or keep the invention a secret, this is partly due to the educative nature of the specification6. It is also a critical factor in determining the proximity of any new competitor7: that is how close a new invention maybe in order to be termed infringing. In addition it serves a commercial purpose in adjusting the relationship between the inventor and the second comer to the technological area, who neither bore the burden of creation 1 J. HARRISON, Law and Economics, Thomson West, New York, 2007 at 683 S. THORLEY-R. MILLER-G. BURKILL- C. BIRSS, TERRELL on the Law of Patents, 15th ed., Sweet & Maxwell, London, 2006 at 1 3 Article 28 of the TRIPS Agreement present the rights conferred in a succinct manner and in doing so reflect common practise nationally. Accordingly 1(a) where the subject matter of a patent is a product, to prevent third parties not having the owner's consent from the acts of: making, using, offering for sale, selling, or importing for these purposes that product; (b) where the subject matter of a patent is a process, to prevent third parties not having the owner's consent from the act of using the process, and from the acts of: using, offering for sale, selling, or importing for these purposes at least the product obtained directly by that process. 2. Patent owners shall also have the right to assign, or transfer by succession, the patent and to conclude licensing contracts. See Agreement on Trade-Related Aspects of Intellectual Property Rights, Apr. 15, 1994, Marrakesh Agreement Establishing the World Trade Organization, Annex 1C, Legal Instruments—Results of the Uruguay Round, 33 I.L.M. 1125, 1197 (1994) [hereinafter TRIPs Agreement] 4 Idem, 133 ―once the public misperception of patent changes from anticompetitive monopolies to useful stimulant for economic growth, the patent becomes revived to some extent‖, Kastriner, The Revivial of Confidence in the Patent System (1991) 73 JPTOS 5 at 8 5 M. FISHER, Fundamentals of Patent Law: Interpretation and scope of protection Hart Publishing, Oxford – Oregon , 2007 at 113 6 The patent documents have a legal obligation to teach the reader how to make the stated invention. Even where the innovators in developing countries may not be able to reproduce the latest cutting edge technology contained in patent documents, they may be still be able to use information contained in the specifications about the technology to adapt to local situations. This could be the very backbone for a technological revolution in developing countries. 7 M. FISHER, Fundamentals of Patent Law: Interpretation and scope of protection, Supra note 5 at 113. 2 Eno-obong Usen 83 or the risk if failure8. The wordings of the patent claim play an important role in the determination of the scope of protection. 2. CLAIMS The claim is a technical description of the process, machine method or matter to be patented. It defines what the inventor considers to be the scope of her invention, the technological territory she claims is hers to control and it distinguishes the inventor‘s intellectual property right from other terrains9. The claim is often required to be crafted in clear and certain words so as to provide a clear definition of the scope of patent right to be granted because lack of clarity can impede legitimate investment in technological-based products and services10 . In the United States and the United Kingdom the claim determines the scope of the invention by placing a ‗fence post‘ around it, in other jurisdiction the claim are meant to provide ‗sign post‘ for the invention to make it easier to ascertain the inventive step and novelty of the invention 11. The European Patent Convention reflects a compromise between the fence post and sign post claiming12. In the UK, the United States, Japan and Germany, the Patent Offices and the courts constant make decisions as to the exact coverage of the patent claim scope13. The former does this when it determines which claims to be allowed on a specific claim and the latter in litigation where questions of infringements are decided14. 8 J. HARRISON, Law and Economics, supra at note1 at 688. R. MERGES and R. NELSON, On Complex economics of Patent Scope decisions, in the Colum. L. Rev . Vol 90, 1990 at 845 10 C. NARD, Law of Patents, Aspen, New York, 2008 at 437 11 G. SUTHERSANEN, Global Intellectual Property Law. Commentary and Materials, Edward Elgar, 2008 at 123 12 W. CORNISH and LLEWELYN, Intellectual Property: Patents, Copyright, Trademark and Allied Marks, Sweet and Maxwell, 2003, at 66 . It is instructive to note that the fence post claiming is otherwise called the peripheral claiming approach, it purports to set the outermost boundaries of patent rights. It serves as a notice function in setting out clear boundaries to warn the public of what is and is not claimed. Its ―notice function‖ has been terms by scholars as a dangerous illusion, because it means that courts define the scope of legal rights not by reference to the invention but by reference to semantic debates over the meaning of words chosen by lawyers. For this reason, it brings uncertainty into the patent system. In the sign post claiming otherwise known as central claiming approach, the patentee does not delineate the outer reach of what it claims. Rather, the patentee discloses the central features of the invention, what distinguishes it from the prior art, and the courts determine how much protection the patent is entitled to by looking at the prior art that cabins the invention, how important the patentee‘s invention was, and how different the accused device is. While the peripheral claiming establishes fence posts marking the boundary of the patent, the central claiming replaces the fence posts with sign posts identifying new inventions by describing the core or gist of the patentee‘s contribution to technology. See D. BURK & M. LEMLEY., Fence posts or sign posts? Rethinking Patent claim construction, U. Pal L. Rev. , Vol. 57 at 1745-6 available at http://www.law.upenn.edu/journals/lawreview/ articles/volume157/issue6/ BurkLemley157U.Pa.L.Rev.1743(2009).pdf 13 R. MERGES and R. NELSON, On Complex Economics of Patent Scope decisions, supra note 9 at 840 14 C. NARD, Law of Patents, supra note 10 at 395 9 84 Economic Implications of Patent Claim Scope The determination of the optimal claim scope of protection of patent plays an important role in the stimulation of economic growth. The creation of rules for determining the optimal patent scope that maintain the protection a patent is meant to confer while still keeping the patent monopoly within reasonable bounds has posed a major challenge to court and legislature. The difficulty of this task has led to different results in different jurisdictions. Many jurisdictions have chosen to determine the scope of patent protection under broad claim scope, while others have maintained the position that adequate scope can be obtained by a narrow claim interpretation. Article 5 of the TRIPS Agreement deals with issues bordering on Patent. It is silent on the issue of claim interpretation, thus leaving this issue at the discretion of member states. The Patent Act of United kingdom, United States, Japan and German represent divergence view of the interpretation of the patent claim scope. The objective of this research is to study the claim interpretation of four patent jurisdictions—the United States, the United Kingdom, Germany and Japan, their divergent approach to the interpretation of the patent claim scope of protection and the resultant effect in their economy, with a view of providing possible clues for developing countries. For a gainful insight it is pertinent to understand the concept of broad and narrow patent claim scope. Broad Patent Claim Scope There has been a lot of debate weighted heavily on the proposition that broad claim scopes of protection are conducive to economic development and growth15. Notable proponents of the Patent induced theory depicts patent as a necessity for inducing invention and suggest broad claim scope of protection for revolutionary inventions16, yet many scholars have argued along the line that broad patent claim scope were not always necessary to induce invention and entailed significant economic cost17. Scholars have suggested that the optimum patent claim scope is that which promote competition in research18. Kitch argues that since competition in research is inefficient broad claim scope of protection to the originator of revolutionary creations would provide optimum incentive for technological development and improve the larger social welfare19. Schumpeter elucidating on this point avers that market factors alone would not justify entities investing the amount of time, effort and money that the creation of a spectacular technical contribution would require more so revolutionary creations are an important 15 R. MAZZOLENI- R. NELSON, Economic theories about the benefits and costs of patents, in J. of Econ Issues 1998, 1031ff at 25. 16 The anticipation of obtaining a patent induces firms to invest money into the research that resulted in the invention or bring the invention into the market. Fisher supra at note 3 at p 114 17 R. MAZZOLENI- R. NELSON, Economic theories about the benefits and costs of patents, supra note 15 at 26. 18 R. MERGER and R. NELSON, On limiting or encouraging rivalry in Technical Progress: The effect of Patent Scope decisions in the J. of Econ Behaviour Org Vol. 25, 1994 19 E. KITCH, Nature and Function of the Patent System, 20 J.L. & Econ. 265(1977) cited in J. HARRISON, Law and Economics, supra note 1 at 689 Eno-obong Usen 85 driving force behind economic growth20. Fisher also asserts that broad patent claim scope of protection induces disclosure. The narrower the scope of protection offered by the patent system is the less the potential returns, the less likely public disclosure and the decision to patent would be made by inventors21. On the other hand broad patent leads to potentially large social cost, such as the inefficiencies associated with monopoly profit (deadweight losses)22. The broad claim scope of patent protection is justified by Kitch from a different perspective; he reasoned that the patent system is a necessity to encourage investment in technological prospect after the right has been granted. He emphasized that patents are granted after invention but before commercialisation: this enables the inventor to invest in development without fear of imitation and also enables him to coordinate future R&D efforts of potential imitators to reduce inefficient duplication of inventive effort23. Kitch demonstrates that unless there is a broad patent claim scope of protection on the prospect opening invention, greater competition in the race for the new product and development of the prospect may proceed in a socially wasteful way24. From this perspective, broad patents are probably better since they tend to reduce the inefficiencies associated with rivalry uncoordinated invention and reduce over fishing within the same product space. Broad patent claim scope of protection however, poses a danger of raising up industries who create such ‗inventions‘ and get such patent with the aim to make profit through licensing rather than development and commercialization in-house25. There is a danger of fostering the growth of a market based on patent licensing, this becomes worst where such rights are conferred on research tools and ideas that would have otherwise formed part of the public domain26 yet it the fact that such inventions would have otherwise been kept secret cannot be ignored. The granting of broad claim scope results in a social cost to the society, it acts as a deterrence to other firms with capacity to invent in the neighbourhood to undertake any of the wide variety of follow on inventive work that improves, or variegate on an initial invention because of the likelihood that their inventions would be challenged27 as infringing. The option to for the follow-on inventor lies on his ability to negotiate a 20 J. SCHUMPETER, Capitalism, Socialism and Democracy, 5th ed. London: George Allen and Unwin, 1976 cited in M. FISHER, Fundamentals of Patent Law: interpretation and scope of protection, supra at note 5 at 140 21 Ibid. at156 22 Ibid at 143 23 This amount to granting a right over an unexplored pool with the right holder granted the right to charge an access fee for the exploitation of the various part of this pool. E. KITCH, Nature and Function of the Patent System supra at note 19 at 279 cited in R. MERGES and R. NELSON, On Complex economics of Patent Scope decisions, supra at note 9 at 871 24 The rationale here is that too many people would race to that same opportunity and the result would be ‗wasteful mining‘ of the prospect or ‗over fishing of the pool‘ 25 R. MAZZOLENI- R. NELSON, Economic theories about the benefits and costs of patents, supra note 15 at 278 26 Ibid at 282 27 Ibid at 275 86 Economic Implications of Patent Claim Scope license with the holder of the original prospect defining patent, and to do these broad claims patent offers less incentive28. Narrow Patent Claim Scope There are yet other scholars who proposed a narrower claim scope. Scherer identifies two categories of invention in addition to revolutionary invention; serendipitous or accidental inventions often termed market induced invention, and invention characterised by high development cost29. For the latter inventions Scherer suggests a narrow patent scope of protection in view of the fact that incentive should not extend further than is necessary to induce invention and broad claim scope will reduce the incentive for others to make improvements and would restrict the use that could be made of the invention thereby increasing the cost associated with the patent.30 Scotchmer asserts that the interaction between the first and second generation inventions depends on the scope of claim protection of the primary patent, often referred to as the upstream right31. If the primary patent has a narrow scope of protection, it will allow many improvements to be patented and marketed without fear of infringing the primary right. Merger & Nelson justifies the award of narrow claim scope of patent protection on its importance role in preserving competition and place the inventor of significant improvements in a good bargaining position vis-a-vis the inventor of basic invention, more so every potential inventor is also a potential infringer32. For this reason patents ought to be confined and controlled, their scope restricted to curb possibility of abuse33. A narrower patent scope is useful in lowering the transaction cost34 of cumulative innovators. This is essentially so because contemporary innovation is more of a network process and new ideas and inventions are a result of recombination of element from various industries, even with the benefit of the patent monopoly the production of an invention is often beyond the capacity of a lone inventor. Fisher however argues that narrow patent claim grant gives rise to consequential incremental technological advances which could potentially translate into patent clusters springing up to surround any given innovation, this could give rise to a situation where technological field becomes entangled with narrow 28 The rationale behind this is that a controlling patent on the original invention is a means of preventing competitors from sharing in the returns through imitation. 29 F. SCHERER, Patents. Economics, Policy and Measurement, Edward Elgar , Cheltenham, 2005 at 447 30 Ibid at 139 31 S. SCOTCHMER, Standing on the shoulders of giants: cumulative research and the Patent Law, in J. Econ Persp 1991 at 30 32 R. MERGER and R. NELSON, On limiting or encouraging rivalry in Technical Progress: The effect of Patent Scope decisions, supra note 18 at 916 33 F. SCHERER, Patents. Economics, Policy and Measurement, Edward Elgar supra note 29 at p.153 34 C. NARD, Law of Patents supra note 10 at 65 Eno-obong Usen 87 competing interest. 35and what we may have would be a number of small clusters of blocking patent preventing technological advancement. Thus narrow patent can be just as stifling in number as broad patent. However the Japanese system which is typified by narrow patent grant demonstrate that this problem could be avoided or at least lessen by anticompetitive regulation of the market, cross licenses or other technology transfer practices36. The determination of the proper patent claim scope of patent has been the subject of policy debate over the years37. Yet there has been no consensus on its optimal scope. Figures from the European patent office easily demonstrate that the use of patent system varies widely between different technologies38. This might reflect the notion that there is inherently less innovative activity occurring in certain industries or that there is something in the patent system that makes it less attractive to these industries. Another rationale for this might well be that technical advances varies significantly in different field of industries making any attempt to provide a general formulae of claim scope for all nature of invention fundamentally flawed. Countries at different stages of economic development show preference to broad or narrow patent claim scope of protection in response to the need for technological and economic advancement that might exist at that particular period in their history or as a reflection of their historical and cultural circumstances. This is mainly due to the variation in incentives that broad and narrow protection provides to the inventive pool39. At a low level of economic development, countries develop by bridging their technology gap through imitation. A narrow scope of patent protection serves to reduce the cost of imitation. But as their indigenous innovation capability develops and an indigenous innovation springs up, the welfare calculus changes such that countries find it in their own interest to broaden their scope of protection. To this end it is pertinent to compares the Patent claim scope regime of different countries. 3. COMPARISON 35 M. FISHER, Fundamentals of Patent Law: interpretation and scope of protection, supra note 5 at155 36 Ibid at 256 37 R. J. GILBERT and C. SHIPORA, Optimum Patent Length and Breadth in RAND J. of Econs 21, no. 1, Spring 2001, pp. 106 at 112 38 The top performer in 2005 was, according to the Annual Report of the European Patent Office , electronics and electrical communications technology, which accounted for 11.06% of filings. Agriculture accounted for 0.79% of applications , and mining for 0.32%. Health related inventions made up 6.92%, and 1.30% were in the field of inorganic chemistry. Nucleonic was at the bottom of the table, accounting for only 0.13% of applications. The Annual Report is available at http://annual-report.european –patent-office.org/2005_chapter4.pdf 39 As earlier noted broad protection is often said to encourage so-called pioneer inventions well adapted to countries at a high level of technological evolution while narrow protection encourages follow-on inventions preferable for countries at a lower level of technological evolution. 88 Economic Implications of Patent Claim Scope Broad and Narrow Patent Claim Scope of Protection The Agreement on the Trade Related Aspects of Intellectual Property Right (TRIPS) of 199440 was established as a response to the need to for an effective international protection measure for intellectual property right as necessitated by increased international trade and development. Section 5 borders on patent related issues, yet its provision is silent on the issue of claim interpretation, leaving the matter to the discretion of national legislation of contracting parties. The approach to this issue reflects disparity between nations; with some giving broad protection, others narrow protection and yet others trying to maintain a balance between broad and narrow protection. Such manifest disparity is unfavourable to the maintenance of the spectrum of innovative activity in the world system and goes against the tenet of the TRIPS agreement itself which is the transfer and dissemination of intellectual property41. The United States, Germany and Japan are the three systems that at one times was acclaimed to handle nearly 90 percent of the world‘s patent traffic42, United Kingdom also is a major player in the patent system. The approach to the appropriate scope of patent claim varies widely. Claim interpretation in these countries are diversified, from the traditionally narrow, sub-literal, Japanese approach, through the expansive effect of the US Doctrine of equivalents, to the German broad protection of the general inventive Idea43 and the UK purposeful claim interpretation approach. In the United States and the United Kingdom, the principle upon which claim drafting is based is that of peripheral definition, with the claim marking the outer boundary of the protection44. However when it comes to interpretation, the two system part company, for the United States, patent claim scope is determined by application of a two stage test whereby the literal assessment of the wordings used in the claim is augmented by recourse to the doctrine of equivalents45. The doctrine of equivalent seeks to eliminate the problem resulting from literalism in the construction and application of the claim language judging from the fact that the literal infringement alone is sometimes inadequate to protect the patentee and the recognition that the literal claim language may not fully capture the patentee‘s 40 TRIPS Agreement is Annex 1C of the Marakesh Agreement establishing the World Trade Organisation which was concluded on April 15, 1994. Available at http://www.wto.org/english/tratop_e/trips_e/t_ agm0_e.htm 41 ibid Article 7 42 T. Isayama, „Japan‟s view on a Desirable IP System for the Global Economy‟ in JWIP 1999, 679ff at 687 43 M. FISHER, Fundamentals of Patent Law: interpretation and scope of protection, supra note 5 at 174 44 Ibid. 45 Per Justice Jackson in Graver Tank v Linde Air Products, 339 US 605(1949, Supreme Ct) at 608 and also Section 112 Patent Act of 1952, ch 950, 66 Stat 792 (19 July, 1952) Eno-obong Usen 89 contribution to the invention46. It further presupposes that limiting patent protection to the literal scope of the claim would encourage the concealment of invention thereby going against a tenet of the patent law47 and the very foundation of the American Patent Law48. The doctrine of equivalent has been viewed as extending the patent claim scope beyond that contemplated by the inventor at the time of filing the patent application and thus negatively affecting after raising inventions. However there exist other methods of expanding protection beyond the literal wording that the patentee uses, such as a true purposive construction wherein the perceived desire of the patentee inform the lexicon. Conversely, in the United Kingdom the scope of protection is determined by a single- stage purposive construction of the claim49. A purposive interpretation demands that the claims be read through the eyes of a person skilled in the art, and that the purpose or function of the invention should be borne in mind when the patent is interpreted50. Thus how broad or narrow the patent claim scope should be, is left to the determination of the person skilled in the art. The European Patent Convention51 entered into force in 1977, UK is a signatory and as part of its obligation under the convention the UK Patent Act 1977 was passed into law52. The provisions of Article EPC and the Patent Act of 1977 are similar. Section 69 of the European Patent Convention provides that ‗the extent of the protection conferred by the European patent or a European patent application shall be determined by the terms of the claim, Nevertheless, the description and drawings shall be used to interpret the claims‘. Contracting States have criticised this principle as often leading to an unduly narrow and literal interpretation and in certain cases it has also lead to an over generous interpretation53 Lord Diplock in the leading case of Catnic Components Ltd v Hills & Smith Ltd (1982) RPC 18354 interpreted this principle to mean that which actually gave effect to what the person 46 J. S. CIANFRANI, An Economic Analysis of the Doctrine of Equivalents in Va. J. of L.& Tech , Spring 1997, pp. 8 available at http://www.vjolt.net/vol1/issue/vol1_art1.html 47 M. FISHER, Fundamentals of Patent Law: interpretation and scope of protection, supra note 5 at 187 48 To promote the progress of science and useful arts, by securing for a limited times to authors the exclusive right to their respective writings and discovery. Article 1 of the Constitution of the United States of America. 49 Kirin-Amgen v Transkaryotic Inc (2005) 1All ER 667 50 Kastner v Rizla (1995) RPC 585, cited in L. BENTLEY and B. SHERMAN, Intellectual Property Law, Oxford University Press, 2009 at pp. 536 51 European Patent Convention(EPC) was signed in Munichi on 5 October, 1973 but entered into force 7 October 1977. It is available at http://www.epo.org/patents/law/legaltexts/html/epc/1973/e/ma1.html 52 M. FISHER, Fundamentals of Patent Law: interpretation and scope of protection, supra note 5 at 291 53 C. NARD, Law of Patents supra note 10 at 507 54 ―A patent specification should be given a purposive construction rather than a purely literal one derived from applying to it the kind of meticulous verbal analysis in which lawyers are too often tempted by their training to indulge‖. Ibid. At 538 90 Economic Implications of Patent Claim Scope skilled in the art would have understood the patentee to be claiming. Thus article 69 prevents equivalence from extending protection outside the claims Contracting States to the European Patent Convention criticised this principle as often leading to an unduly narrow and literal interpretation and in certain cases it has also lead to an over generous interpretation55. It is appreciated the fact that matters relating to claim construction by the contracting states admits widely differing interpretative styles. To this end the protocol on the interpretation of Article 69 was enacted. The protocol makes it clear that one cannot go beyond the claim to what, on the basis of the specification as a whole, it appears that the patentee has contemplated but however in determining the extent of protection according to the content of the claim but avoiding literalism, the court of the Contracting State should combine a fair protection for the patent with reasonable degree of certainty for third parties56. The drafters of the Convention by adopting a formula whereby the extent of protection conferred by a patent is determined by the terms of the claims rather than the words of the claim takes a position somewhat broader than that of a pure literal claim interpretation57. The protocol has been regarded as a compromise between the claim interpretation policies of United Kingdom and Germany which are the two most important patenting powerhouses in Europe58. Traditionally in Germany as opposed to UK where the claim formed the periphery of the monopoly, and interpretation a key to both the definition of the invention and the extent of protection. Traditionally, in Germany claim interpretation formed the core of the monopoly, but protection is determined by extrapolation from this central point based on what the patent actually teaches the skilled addressee59. Thus the claim served only to define the invention, the scope of the protection was determined by a generalisation of the inventive concept, unhindered by the exact words used in any claim limitation60. The German courts traditionally adopt a reward-based justification for the grant of patent, this establishes another key principle in German Claim interpretation namely the idea that a broad scope protection should be given to the so-called ‗pioneer inventions‘ 55 C. NARD, Law of Patents supra note 10 at 507 Ibid at 508 57 M. FISHER, Fundamentals of Patent Law: interpretation and scope of protection, supra note 5 at 225 58 Germany accounts for nearly 45 % of patent applications originating in Europe and the United Kingdom accounts for nearly 10% of this figure. See : EPO Annual Report for 2005 available at http://annual-report.european-patent-office.org/facts_figures/_pdf/fact_figures_05.pdf 59 This is otherwise called the Central Definition theory. 60 T. TAKENAKA, Interpreting Patent Claims: The United States, Germany and Japan, 17 IIC Studies, 1995 ed., Max Plant Institute of Foreign and International Patent, Copyright and Competition Law, Munich. At 30 in M. FISHER, Fundamentals of Patent Law: interpretation and scope of protection, supra note 5 at 224 56 Eno-obong Usen 91 than to minor advances61.Thus if the patent did not add appreciably to the prior teaching, then it was not deserving of a reward and would be given a narrow interpretation but for pioneer or revolutionary inventions a broad interpretation would be given62. The essence of this was to spare competitors the necessity of bringing a nullity suit. This expansive interpretation of patent scope admits a lot of uncertainty into the process of innovation and patenting. Theoretically beneficial to the patentee, as protection is provided that is commensurate to the inventive merit of their creation yet third parties are at disproportionate disadvantage as they can no longer rely on patent document to determine the scope of the invention. This tends to undermine the value of patent as an information tool63. The traditional German claim interpretation had been criticised, exalted, supported and denounced but one key fact is undeniable; German industry did not falter and grind to a halt under its influence, the inventive landscape was not chocked with unwieldy broad patent grants. It serves its purpose. Perhaps that was the support for the method of interpretation that no agreement could be found over narrowing the wording of the official German Version of Article 69 EPC(which refers to the ‗content‘s of claims) to match the official English and French versions ( referring to ‗terms‘). The German Act of 1918 was promulgated in order to satisfy German obligation under the EPC. Article 69 of the EPC viewed as incompatible the Central definition theory thus forcing German Patent practice to be modified to a position where by claim occupied a position more central to the grant. In practice however the presumption underlying the protection of the general inventive ideathat the patentee is entitled to reward to the full extent of their contribution to the art is most significant and can be seen to have coloured many decisions under the 1981 Act64. German claim scope nevertheless remains much broader than that of the United Kingdom yet as earlier noted the general inventive idea did not stifle German‘s economic and technological advancement to any appreciable extent. However there remains yet another claim interpretation style the Japanese subliteral interpretative style which may give more insight on this issue. 61 Decision of Reichsgericht of 2 Mar cited in T. TAKENAKA, Interpreting Patent Claims: The United States, Germany and Japan, supra note 60 at 24 Thus if the patent did not add appreciably to the prior teaching, then it was not deserving of a reward and would be given a narrow interpretation but for pioneer or revolutionary inventions a broad interpretation would be given. 62 M. FISHER, Fundamentals of Patent Law: interpretation and scope of protection, supra note 5 at 231 63 ibid at 232 64 In Formstein‘s case for instance the court while asserting that the new law marked a firmed departure from the principles of the old structures the new test and in particular the statement of invention paraphrased in the claims to reflect the legacy of expansive interpretation. It provided a potential scope of protection which does not seem to be different from the traditional German Claim Interpretation- Geissler, ‗Comments on Formstein‘ (1987) 18 IIC 795 at 802 See for instance Improver Corp v Remington Consumer Products Ltd, (1993) 24 IIC 838 92 Economic Implications of Patent Claim Scope Japan Patent Ordinance of 1959 represented a novel approach to claim interpretation. Article 70 provides that the court should determine the technical scope of a patented invention, and therefore the breadth of protection, by reference to the claim65. The Ordinance came into force as a response to government policy to aid Japan in its post-war recovery66. However the Ordinance did little to change the institutionalised perception of the Japanese Patent Claim scope which was fundamentally narrow67. Therefore despite the provisions of Article 70 of the 1959 Patent Law Ordinance, the claim was still being utilised up till the late1990 as a guiding principle to be remoulded at will68. Takura summarised the three main position that may be adopted to in the determination of claim scope in Japan as follows: The literal interpretation which is important for legal certainty, second a supra-literal interpretation which expands the patent‘s scope beyond their precise wordings, thereby emphasising protection of the right holder and thirdly the subliteral interpretation which provides for a narrow understanding of the claim than the actual wording would suggest, and emphasis protection of the general public69. Thus the claim was considered to provide a succinct summary of the invention while the scope of protection had to be decided on the basis of the entire application including the specification and the drawings70. The third approach is peculiar only to Japan, though in decided cases Japanese courts tend to follow this seemingly unorthodox pathway71. The sub-literal protection reflects an essential element of Japanese patenting culture that is collectivism, over individual reward system72. The system of narrow grant allows patent to beget patent thus making it virtually impossible for one entity to control all technology surrounding an invention. Apparently, the Japanese system protects what the inventor actually realise he had invented and thus fully disclosed to the public in his specification. This is a somewhat limiting principle as it tends to suppress the breadth of patent. 73. Takenaka rightly asserts that if protection does not extends to minor innovation then this is a tragedy especially to the inventor who is thereby not wholly rewarded for his contribution further more if infringement does not cover minor modification 65 M. FISHER, Fundamentals of Patent Law: interpretation and scope of protection, supra note 5 at 260 66 T. TAKENAKA, Interpreting Patent Claims: The United States, Germany and Japan, supra note 60 at 34 67 M. FISHER, Fundamentals of Patent Law: interpretation and scope of protection, supra note 5 at 260 68 ibid 69 O. TUKURA, „Japanese Claim interpretation‟ (1994) AIPPI Journal 215 at 215 70 Ibid at page 194 71 See for example Token Lender-Ace Denken KK v Yuai Shoji – p.113 Hanrei Jihou(Law Report) No. 1390 (July 1999) 72 M. FISHER, Fundamentals of Patent Law: interpretation and scope of protection, supra note 5 at 274 73 The practice of limiting patent scope based on disclosure in the specification rather than the wording of the claim is also known as the inventors recognition theory.- T. TAKENAKA, Interpreting Patent Claims: The United States, Germany and Japan, supra note 60 at 66 Eno-obong Usen 93 then patent law would encourage imitation instead of innovation74. Fisher reasoning along this line avers that as an ideology, it fits very well with an economic model that promotes importation and assimilation of technology, a sort of legalised piracy promoting patent clusters, rather than giving incentive to pioneer inventions75. While these views are well maintained, yet Japan based on her model of patent scope did reach a high level of economic and technological growth within a very short expanse of time. The narrow scope of protection in the long run became of immense benefit to all categories of people in Japan, from inventors to innovators down to the consumers. The technical teachings of the patent system provided a platform upon which future technology built on without fear of infringements. There are no uniform rules applicable to the interpretation of patent claim and their scope even at the international level. The ambivalence in claim interpretation across national territories produces a disincentive to inventors and investors to transfer technology or engage in inventive activities in states which offer an inadequate protection for their rights and economic interest76. It is therefore of much economic advantage for the claims to be construed in a manner clear enough to mark a definite boundary between what is actually protected and the extent to which a new inventors activity would constitute an infringement. To this end it is important to consider what actually institutes and infringement of a patent right. Infringement can be loosely defined as the commission of a prohibited act with respect to a patented invention without permission of the patent holder and this forms our next discussion. 4. INFRINGEMENT Patent infringement is the commission of a prohibited act with respect to a patented invention without the permission or licence from the patent holder. Patent is territorial and infringement is only possible in a country where a patent is in force. The definition of patent infringement varies by jurisdiction but it typically includes using or selling the patented invention. In most countries, a use is required to be commercial or have a commercial purpose to amount to an infringement. In German Section 9 of the Patent Act defines the uses constituting patent 74 Ibid at 47 M. FISHER, Fundamentals of Patent Law: Interpretation and scope of protection, supra note 5 at 261 76 In 1871, Bessmer, the German-born inventor of a revolutionary steel-making process that bears his name told the those gathered at the select committee that he brought his invention to Britain because he of the protection afforded by the patent system. Also Holden, in evidence before the same committee cited example of Switzerland, ‗where there was no protection afforded by the patent system at that time, industries made no progress and people were unemployed‘- See Report of the 1871 Select Committee on Letter Patent, House of Common Papers N 0 368 at 746-62 cited in 76 M. FISHER, Fundamentals of Patent Law: interpretation and scope of protection, supra note 5 at 76. 75 94 Economic Implications of Patent Claim Scope infringement as use of a patented method or process in Germany77. This is similar to direct patent infringement provision under the US laws, Article 35 U.S.C. 271 provides that the unauthorized making, using, offering for sale or selling any patented invention by the infringer must be within the United States or United States Territories,. In Japan Article 101 of Patent Act provides for the use by the patent infringer to be ―...exclusively for the producing of the said patented product as a business‘ coupled with the ‗...knowing that the said invention is a patented invention and the said product is used for the working of the invention‘. Impliedly ‗use‘ has to exclusively pertain to the patented product and for commercial purpose. In the UK by section 60 of the Patent Act 1977 the ‗use‘ constituting infringement is ‗.... the use, or offer for use where it is known that the use of the process would be an infringement‘. Thus the said use must be coupled with malicious. It is important however to note that such ‗use‘ of the patented product must be done during the lifetime of the patent. The laws of the United State, UK, Japan and Germany bellies two broad categories of patent infringement namely indirect infringement and direct infringement78. Nard elucidating on this categorises of infringement identifies indirect infringement as occurring where a party encourages or aids another directly to infringe the patent while direct infringement, occurs where a party is by himself committing acts (e.g., making a product or practicing a process) that infringe one or more patent claims79. Direct infringement: This comprises literal infringement and non-literal infringement, commonly referred to as the doctrine of equivalents (or ‗‗DOE‘‘)80. Literal infringement seems to assume a somewhat uniform interpretation in UK, USA, Japan and Germany. Nard rightly points out that it occurs when an accused device possesses each and every limitation recited in at least one patent claim81. Literal infringement is also found where the accused device in addition to possessing each and every limitation recited in at least one of the patent claims contains additional elements not found in the claim82. However it has been commonly recognized that literal infringement alone is sometimes inadequate to protect the patentee as the literal claim language may not fully capture the 77 A German patent and a European patent granted for Germany are not generally affected by acts committed exclusively in other countries. 78 R. WESTON JR. A comparative analysis of the Doctrine of equivalent: Can European Approach solve an American Dilemma. 39 IDEA 35 see generally on the provisions for infringement Article 101 of the Japanese Patent Act (Act No. 121 of 1959), Section 60 of the UK Patent Act 1977, Section 35 U.S.C. § 154 in United States and German Patent Act Section 139-142. 79 C. NARD, Law of Patents, supra note 10 at 391. 80 ibid 81 Ibid 457. 82 For example, Inventor claims a sewing device, comprising A, B, and C; an accused device would still infringe if it possessed A, B, C, and D see for instance Dippin‘ Dots, Inc. v. Mosey, 476 F.3d 1337 Eno-obong Usen 95 patentees‘ contribution to the art83 . This was also well noted by Justice Jackson‘s in Graver Tanks & Manu. v Lined Air Product Co when he stated that ‗‗to permit imitation of a patented invention which does not copy every literal detail would be to convert the protection of the patent grant into a hollow and useless thing‘‘ and limiting the patentee to his literal claim scope ‗‗would leave room for—indeed encourage—the unscrupulous copyist to make unimportant and insubstantial changes and substitutions in the patent.‘‘84. In the case of Hoechest Celanese v BP Chem Ltd85, there was an intense dispute over the term ―stable‖. It clearly illustrated that the meaning of even the seemingly clear term in a patent claim can be hotly contested in an infringement suit and the entire case can turn on which definition the court would accept86. Thus the same word would mean different things to different people making language inherently incapable of capturing the essence of the invention and a patent susceptible to being easily circumvented87. In order to mitigate the hardship that may be occasioned by literal infringement courts have over time evolved infringement under the doctrine of equivalent otherwise known as non-literal infringement. The doctrine of equivalent is an equitable remedy, applied where the accused product or process does not literally infringe the claim, it allows liability to be found if the infringing device (or process) is an ‗‗equivalent‘‘ to the claimed invention88. The doctrine of equivalent gives the patent applicant all of the reward to which they are entitled to without the cost of obtaining additional protection thus giving him the protection that would otherwise not have been possible under the literal infringement. The doctrine of equivalent thought to have evolved in the US, have been given different interpretation by courts in different jurisdiction89. Ralston90 mirrors this inconsistency as driven by national tradition. He noted that some countries, 83 S. HALPERN, C. NARD and K. PORT, Fundamentals of United States Intellectual Property Law: Copyright, Patent, and Trademark, Kluwer 1999 at 285 84 Graver Tank & Manufacturing Co. v. Linde Air Products Co., 339 U.S. 605 (1950) cit. In S. HALPERN, C. NARD and K. PORT, Fundamentals of United States Intellectual Property Law: Copyright, Patent, and Trademark ibid. 85 Hoechst Celanese Corp. v. BP Chemicals, Ltd., 846 F. Supp. 542, 31 USPQ2d 1825 (S.D. Tex. 1994). 86 J. S. CIANFRANI, An Economic Analysis of the Doctrine of Equivalents supra note 46 at 22 87 Miquel reasoned in her writing that patent law would have no purpose if third parties are allowed to use without permission(and without infringement) allege technical solutions, which, without falling into the scope of the literal wording of the claims of a previous patent , showed insubstantial variants in respect of the element claimed therein. 88 S. HALPERN, C. NARD and K. PORT, Fundamentals of United States Intellectual Property Law: Copyright, Patent, and Trademark supra note 83 at 266 89 See International Association for the Protection of Intellectual Property (AIPPI), Committee Q175, Summary Report, The role of equivalents and prosecution history in defining the scope of patent protection 1(2003), available at http://www.aippi.org/reports/q175/q175_summary_e.pdf. 90 W. T. RALSTON, Foreign Equivalents of the U.S. Doctrine of Equivalents: We‟re Playing in the Same Key but it‟s not Quite Harmony, Chicago-Kent J. Intell. Prop. 2007 p. 2 available at http://jip.kentlaw.edu/art/volume%206/6%20Chi-Kent%20J%20Intell%20Prop%20177.pdf 96 Economic Implications of Patent Claim Scope including Japan and the United Kingdom, traditionally interpreted claims very literally, and thus did not until recently have any doctrine analogous to the U.S. doctrine of equivalents91. Conversely, other countries, including Germany, interpreted claims very broadly and incorporated doctrines similar to the U.S. doctrine of equivalents into their approach to determining literal infringement92. In the United States for infringement to be found under the doctrine of equivalence the accused infringing device must have each element of the patented claim93. This all elements rule was affirmed in Pennwalt, and the Federal Circuit asserted that the element by element analysis must consider all of the limitations included in the claim94. The U.K. recognized a doctrine of equivalents, referred to as the doctrine of ―pith and marrow.‖95 Under this doctrine, if an accused device contains all of the elements of the claim, but some ―inessential elements‖ are substituted with equivalent elements, then non-literal infringement of a patent is found96. Hence, for infringement to be found ―every element and limitation … is essential.‖97 Germany‘s approach to infringement under the doctrine of equivalence mirrored that of the U.S. accordingly any accused device that embodied the same inventive concept as claimed in a patent infringed that patent98. But, after Germany signed the EPC, it made a number of changes to its laws, and requires that for an infringement to be said to have occurred the court must look at the technical function of each of the individual features of the claims. This analysis considers ―every single feature and . . . the mutual connection of all features of the claim99.‖ Takenaka recounting the Japanese experience noted that its Patent Laws were originally patterned according to Germany‘s approach, but the Law came under much influence by the U.S. law. Consequently Japan adopted a much narrower 91 See also W. C. REVELOS, Patent Enforcement Difficulties in Japan: Are There Any Satisfactory Solutions for the United States?, 29 GEO. WASH. J. INT‘L L. & ECON. 503, 521 (1995) 92 A. M. SOOBERT, Analyzing Infringement by Equivalents: A Proposal to Focus the Scope of International Patent Protection, 22 RUTGERS COMPUTER & TECH. L.J. 189, 190 (1996) at 207 93 C. NARD , The Law of Patents supra note 10 at 418 94 833 F.2d at 949-954 (J. Nies, concurring); See also Warner-Jenkinson Co. v. Hilton Davis Chemical Co., 520 U.S. 17, 29 (1997) (setting forth same rule). 95 R. D. WESTON, A Comparative Analysis of the Doctrine of Equivalents: Can European Approaches Solve an American Dilemma, 39 IDEA 35, 40 (1998), 49-50 96 Ibid. 50-51 9797 The following cases are instructive on this issue ; Catnic Components Ltd. v. Hill & Smith Ltd., [1982] R.P.C 183 (H.L.) and Improver Corp. v. Remington Consumer Products Ltd., [1990] F.S.R. 181 (Pat. Ct. 1989) 98 W. T. RALSTON, Foreign Equivalents of the U.S. Doctrine of Equivalents: We‟re Playing in the Same Key but it‟s not Quite Harmony supra note 90 at 11 99 Ibid. Eno-obong Usen 97 interpretation of claims100. Thus, Japan also applies the ―all elements‖ rule101 in order to determine an infringement under the Doctrine of Equivalence. However, in order to strike a balance between the interest of the patent applicant and the new comer to the technological area, by ensuring that the innovation process in not stifle the courts formulated four important limitations on the doctrine of equivalent they include: prosecution history estoppel- which prevents a patentee from capturing (or recapturing) claim scope which the patentee had surrender during prosecution to obtain allowance over cited prior art102. The public dedication rule- subject matter disclosed but not claimed in the patent application is dedicated to the public103 ; the all-limitations rule demands that each limitation of a patent claim is material to defining the scope of the patented invention and must not be vitiated or rendered meaningless. Thus, for there to be infringement under the doctrine of equivalent an equivalent of each claim limitation must be found in the accused device104. Relatedly specific exclusion rule, which is a corollary to the all-limitations rule, holds that the doctrine of equivalent is unavailable to capture subject matter that the claim specifically excludes. The reasoning behind this rule is that by defining a claim in a way that specifically excludes certain subject matter, the patentee implicitly disclaimed the subject matter and is therefore prevented from invoking the doctrine of equivalent105. Prior Art The role of prior art as a limitation on the doctrine of equivalent is straightforward. Claim coverage under the Doctrine of Equivalent cannot extend to include subject matter that forms part of the prior art. The reason is claims that read on the prior art do not satisfy the patentability requirements, and therefore, the Patent office would never have issued the patent106. Indirect infringement: Nards identifies two possible types of indirect infringement known to patent law, there are induced infringement and contributory infringement107. In Germany and the Patent Laws did not expressly make mention of contributory and induced patent infringement, yet it is submitted that induced and contributory infringement as a common legal principle which the court would always give effect to, is reflected in its Patent provisions to. Induced infringement is alleged where there is some positive act of inducement by the person being sued to another to carry out a direct infringement of that which is claimed. Having case law roots, induced infringement was codified 100 T. TAKENAKA, Harmonizing the Japanese Patent System with Its U.S. Counterpart Through Judge-Made Law: Interaction Between Japanese and U.S. Case Law Developments, 7 PAC. RIM. L. & POL‘Y 249, 252-253 (1998) 101 Ibid. 253 102 Sofamor Danek Corp., v DePuy-Motech Inc., 74 F.3d 1216,1222(Fed. Cir. 1996) cit. Ibid. at 267 103 Maxwell v J. Baker, Inc., 86 F. 3d 1098,1106 (Fed. Cir.1996) cit. Ibid. At 266 104 C. Nard, Law of Patents supra note 10 at 454 105 SciMed Life Systems, Inc. v. Advanced Cardiovascular Systems, Inc., 242 F.3d 1337, 1347 (Fed. Cir. 2001). Cit , ibid. 106 C. Nard, Law of Patents supra note 8 at 454 107 Ibid. 98 Economic Implications of Patent Claim Scope in 1952 by the Patent Act .under § 271(b) of Title 35 of the United State Code which succinctly provides that ―[w]hover actively induces infringement of a patent shall be liable as an infringer‖. Such a positive act may be in instructing, directing or advising the third party as to how to carry out a direct infringement108. To constitute infringement by inducement under the US Laws two element must be present: (1) direct infringement by another and (2) intent to cause the acts which constituted infringement109. Though the term ‗Inducement‘ is not expressly mentioned under Article 101 of Japanese Patent Law yet its provision mirrors same110. In Germany and UK, provisions for induced infringement is not clearly reflected in the Patent Laws, however European Patent Convention (EPC 1973) Article 64 (3) provides that any infringement of a European patent shall be dealt with by national law, this gives courts in Germany and UK the leverage of resorting to their national laws in order to find induced patent infringement, howbeit against the provisions of section 10 of the German Patent Act and UK Section 60(2)(3) Patent Act 1977 respectively. The German Civil Code §840 BGB bellies the provisions for induced infringement and has provided a basis upon which patent infringement has been found. Elements that constitute infringement under the German and UK laws can be summarized as: (1) the allegedly infringing part, which must not be a staple commercial product, has to relate to an essential element of the patented invention. (2) It has to be suitable and intended for exploiting the invention. (3) It has to be supplied within and for use in Germany or UK as the case may be and (4) must be delivered to a person that is not entitled to exploit the invention. (5) the supplier has to know that the means are suitable and intended for exploiting the invention or it has to be at least obvious to him.(5) Finally, the patentee must not have consented to this specific supply. Contributory infringement: The doctrine of contributory infringement, like the doctrine of equivalents, provides patentees with some additional protection against those who unfairly took advantage of their inventions111. A contributory infringement occurs where a person without the authority from the patentee sells or offers to sell within the patent granting States or imports in such States, a component of the patented machine, manufacture, combination or composition, a material or apparatus for use in practicing a patented process, or machine constituting a material part of the invention, knowing the same to be especially made or especially adapted for use in infringement such as patent, and not a staple 108 Hewlett – Packard Co. V Baushch & lomb, Inc 909 F. 2d 1464(fed. Cir, 1990) S. HALPERN, C. NARD and K. PORT, Fundamentals of United States Intellectual Property Law: Copyright, Patent, and Trademark supra note 83 at 268 110 Article 101 of the Japan Patent Law provides where a patent has been granted for an invention of a product, acts of producing, assigning, etc., importing or offering for assignment, etc. any product (excluding those widely distributed within Japan) to be used for the producing of the said product or process and indispensable for the resolution of the problem by the said invention as a business, knowing that the said invention is a patented invention and the said product is used for the working of the invention; 111 LADAS and PARRY LLP. Indirect infringement available at / http://www.ladas.com/Patents/ BiotechnologyUSPharmPatentLaw/USPhar31.html 109 Eno-obong Usen 99 article of commerce, suitable for substantially non-infringing use112. The concept of contributory patent infringement varies from country to country. There exist substantial differences in the scope, premises and the laws bordering on contributory infringement although a look at the various applicable laws reveal a general consensus that the sale or offer for sale of an article will constitute contributory infringement only if the said article is not a staple article of commerce. In the US inducement is also a key element in contributory patent infringement. First recognized as a tort in the United States in 1871, developed in the case law until it was eventually codified by the patent statute. Section 271(b) of the Patent Act declares that a person who actively induces the infringement of another‘s patent is jointly responsible with the direct infringer. Prior to codification, however, the case law further extended the limits of contributory infringement and § 271(c) of the current federal patent statute likewise includes elements beyond active inducement113. Many other countries do not require active inducement but instead merely require proof of another‘s actual direct infringement or a substantial possibility of direct infringement114. Often, these countries strictly required the contributory infringer to know that the components sold were to be used for patent infringement. Recent statutes, however, only require awareness that the components were made for the exploitation of the patented invention. By contrast, some countries like Japan do not require any knowledge of the direct infringement. Contributory infringement is recognised from the mere production of components that could only be used to produce a patented article where the infringer must have knowledge that the article in question was patented and that his use of such an invention to make, use, sell or offer for sell will constitute an infringement115. The German Patent Law Section 10 bellies the essential elements of contributory infringement. It has been contended that contributory infringement in Germany requires the ―essential element‖ to be set out in the claims of the infringed patent116. The law of contributory infringement in the UK is codified in Sections 60(2) and 60(3) of The Patents Act 1977, The elements of contributory infringement under the Act in UK is similar to that of Germany and can be summarised thus; (1) the infringing product of process must have been supplied or offered to be supplied within the jurisdiction. (2)the means supplied must relate to an Essential element of the invention;(3) the person supplied must not be a licensee, or otherwise entitled to work the invention;(4) the patent must be in force;(5) the supply must be without the consent of the patentee; and (6) the 112 B. LOHARY, K. BANERJEE and A. PANIKAR, Contributory Patent Infringement and the Pharmaceutical Industry, 8 JIPR July 2003 at 303 113 S. JONG, Contributory Patent Infringement in Korea; Re-Engineering Patent Law, Wash. U. J.L. & Pol‘y Vol.2:287 2000 p. 295 available at http://law.wustl.edu/journal/2/p287jong.pdf 114 Aro Manufacturing Co. v. Convertible Top Replacement Co., 377 U.S. 476(1961) 115 Stroco Prod. Inc v Mullenbach 67 USPQ 168, 171(S. D. Call 1944) 116 J. TAORMINO, Contributory Patent Infringement in Germany, Hoffmann.Eitle, Munchen London 2008 at p. 6 100 Economic Implications of Patent Claim Scope infringer must know, or it must be obvious to a reasonable person in the circumstances, that the means supplied are suitable for putting, and are intended to put, the invention into effect in the jurisdiction117. It is however observed that in UK where a staple product is supplied, it will only be a contributory infringement if the supply is accompanied by an inducement for the person supplied to commit a direct infringement. Such an inducement might come in the form of instructions which would lead the person supplied to commit an infringement. It has been maintained that the U.S. Patent Law theoretically provides a patent owner with stronger or broader protection under contributory infringement118. 5. CONCLUSION: It is safe to conclude that the approach to the interpretation of claim scope plays a vital role in the promotion of research investment, foreign technology transfer and consequently higher economic growth in the nation. It has been proposed by some writers that the level of development in a country ought to be a strong determinant of the scope of patent protection offered in that country. Developed countries are most likely to benefit from a broader scope of patent construction because they engage in more international trade and in revolutionary research. In developing countries most industries lack technical capacity and inadequate infrastructure to engage in break through research and they majorly engage in improvements or follow-on inventions, to this end a narrow scope of claim interpretation is suggested. It is worth emphasising that the technological field also plays a major role in determing the scope of protection. With broad patent claim scope, revolutionary and breakthrough inventions is expected as any invention close to the patented claim would be in danger of infringement, for instance the quest for permanent cure to HIV (in form of vaccine and drug) might well benefit from broad patent claim scope of protection, as researcher would need the prospect of broad protection to be induced into such venture. Whilst a narrow patent claim scope for the most time births many improvement as mirrored in electronic industries. For this reason the computer industry witnesses many patented improvements which might take place as quick as the speed of light. This is a model of which Japan is noted for. Indeed countries could draw a lot of lessons from the Japanese experience when adopting the narrow patent claim scope which could positively translate to the birth of industries specializing in adaptation and improvement of invention developed in 117 See J. TAORMINO, Contributory Patent Infringement in Germany, Hoffmann.Eitle, Munchen London 2008 p.6 118 K. KURUSU, Recent Amendments to Indirect Infringement Provision of Japan Patent Law with Corresponding Ones in the U.S. and Germany, Oct. 2002 available at http://homepage2.nifty.com/kurusu-patent/information_draftclaim_e.htm Eno-obong Usen 101 other countries more so, the patentee could generate a lot of revenue from licensing. Stimulation of invention and their commercial activities is one of the rationale for the grant of patent right. However with its monopolistic nature and tendency, patent can negatively impact diffusion of new technology and information as the system itself is susceptible to abuse. It is a common place observation that inventors most at times seek to extend and expand patent protection to major advancements and myriads of minor developments thereby limiting competition in that sector of the economy. Countries can benefit from adapting into their legislation the pro-competitive measure allowed by TRIPS and the exceptions to patent right, as a safeguard in order to strike a meaningful balance between the need to ensure reward to the inventor and the preservation of the public welfare and economic advancement. TRIPS, which are administered by the World Trade Organization (WTO), sets minimum standards of availability, scope, use, and enforcement of IP rights. These standards are essentially based on those of the United States and the EU member states and seem to be virtually oblivious of the peculiarities in developing countries. Consequently, WTO members must, in accordance with Article 27 of TRIPS, make patents available "for any inventions, whether products or processes, in all fields of technology, provided that they are new, involve an inventive step and are capable of industrial application." Furthermore, patents must be available and patent rights enjoyable "without discrimination as to the place of invention, the field of technology and whether products are imported or locally produced." The divergent construction of the appropriate claim scope and how patent policy should promote national economic development and public policy priorities challenges the very foundation of such ―one size fit all‖ provision. This rightly reflects the divergent social and economic circumstances countries face. The better view however would be that countries should adopt the appropriate claim construction well suited for its own economic and technological level to ensure a balance between the need to reward the inventors for their creative efforts and the dissemination of information and technology transfer. Economic Implications of Patent Claim Scope 102 BIBLIOGRAPHY A. M. SOOBERT, Analyzing Infringement by Equivalents: A Proposal to Focus the Scope of International Patent Protection, 22 RUTGERS COMPUTER & TECH. L.J. 189, 190 (1996) B. LOHARY, K. BANERJEE and A. PANIKAR, Contributory Patent Infringement and the Pharmaceutical Industry, 8 JIPR July 2003 at 303 C. NARD, Law of Patents, Aspen, New York, 2008 D. BURK & M. LEMLEY., Fence posts or sign posts? Rethinking Patent claim construction, U. Pa. L. Rev , Vol. 57 at 1745-6 available at http://www.law.upenn.edu/journals/ lawreview/articles/volume157/issue6/BurkLemley157U.Pa.L.Rev.1743(2009).pdf F. SCHERER, Patents. 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REVELOS, Patent Enforcement Difficulties in Japan: Are There Any Satisfactory Solutions for the United States? 29 GEO. WASH. J. INT‘L L. & ECON. 503, 521 (1995) W. T. RALSTON, Foreign Equivalents of the U.S. Doctrine of Equivalents: We‟re Playing in the Same Key but it‟s not Quite Harmony, Chicago-Kent Journal of Intellectual Property 2007 p. 2 available at http://jip.kentlaw.edu/art/volume%206/6%20Chi-Kent%20J%20Intell %20Prop %20177.pdf Table of Cases Aro Manufacturing Co. v. Convertible Top Replacement Co., 377 U.S. 476(1961) Catnic Components Ltd. v. Hill & Smith Ltd., [1982] R.P.C 183 (H.L.) Hewlett – Packard Co. V Baushch & lomb, Inc 909 F. 2d 1464(fed. Cir, 1990) Hoechst Celanese Corp. v. BP Chemicals, Ltd., 846 F. Supp. 542, 31 USPQ2d 1825 (S.D. Tex. 1994). Improver Corp. v. Remington Consumer Products Ltd., [1990] F.S.R. 181 (Pat. Ct. 1989)Kirin-Amgen v Transkaryotic Inc (2005) 1All ER 667 Kastner v Rizla (1995) RPC 585 Eno-obong Usen 105 Maxwell v J. Baker, Inc., 86 F. 3d 1098,1106 (Fed. Cir.1996) cit. Ibid. At 266 Stroco Prod. Inc v Mullenbach 67 USPQ 168, 171(S. D. Call 1944) Sofamor Danek Corp., v DePuy-Motech Inc., 74 F.3d 1216,1222 (Fed. Cir. 1996) cit. Ibid. at 267 SciMed Life Systems, Inc. v. Advanced Cardiovascular Systems, Inc., 242 F.3d 1337, 1347 (Fed. Cir. 2001). Cit , ibid Stroco Prod. Inc v Mullenbach 67 USPQ 168, 171(S. D. Call 1944) Tank v Linde Air Products, 339 US 605(1949, Supreme Ct) at 608 Token Lender-Ace Denken KK v Yuai Shoji – p.113 Hanrei Jihou(Law Report) No. 1390 (July 1999) Warner-Jenkinson Co. v. Hilton Davis Chemical Co., 520 U.S. 17, 29 (1997) Statutes European Patent Convention(EPC) 1977. Available at http://www.epo.org/patents/law/legal-texts/html/epc/1973/e/ma1.html Japanese Patent Act (Act No. 121 of 1959), The German Patent Act Section 139-142 TRIPS Agreement is Annex 1C of the Marrakesh Agreement establishing the World Trade Organisation Available at http://www.wto.org/english/tratop_e/trips_e/t_ agm0_e.htm UK Patent Act 1977, US, Section 35 U.S.C. § 154 of the United States Abbreviation of Journals Colum. L. Rev J. L. & Econ. J. of Econs – – Columbia Law Review. Journal of Law and Economics J.L. & Econ. – Journal of Economics. J. of Econ Behaviour Org. Organisation Journal of Economic Behaviour and Economic Implications of Patent Claim Scope 106 J. of Econ Issues – Journal of Economic Issues J. of Econ – Journal of Economics J.L. & Pol'y – Journal of Law and Policy J. Econ persp. – Journal of Economic Perspectives JWIP – Journal of World Intellectual Property. J. Int‘l L. & Econ – Journal of International Law and Economics J. Intell. Prop. – Journal of Intellectual Property. JIPR – Journal of intellectual property right Rutgers Computer & Tech. L.J. - Rutgers Computer & Technology Law Journal U. Pa. L. Rev. – University of Pennsylvania Law Review Va. J. L & Tech – Virginia Journal of Law and Technology Wash. U. J.L. & Pol'y – Washington University Journal of Law and Policy THE INTERFACE BETWEEN INTELLECTUAL PROPERTY AND COMPETITION LAW: IS THE REFUSAL OF A PATENTEE TO LICENSE ANTI-COMPETITIVE? by Fanny Koleva1 TABLE OF CONTENTS 1. INTRODUCTION 2. IS THE PATENTEE ALWAYS IN A DOMINANT POSITION? 3. DOES THE DOMINANT PATENTEE ALWAYS BEHAVE IN AN ANTICOMPETITIVE WAY IN CASE OF REFUSAL FOR LICENSING? 4. CASE LAW 5. CONCLUSION BIBLIOGRAPHY Acknowledgements The author wishes to thank Professor Marco Ricolfi for his support throughout the program and Professor Paolisa Nebbia for her guidance in the research process. The support of Ms. Laura Milano, Ms. Simonetta Sabbadini and Ms. Ilaria Iannazzo is also appreciated. Special thanks to all lecturers and participants in the program, as well as to the teams of WIPO, University of Turin and ITC of ILO. “In any case, one may hope that future enforcement of antitrust law will succeed in combining the need to maintain competition with the quest for legal certainty, without any attempt to penalize firms because (and not despite) of their IP rights”. Rita Coco and Paolisa Nebbia.2 1 Assistant Professor, Intellectual Property Department, University of National and World Economy, Sofia, Bulgaria. E-mail: fanny_koleva@unwe.eu. 2 Compulsory licensing and interim measures in Merck: a case for Italy or for antitrust law?, in JIPLP 2007, 452 ff., at 462. 108 The Interface between Intellectual Property and Competition Law: Is the Refusal of a Patentee to License Anti-Competitive? 1. INTRODUCTION The purpose of the patent system is to provide incentives for innovations, and therefore for competition, through the grant of property rights upon the created inventions. The aim of the antitrust law, on the other hand, is to guarantee the competition, and in this way the innovations, by monitoring the behaviour of the competitors and not allowing restrictive practices and abuse of market power. Therefore the two systems share basically the same purpose – to keep markets innovative and competitive, although they use different tools to achieve this1. At the same time, their differing approaches may cause tension in a short run perspective, as far as the grant of a property right on an invention in fact restricts the competition for the term of protection, creating incentives for competition in the long run. One of the controversial issues in this respect is if the patentee‘s refusal to license his invention is anticompetitive. The view points are highly differing, from the one that the opportunity to exclude is the very essence of the property right and therefore should be excluded from antitrust scrutiny, to the other that the patent right is a monopoly and therefore should be object to the same level of scrutiny as every other monopoly2. The purpose of the paper is to try to find the answer, as well as if there‘s a way to balance the two systems‘ approaches in this respect. As far as many considerations are at hand, we will explore theoretically and regarding the experience of EU and USA basically first the question if the patentee is a monopolist, afterwards if his behaviour is anticompetitive and how is this being assessed, including in patent cases, in order to conclude. 1 Probably this is the reason for being said sometimes that they are controversial, while these differing approaches show that the two systems are complementary, see U. S. DEPARTMENT OF JUSTICE AND THE FEDERAL TRADE COMMISSION, Antitrust enforcement and intellectual property rights: promoting innovation and competition, Bibliobazaar, Charleston, 2007, 2 ff., B. GALLEGO, Unilateral refusal to license indispensable intellectual property rights – US and EU approaches in J. Drexl (ed.), Research Handbook on Competition and Intellectual Property Law, Edward Elgar, Cheltenham, 2008, 216 ff., G. GHIDINI, Intellectual Property and Competition Law. The Innovation Nexus, Edward Elgar, Cheltenham, 2006, 99 ff., H. HOVENKAMP, M.D. JANIS and M.A. LEMLEY, Unilateral refusal to license in the US, in F. Leveque - H. Shelanski (eds.), Antitrust, Patents and Copyright. EU and US Perspectives, Edward Elgar, Cheltenham, 2005, 12 ff., R. WHISH, Competition Law, Lexis Nexis, UK, 2003, 663 ff., V. KORAH, Antitrust considerations: refusal to license intellectual property in the U.S. and EC, in C. Heath – A. Sanders (eds.), Spares, repairs and intellectual property rights, Kluwer Law International BV, The Netherlands, 2009, 185 ff., R. GILBERT – C. SHAPIRO, An economic analysis of unilateral refusals to license intellectual property, in PNAS, USA, 1996, 12749 ff., P. NEBBIA, EU competition law (lectures for the LLM in intellectual property law, 2009/2010), 2 ff. 2 On this controversy, see U. S. DEPARTMENT OF JUSTICE AND THE FEDERAL TRADE COMMISSION, Antitrust ..., supra at note 3, at 21, V. KORAH, The interface between intellectual property and antitrust: the European experience, in ALJ 2001, 801 ff., at 803, R. GILBERT – C. SHAPIRO, An economic analysis ..., supra at note 3, at 12750. Fanny Koleva 109 _______________________________________________________________________________ 2. IS THE PATENTEE ALWAYS IN A DOMINANT POSITION? The refusals for licensing are viewed in competition terms as abuses of dominant positions or anticompetitive monopoly creations or maintenances. In order to apply the instruments of the competition policy to a company in this direction, two things must be at hand: that it is in a dominant position on the market and that this position is being abused or the monopoly is abusively created or maintained. Very often the patent right is called monopoly right and therefore it‘s automatically considered that the first prerequisite is fulfilled. The things, nevertheless, are usually not so straightforward, because the very existence of a patent right doesn‘t also mean that the products under it are present on the market3. On the other hand, the right, given by the patent, is to exclude, the same property right obviously as any other one in this respect. Interestingly, the property is usually not called a monopoly right, but only in the case of intellectual creations4. Even if we leave this aside and concentrate on the popular assumption that the patent creates legal monopoly, we must say that the legal monopoly doesn‘t necessarily coincide with a market monopoly5. There usually are other products on the market, not covered by the patent, which serve the same purpose and satisfy the same needs. Therefore, if the patentee is not in a dominant position on the specific market, his behaviour on it can not be considered abusive. The said doesn‘t necessarily mean that the patentee can not be a real monopolist on the market, but that this happens seldom and has to be established in 3 Therefore, even if there is a patent, the very fact that the holder is not on the market with it means that he can not be in a dominant position and his conduct – anticompetitive. See J. LANG, The application of the essential facility doctrine to intellectual property rights under European competition law, in F. Leveque - H. Shelanski (eds.), Antitrust, Patents and Copyright. EU and US Perspectives, Edward Elgar, Cheltenham, 2005, 63 ff. 4 Probably this is mostly historically based, coming from the first law, regulating the issue in a contemporary manner, the English Statute of monopolies, 1623 (which covered other issues too, we must not forget), see http://en.wikipedia.org/wiki/Statute_of_Monopolies_1623. 5 Even if this is a legal monopoly, it‘s an abstract one, limited to the niche market of the very products under the patent and not the real market situation. Nowadays both the theory and practice, both in the field of IP and competition law usually recognize it. For example Torremans said ―Intellectual property rights confer exclusive rights, but they hardly ever confer a real monopoly in the sense that the monopolist can act in an arbitrary way without being influenced by his competitors‖ in P.L.C. TORREMANS, Holyoak and Torremans Intellectual Property Law (5th edition), Oxford University Press, 2008, 15 ff. and a competition body stated ―…intellectual property rights do not necessarily (and indeed only rarely) create monopolies….Therefore, antitrust doctrine doesn‘t necessarily presume the existence of market power from the mere presence of an intellectual property right.‖ in U. S. DEPARTMENT OF JUSTICE AND THE FEDERAL TRADE COMMISSION, Antitrust …, supra at note 3, at 2 and ECJ confirmed that ―the mere ownership of an intellectual property right cannot confer a dominant position‖ in V. KORAH, The interface between …, supra at note 4, at 810. See also M. RICOLFI, Is there an antitrust antidote against IP overprotection within TRIPS, in MIPLR 2006, 305 ff, at 351 on the issue. 110 The Interface between Intellectual Property and Competition Law: Is the Refusal of a Patentee to License Anti-Competitive? every single case. This makes the determination of the relevant market and the share of the patentee on it crucial. As far as there‘s very seldom a lack of any substitutes, in which case the monopoly is usually at hand, in the rest of cases the dominance must be present on the market of all substitutes, being such because of the products‘ characteristics, their prices and their intended use6. Apart from this, if the products under the patent are also branded products, it can mean that the relevant market coincides with the niche market of the exclusive right in case that the brand creates barriers for entry at the market. Again, it‘s the case only seldom. Regarding the geographical scope, as far as the patent is territorially limited, the relevant market can usually not be bigger than this territory7. On the other hand, if the SSNIP test is applied, it can turn out that the neighbouring geographic markets (or parts of them) must be included in the scope of the relevant market, because there‘s a serious probability for consumer ―migration‖ to those markets (demand-side substitutability)8. In such a case, the relevant market would be bigger again, meaning a lower probability of dominance. Therefore, if dominance is really established, the next step is to check if the patentee‘s behaviour is abusive9. Obviously, the legislator had this probability in 6 Another approach is to look for dominance of the patentee on the technology market, defined again by the very technology and its substitutes, determined by the same criteria. This approach is considered heavier for application and therefore recommended for use in combination with the product oriented approach in order to assess more accurately the market strength of the patentee, see the Commission Guidelines on the application of Article 81 of the EC treaty to technology transfer agreements, April 2004, in the Official journal of the European Union, 5 ff. Moreover, some authors criticize the evaluation of the dominance of the technology markets as far as it makes it easier to find dominance on them because of the exclusive right of the patentee, see B. GALLEGO, Unilateral refusal …, supra at note 3, at 226. The relevant market must in fact also include the substitutes of the products/ technologies under the patent if the assumption of the SSNIP (The Small but Significant Non-transitory Increase) test can be presumed, i.e. if in case of small price increase, there‘s enough ―migration‖ of the customers to other goods, technologies or markets to make the price increase unprofitable for the dominant company. 7 This doesn‘t mean that there‘s no demand for the goods under the patent on other markets, but only that in the lack of exclusive right for them, it‘s much less probable that the patent owner is in dominant position there. 8 This would usually be connected with the lower prices there, due to the lack of patent protection for these territories and respectively the presence of competition. 9 Regarding the dominance issue, the approach in the countries differs – in EU 50% market share at hand is enough, while in USA the threshold is 70%. Share between 40 and 50% and even less (but no less than 25%) is also possible in EU, if other circumstances, showing dominance, are at hand (e.g. low number of competitors, having low market shares, existing barriers for entering or expansion in the market, lack of opportunity for their replication, etc. or basically independence on the market). See DG Competition Discussion Paper on the application of article 82 of the Treaty to exclusionary abuses, issued by the Commission December 2005, in http://ec.europa.eu/competition/antitrust/art82/discpaper2005.pdf, 9 ff., as well as V. KORAH, Antitrust ..., supra at note 3, at 184. This clearly shows that it‘s more probable to find an abuse in Fanny Koleva 111 _______________________________________________________________________________ mind, while working on the patent law, because it recognized the opportunity for compulsory licensing for the cases of non-use of the patent and dependent patents10. At the same time, as far as the possible cases of abuse are much more and not so straightforward, the instruments of the competition law are at hand to balance the patentee‘s and the public‘s interest, if and when necessary11. 3. DOES THE DOMINANT PATENTEE ALWAYS BEHAVE IN AN ANTICOMPETITIVE WAY IN CASE OF REFUSAL FOR LICENSING? The real issue here is how to differentiate the cases when the patentee just exercises his rights from the cases, in which his behavior is anticompetitive. And this is the area where the approaches differ substantially. However, as far as in the very beginning in the intellectual property (IP) cases the common attitude, already used for other types of assets for refusals to deal (supply), has been tested, requiring risk for the competition and lack of objective justification, it is recognized that there must be negative effect on the competition and therefore on the consumers12. EU considers that this effect is abuse of a dominant position, EU than in USA. Moreover, the fact that IP rights are considered both barriers and absolute cost advantages in EU confirms this further, although it‘s recognized that they do not confer dominance themselves. 10 In fact the legislator in these cases protects the public interest against the patent abuse in a broader sense than the competition law by protecting the very purpose of the patent system to encourage the creation and utilization of inventions and therefore doesn‘t require a dominant market position. In this sense the law is stricter in these cases, considering the behaviour abusive even if there‘s no market dominance, if the specific prerequisites are at hand (non-use for 4 years after the application or 3 years after the patent issuance date, considering the later and refusal for licensing respectively, as well as lack of objective justification). Moreover the patent laws usually also include other grounds for compulsory licensing, which are not connected with the risk of abuse, but with the common public interest, which we don‘t take in consideration here (e.g. national security protection or emergency). For more information on the issue see also the Paris convention for the protection of the industrial property, March 20, 1883, which came into force on July, 7, 1884, 173 member countries, art. 5A, esp. (2) and (4) and the Agreement on Trade-Related Aspects of Intellectual Property Rights, Apr. 15, 1994, Marrakesh Agreement Establishing the World Trade Organization, Annex 1C, Legal Instruments—Results of the Uruguay Round, 33 I.L.M. 1125, 1197 (1994), art. 31, and M. RICOLFI, Is there an antitrust …, supra at note 7, at 305. 11 This means in fact that even if the patentee has market dominance, the abuse must be at hand in order to have him liable. This point of view is also shared in the practice. The U.S. Supreme court for example said that ―the mere possession of monopoly power…is not unlawful unless it‘s accompanied by an element of anticompetitive conduct.‖ in U. S. DEPARTMENT OF JUSTICE AND THE FEDERAL TRADE COMMISSION, Antitrust ..., supra at note 3, at 22. 12 It must be underlined that the negative effect must be on competition and not on a specific competitor. See V. KORAH, The interface between …, supra at note 4, at 817, 820 and I. HARACOGLOU, Competition law and patents. A follow-on innovation perspective in the biopharmaceutical industry, Edward Elgar, Cheltenham, 2008, 123 – 126 ff., R. STERN, Refusals to license intellectual property rights and monopoly “leverage”, in EIPR 1998, 390 ff., at 393. This has also been recognized many times by EU in the DG Competition Discussion Paper ..., supra at note 11, although it has also stated that sometimes the fate of a competitor might influence the fate of the competition. Moreover, in EU the approach hasn‘t also been consistent. See A. STRATAKIS, Comparative analysis of the US and EU approach and enforcement of the essential facilities doctrine, in ECIR 2006, 434 ff. Here Australia has an approach different to some extent, as far as its 112 The Interface between Intellectual Property and Competition Law: Is the Refusal of a Patentee to License Anti-Competitive? which can affect the trade between the member states13 and USA – that the effect is the anticompetitive monopolization or maintenance of monopoly14. Together with this as far as the IP laws give the owner a legal monopoly and a right to exclude, the refusals per se have not been usually considered anticompetitive and therefore something additional has been felt necessary in order to recognize antitrust scrutiny. What is it is treated in various ways, as follows. The ―scope of the rights‖ approach presumes that if the right is exploited out of its borders, the exploitation is anticompetitive15. Recognized extensions are when the patented invention is input for the activity of another company on another market16 and by the refusal the owner aims to create or maintain monopoly on one law said that ―eliminating or damaging a competitor‖ would be considered abuse. See M. O‘BRYAN, Refusal to license intellectual property under Australian Trade practices act, in PW 1992, 10 ff. Nevertheless, it‘s usually considered necessary to have a competitive relationship between the parties at hand in order to have anticompetitive behavior recognized. See H. HOVENKAMP, M.D. JANIS and M.A. LEMLEY, Unilateral refusal …, supra at note 3, at 15, G. MCCURDY, Intellectual property and competition: does the essential facilities doctrine shed any new light?, in EIPR 2003, 472 ff., at 476. It must also be said that in legislative, as well as in case law dimension in the field of antitrust, EU usually follows USA – in time and in doctrine application. 13 It is regulated by art.82 of the Treaty of Amsterdam amending the Treaty on European Union, the Treaties establishing the European Communities and Certain Related Acts, Oct. 2, 1997, entered into force on May 1, 1999. The abuse can be exploitative or exclusionary conduct. According to DG Competition Discussion Paper ..., supra at note 11, the refusals to supply are part of the potential abuses. 14 It is regulated by section 2 of the Sherman antitrust act, July 2, 1890. The case law (United States v. Grinnell Corp., 384 U.S. 563 (1966); see also Weiss v. York Hosp., 745 F.2d 786 (3d Cir. 1984), Wikipedia, http://en.wikipedia.org/wiki/Sherman_Antitrust_Act) develops the concept further, differentiating the anticompetitive cases from the ones, when the monopoly is a result of superior product, business acumen or historic accident. This can also be read in sense that the IP refusals to license are seldom anticompetitive, as far as IP is usually connected with superior product. 15 The interpretation of this approach is usually that the patent gives the right to exclude the competitors for one market and when the owner refuses licensing for exploitation in other/s, it‘s extension of the rights out of their scope (or attempt for monopoly leverage) and therefore anticompetitive (the additional element is the very fact that the refusal is for another market). 16 The term market is perceived as flexible sometimes, covering the situations when the invention is input for activity on downstream, neighbouring, complementary or even the same market, if it contains different levels. See R. GILBERT – C. SHAPIRO, An economic analysis ..., supra at note 3, at 12751, R. PITOFSKY, The essential facilities doctrine under United States antitrust law, submitted to the European Commission in support National Data Corporation in the IMS case, at 20, V. KORAH, The interface between intellectual property rights and competition in developed countries, in SCRIPT-ED 2005, 429 ff., at 437, R. WHISH, Competition Law, supra at note 3, at 664, B. GALLEGO, Unilateral refusal ..., supra at note 3, at 223-8, G. GHIDINI, Intellectual Property and Competition Law ..., supra at note 3, at 104, B. ONG, Anti-competitive refusals to grant copyright licenses: reflections on the IMS saga, in EIPR 2004, 505 ff., at 506, G. MCCURDY, Intellectual property and competition ..., supra at note 14. On the other hand, the issue is quite controversial, incl. the case law, see I. HARACOGLOU, Competition law and patents …, supra at note 14, A. STRATAKIS, Comparative analysis …, supra at note 14, at 441. The EU position is very interesting, while saying numerous times that two markets are necessary, it also says Fanny Koleva 113 _______________________________________________________________________________ or the two markets. The doctrines, used to address the refusals to supply, are additionally developed and applied for the IP extensions as follows. Inherent for this approach is the leverage test (facilitation of monopolization). It has usually been applied with other doctrines and approaches. In USA the courts said that the refusal was legal, if it was in the scope of the right17, that it could be abusive if it extended this scope18, as well as that patents were not always limited to one market (Xerox), but missed to clarify when the refusal was out of the rights‘ scope (or how to differentiate when the right covered one or more markets). Together with this the courts differed in their opinions – in Data General it was considered that there was rebuttable presumption of legality of the refusal, in Xerox that the refusal in IP cases was per se legal, and that the presumption was irrebuttable regarding patents. Moreover, the courts rarely recognized anticompetitive behavior in refusals to license IP19. In EU among the examples for the application of the test are the Magill and Decca cases, in both of which the behaviour have been found abusive20. The approach has also been developed to include the essential facility doctrine, requiring except a risk for the competition and lack of objective justification, also indispensability or essentiality of the asset as an input for the competitors21. that even potential or hypothetical markets are enough, especially in IP cases, opening the concept in this way, see DG Competition Discussion …, supra at note 11, at 65. 17 Data General Corp. v. Grumman Systems Support Corp., 36 F.3d 1147 (1 st Cir.1994). 18 Image Technical Services, Inc. v. Eastmen Kodak Co., 125 F.3d 1195 (9th Cir. 1997); In re Independent Service Organizations Antitrust Litigation (CSU v. Xerox), 203 F.3d 1322 (Fed. Cir. 2000). 19 The appellate courts in the cases haven‘t also agreed under what circumstances the presumption has been rebuttable, having had different opinions on the issue. Of the discussed cases, only the behavior of Kodak has been found abusive; see the analysis for the reasons further. Moreover, the very property has sometimes been recognized as objective justification of the refusal, e.g. in Data General v. Grumman Systems Support Corp., Image Technical Services, Inc. v. Eastmen Kodak Co., CSU v. Xerox. For more information, see H. HOVENKAMP, M.D. JANIS and M.A. LEMLEY, Unilateral refusal …, supra at note 3, GALLEGO, Unilateral refusal …, supra at note 3, G. MCCURDY, Intellectual property and competition ..., supra at note 14. 20 Magill case (C-241 & 242/91P, Radio Telefis Eireann and Independent Television Publications v. Commission [1995] ECR I-743) and Decca (Commission Decision Decca Navigation System, OJ 1989 L 43/27). We have also to add that the discussed approaches and doctrines are applied for refusals to license as a whole, and not necessarily to patents. Therefore in this part various examples are cited. 21 The asset is considered indispensable if the competitor/s can not duplicate it (or invent around it) as input for their activity, being under the control of the monopolist. And it‘s considered essential if it‘s not possible or reasonable, or economically feasible for the competitor/s to duplicate the necessary input, controlled by the dominant company. Although the essentiality is derived on the base of indispensability, it is obviously further developed in direction of higher level of flexibility for application. See R. PITOFSKY, The essential facilities ..., supra at note 18, at 6. 114 The Interface between Intellectual Property and Competition Law: Is the Refusal of a Patentee to License Anti-Competitive? In USA, where the doctrine has been created, its application to IP is considered problematic22, as far as the incentives for innovations of all the parties can decrease and those claims have never been supported by the courts. Moreover, with the time the scope of the doctrine has been narrowed. On the other hand, in Europe, where the doctrine has almost never been used explicitly, it has been more often and more readily applied incl. with negative outcome for the right holder23. Besides the usually assessed issues under claims of essentiality, EU sometimes also addresses additional questions, meaning that it started interpreting the doctrine narrowly, which is positively assessed by some authors24. It can also be said that the essentiality is to some extent irreconcilable with IP, as far as IP is something extraordinary, appearing on the market, technological, cultural and scientifical landscape and that‘s why exclusive rights are going with it. Or said in another way, there must usually be substitutes anyway. The approach is also criticized as far as the patent law doesn‘t specify ―scope market‖ and therefore this interpretation is quite fragile25. Moreover the problem how to define the scope and what is out of it is a serious one26. 22 See H. HOVENKAMP, M.D. JANIS and M.A. LEMLEY, Unilateral refusal …, supra at note 3, at 20, analyzing the case law too. 23 Among the EU IP examples for the application of the doctrine are the Magill, Ladbroke (T504/93 Tierce Ladbroke [1997] ECR 927) and IMS (C-418/01 [2004] ECR I-05039) cases, where the behavior of the defendant has been respectively found abusive, non-abusive and for IMS – abusive at first and non-abusive at second instance. In F. LEVEQUE, Innovation, leveraging and essential facilities ..., supra at note 27, at 110 the doctrine is criticized as being risky regarding the incentives for innovations, as far as the patentees would potentially have their rights at antitrust scrutiny. 24 See e.g. V. KORAH, Antitrust …, supra at note 3, at 190. See also the analysis for the next approach on this issue. 25 The approach is also fragile, as far as no other concrete interpretation suggestion is at hand, which means that the level of legal uncertainty around it is very high. On the other hand the Chicago school says that it‘s out of sense for the monopoly to be extended to other markets as far as all the profits can be extracted on the first market. This compromises the approach even more, if accepted. But this is not the critic, best fitting to it, as far as some authors say that in high technology markets this is not the fact (e.g. G. GHIDINI, Intellectual Property and Competition Law ..., supra at note 3, at 105). Together with this it is really possible to have an IP monopoly, which covers more than one market. More about the critics of the approach and its application to IP cases can be read in I. HARACOGLOU, Competition law and patents …, supra at note 14, at 131, H. HOVENKAMP, M.D. JANIS and M.A. LEMLEY, Unilateral refusal …, supra at note 3, at 18 – 26, F. LEVEQUE, Innovation, leveraging and essential facilities: interoperability licensing in the EU Microsoft case, in F. Leveque - H. Shelanski (eds.), Antitrust, Patents and Copyright. EU and US Perspectives, Edward Elgar, Cheltenham, 2005, 103 ff, at 111, B. GALLEGO, Unilateral refusal …, supra at note 3, at 217. 26 Possible reading of this approach is the broad one, that there is attempt for extension when the IP is used as a ―ground‖ for anticompetitive conduct, which is not connected with it in fact, but the truth is that such an interpretation is not justifiable, as far as case of the kind is not IP case, but one, disguised as such one, and therefore – subject to standard scrutiny. The test for differentiation of such cases from real IP refusals is if the competitors would infringe the exclusive right if they use the asset without license; see H. HOVENKAMP, M.D. JANIS and M.A. LEMLEY, Unilateral refusal …, supra at note 3, at 37. Fanny Koleva 115 _______________________________________________________________________________ The “plus” approach presumes that together with the refusal for licensing (being it on the same or another market), additional anticompetitive behavior is necessary. This approach is usually being applied together with the previous. Again, there‘s lack of consistency what‘s this behavior - first the more common test for other anticompetitive acts has been introduced and after that specifications on it followed, sometimes as examples and sometimes as prerequisites. In USA presumed examples for such additional acts are when: the IP is adopted illegally (Data General), there are concerted acts (Kodak) or tying, fraud on the Patent and trademark office or sham litigation (Xerox). Those are criticized, as far as they are not connected with the very act of the refusal and can be subject to separate scrutiny27. Probably the most popular of the additional acts, which in fact are connected with the refusals is the ―new product development prevention‖, followed later by the ―technological development prevention‖, developed as tests respectively by EU in the Magill and Microsoft cases and clarified in other cases too (e.g. IMS, Bronner)28. There are arguments if the test, developed in Magill, must be alternatively or cumulatively required with the other ones, specific for the more common doctrines and if the whole list is exhaustive or non-exhaustive29. The answer of the case law after it doesn‘t help a lot30. In the Discussion Paper of the Commission it is stated not only that the list is cumulative, but that the last test in it – the product development or technological development (follow-on innovation) prevention would be considered only after the previous circumstances are at hand31. This shows clearly that the concept is narrowing, but at the same time the approach of the Discussion Paper is also been criticized, because it doesn‘t cover every possible scenario32. In this way a separate doctrine on the refusals for licensing has been developed, although it‘s based on the already mentioned at great extent33. 27 For more information see U. S. DEPARTMENT OF JUSTICE AND THE FEDERAL TRADE COMMISSION, Antitrust ..., supra at note 3, B. GALLEGO, Unilateral refusal …, supra at note 3. 28 These mean that the refusal is anticompetitive if it prevents the development of a new product on the market (and not me-too version) or the development of new technologies from the competitor/s respectively, as far as the refusal contradicts the purpose of the IP system (see B. GALLEGO, Unilateral refusal …, supra at note 3, at 228). The second test is obviously closely connected with the first. But here even the development of specific new product must not be at risk, but only of a potential new product, resulting from the technology development. Microsoft (COMP/C-3/37.792 [2004]) and Bronner (C-7/97 [1998] ECR I-7791). 29 See for example V. KORAH, The interface between …, supra at note 4, at 811, J. LANG, The application …, supra at note 5, at 64 on this issue. 30 But after IMS it‘s usually considered that the list is cumulative. In Microsoft it was considered non-exhaustive and in IMS – exhaustive. For critics on these tests, see e.g. A. STRATAKIS, Comparative analysis …, supra at note 14, at 440, V. KORAH, Antitrust ..., supra at note 3, at 195. 31 See DG Competition Discussion Paper ..., supra at note 11. 32 See B. GALLEGO, Unilateral refusal …, supra at note 3, at 234. 33 Or, said in other words the leverage and essential facility doctrines haven‘t been considered as sufficient criteria and therefore recently the concepts have been developed to include additional abusive conduct. At least in Europe there seem to have attempt for imperative doctrine in the field, although it‘s quite controversial if this is achieved already. Moreover in EU abusive behaviour in cases of refusals for licensing has quite often been found. 116 The Interface between Intellectual Property and Competition Law: Is the Refusal of a Patentee to License Anti-Competitive? The “intent” approach presumes that the refusal is anticompetitive, if the owner‘s purpose is such. Although it‘s implicitly present in the other approaches too, sometimes it‘s explicitly recognized by the case law. Such is the case of Kodak in USA, when the IP argument was used long after the start of the proceedings and recognized as ―mere pretext‖. Moreover, only insignificant part of the refused assets has been protected by IP rights. In EU the approach hasn‘t been explicitly addressed. At the same time, it‘s again rarely used as the only approach. It‘s criticized because it‘s hard and subjective to prove this intent and also because the very intent can be considered insufficient, as far as the results of the behaviour are more important34. The already mentioned lack of objective justification also shows implicitly bad (anticompetitive) intent, being together with this more objective35. All these approaches and the imposition of compulsory licensing in case of anticompetitive behaviour of the patentee are very often criticized because of the probable negative effect on the incentives for innovation36, although the opinions on this also differ. The authorities in the USA usually don‘t impose such a remedy exactly because of this consideration. The opposite approach in EU has sometimes been criticized37 for being short term oriented and not taking into consideration the long term dimensions of the problem, basically if the imposition of compulsory licensing would not deprive the patentee and ones competitors from their incentives to innovate, as far as the lack of certainty in the opportunity to assert ones patent makes the investment too risky. Therefore, probably because of the mentioned critics, in its recent decisions the EU institutions also applied38 another approach together with the other ones. The “incentives balance” approach has the purpose to assess if the decrease in the incentives for the monopolist because of the potential compulsory licensing (incl. the ones for follow-on innovations) would be compensated by the increase of the incentives for follow-on innovations of his competitors, and therefore of the whole industry. Only if this is the case, compulsory licensing should be imposed39. Although this approach shows intention on part of EU to make the evaluation in 34 H. HOVENKAMP, M.D. JANIS and M.A. LEMLEY, Unilateral refusal …, supra at note 3, at 31. 35 Moreover, it transfers the burden of evidence to the accused. Nevertheless, although this test is often mentioned, it‘s not developed in fact, which makes this burden quite heavy. Mentioned in this respect are the efficiency considerations and the lack of ability to serve the own clients. See for example in the case law in R. PITOFSKY, The essential facilities ..., supra at note 18, at 7. 36 See e.g. J. LANG, The application …, supra at note 5, at 66 – 67, V. KORAH, Antitrust …, supra at note 3, at 184, R. GILBERT – C. SHAPIRO, An economic analysis …, supra at note 3, at 12753. 37 See for example V. KORAH, The interface between …, supra at note 4. 38 The first case, in which the Commission explicitly considered this approach, was Microsoft, and later it was also confirmed in its Discussion Paper. See F. LEVEQUE, Innovation, leveraging and essential facilities ..., supra at note 27, at 106 – 110 and B. GALLEGO, Unilateral refusal …, supra at note 3, at 232 for more information. 39 Moreover, this assessment must be made only after refusal, dominance, indispensability, negative effect on competition are recognized. Fanny Koleva 117 _______________________________________________________________________________ cases of refusals more economically oriented and more flexible regarding the long term dimensions of the problem, it‘s still criticized40. Among the critics are that as it is developed, it doesn‘t cover all the possible scenarios, as well as it doesn‘t fit to all the cases. We would also like to add that the approach is quite abstract, as far as it‘s not clear how in fact would the two types of effects on the innovations incentives be measured and therefore balanced41. Moreover, in case of compulsory licensing the incentives of the competitors can also be negatively influenced as concerns to their own basic innovations, which must be balanced with the other mentioned effects too. The same refers to the fact that in case of compulsory licensing the competitors would have incentives to duplicate and free ride and therefore they would be deprived substantially of their follow-on innovation incentives42. Therefore, this approach is also not the one, solving all the problems43. Additional Circumstances, which can Influence the Decision One of the specific issues is if in case that the information is an industry standard, this influences on the evaluation of the refusal as anticompetitive. Often it‘s considered that there‘s such a risk, because the standard in fact gives market power, if held by a company, and therefore it includes risk of anticompetitive conduct44. And that this is even more valid for the information technologies sector45. Some authors even consider the cases of standards as ones of the few, when the duty to supply may be justified46. So, as far as there is a standard and there are no substitutes (because often inventing around is impossible), the asset is 40 See for example B. GALLEGO, Unilateral refusal …, supra at note 3, R. WHISH, Competition Law, supra at note 3. 41 See also on this issue A. STRATAKIS, Comparative analysis …, supra at note 14, at 441 and V. KORAH, Antitrust …, supra at note 3, at 190. 42 The Commission in its Discussion Paper also recognizes this risk and the necessity for its consideration, supra at note 11, at 62. But still it‘s not clear how to do it. 43 Some authors think that if the compulsory licensing is not royalty free, there should be no problem with the innovation incentives (e.g. G. GHIDINI, Intellectual Property and Competition Law ..., supra at note 3, at 107 – 108). Nevertheless we would say that the incentives are not connected only with the opportunity for direct financial return from the asset, but also with the possibility to exclude because of strategic considerations. Moreover, the appropriateness of the compulsory licensing as a remedy is also quite often criticized for cases of anticompetitive refusals for licensing on many grounds, as well as the preparedness of the authorities to determine properly the conditions of the compulsory license (see H. HOVENKAMP, M.D. JANIS and M.A. LEMLEY, Unilateral refusal …, supra at note 3, at 16 and 34, V. KORAH, Antitrust ..., supra at note 3, at 190 and 194, U. S. DEPARTMENT OF JUSTICE AND THE FEDERAL TRADE COMMISSION, Antitrust …, supra at note 3, at 22). Together with this, as far as all the existing approaches and doctrines are highly criticized, some authors propose alternative variants, e.g. impossibility for competition by substitution as criterion or consideration of the refusals for licensing as never being abusive, but imposing compulsory licensing as a remedy in case of other abuse by the dominant company (see B. GALLEGO, Unilateral refusal ..., supra at note 3, at 236 and J. LANG, The application ..., supra at note 5, at 74 respectively). 44 See for example U. S. DEPARTMENT OF JUSTICE AND THE FEDERAL TRADE COMMISSION, Antitrust …, supra at note 3, at 36. 45 See G. GHIDINI, Intellectual Property and Competition Law ..., supra at note 3, at 104 – 106. 46 See V. KORAH, Antitrust …, supra at note 3, at 194, 204. 118 The Interface between Intellectual Property and Competition Law: Is the Refusal of a Patentee to License Anti-Competitive? indispensable or essential and therefore access to it should not be denied. Otherwise it turns into an entry barrier. This logic was more readily followed in EU (e.g. in IMS, as well as in Microsoft case)47. If there‘s a refusal after consent to license for the purposes of the standard in case of standard-setting organizations, it‘s usually really anticompetitive48. A similar logic does exist as regards to pools, which because of the synergy between the partners‘ technologies, can give rise to de facto standards and therefore the refusals for licensing can be anticompetitive49. Another important issue is if the refusal is in fact termination of contractual relations, which would change the analysis regarding its anticompetitive character. The opinions on the issue also differ. In USA the courts sometimes tend to impose duty for licensing in such cases under circumstances, which would not be considered sufficient for new relationships. Still, as regards to IP cases, it‘s considered that although imposition of such obligation happened (Kodak), it has never been based on this circumstance. Moreover, such a termination may be based on efficiency grounds, and as far as the IP related markets are fast changing, this is even truer. Therefore the risk of compulsory licensing could decrease the licensing incentives, which are presumed to have pro-competitive effect, as a whole50. In EU on the other hand, there‘s rebuttable presumption that continuing such relationships is pro-competitive, as far as their very existence shows that they have been efficient at a certain point. Moreover, the customers may usually have made investments because of these relations. Therefore, the refusals are considered anticompetitive, unless objective justification is at hand51. 47 Moreover, it must be mentioned that in these cases there was de facto standard and not even an official one. Together with this, in cases of standards the ―new product‖ test is considered out of sense (see B. GALLEGO, Unilateral refusal ..., supra at note 3, at 229), and therefore abuse is easier to be found. For more information on this, see I. HARACOGLOU, Competition law and patents …, supra at note 14, at 136, V. KORAH, The interface …, supra at note 18, at 437, 442, B. ONG, Anti-competitive refusals …, supra at note 18, at 507. 48 See J. LANG, The application ..., supra at note 5, at 68. Still some authors think that in cases of standard setting organizations, the contract with the organization is what should compel the owner to license, and not the antitrust law (H. HOVENKAMP, M.D. JANIS and M.A. LEMLEY, Unilateral refusal …, supra at note 3, at 24). Other authors (B. ONG, Anti-competitive refusals …, supra at note 18, at 511) consider the refusals for licensing for standards, covered by patents, easier for justification because of the novelty and inventive step, than for copyright cases, where the criteria for protection are lower (and for which the rights are considered invalid by the case law in USA, if they have turned into standards). Nevertheless, we think that the industry standards usually really change the factual environment of the case and, as far as they often include patent issues, this can also influence its outcome. Moreover, the standard setting organizations usually do not address the issue themselves in cases of refusals, and leave its solving to the parties. 49 See G. GHIDINI, Intellectual Property and Competition Law ..., supra at note 3, at 101 and also U. S. DEPARTMENT OF JUSTICE AND THE FEDERAL TRADE COMMISSION, Antitrust …, supra at note 3, at 66 – 67. 50 For more information see H. HOVENKAMP, M.D. JANIS and M.A. LEMLEY, Unilateral refusal …, supra at note 3, at 33 – 35 and U. S. DEPARTMENT OF JUSTICE AND THE FEDERAL TRADE COMMISSION, Antitrust ..., supra at note 3, at 28. 51 For more information see DG Competition Discussion Paper …, supra at note 11, at 62 – 64. Fanny Koleva 119 _______________________________________________________________________________ 4. CASE LAW It should be mentioned in the very beginning that it‘s very limited for IP and even more restricted for patents52. Therefore it‘s difficult to have representative analysis. In the same time, the two systems already showed certain attitudes in the refusals to license cases, which could support the analysis here53. The first EU case, which came to the attention of the Commission, was IGR54. The Commission tended to order compulsory licensing, but IGR agreed to license Salora and therefore formal decision hasn‘t followed. Shortly, collective dominance was recognized in the case together with prevention of competitor from entering the market, meaning that the common approach for refusals to supply has been applied (including also the essential facility implicitly). At the same time it can be argued if it has not been too broadly applied55. A patent pool was also at hand and the information could be considered a standard, as far as the authorities approved it. We believe that these considerations also influenced the decision. A more recent case, including patents among other assets, was Microsoft56. The Commission found that Microsoft was dominant on the market of PC 52 Moreover, the patent cases without presence of other types of IP are even fewer. The cases regarding the so called aftermarkets (spare parts and service markets) will not be considered, as far as on one hand they are specific, and on the other hand they may include different forms of tying or refusals (not necessarily connected with IP). 53 At Community level these issues are addressed either from the Commission, or from the court system (the European court of justices upon request of national courts or as a stage of appeal on Commission‘s decisions together with the Court of first instance). In USA a similar approach is followed by the Federal Trade Commission and the court system. 54 In it German manufacturers of television transmission and receiving equipment, having patents for a system for stereo reception in Germany, grouped them into a pool, IGR. The system was approved by the authorities in the country and TV sets could not function in Germany without this type of receiver. The members of the pool exchanged licenses, but refused to license a Finnish company, Salora (in fact they planned to delay the licensing for non-members after a certain date and for a limited number of TV sets). Moreover, IGR used the patent rights in order to prevent Salora to distribute its own sets on the market of the country. The competitor complained. IGR Stereo Television EC, Comm XIth Competition Policy Report, 1982, 63 ff., para. 94. For more information, see J. LANG, The application ..., supra at note 5, at 56 and I. HARACOGLOU, Competition law and patents …, supra at note 14, at 150. 55 On one hand, collective dominance has been recognized - concept, unknown in USA, except if concerted practices can be recognized (see A. STRATAKIS, Comparative analysis …, supra at note 14, at 439). On the other hand, negative effect on competitor is recognized, although it can be said that effect on the competition itself can be implicitly recognized (on potential competitors, as far as the non-members have been treated equally). This case shows the trend (or al least in the past) in EU to find the behaviour abusive even in cases, for which the US approach could find no abusive character. Moreover, the inclination in EU to use flexible criteria as potential, hypothetical, etc. can also be recognized here – something, criticized by some authors in the sense that if it‘s intended to find abuse, some things can even be invented (see e.g. A. STRATAKIS, Comparative analysis …, supra at note 14, at 441 again). 56 The company refused to share with its competitors its interoperability information (specifications of the interfaces of the PC operating system), protected by copyrights, patents and trade secrets, necessary for them in order to develop their own products (programs for work group server 120 The Interface between Intellectual Property and Competition Law: Is the Refusal of a Patentee to License Anti-Competitive? operating systems with 90% market share, accompanied by entry barriers, presented by network effects57, learning or switching costs, etc. Regarding the abuse, it was found that: Microsoft‘s behavior limited the technical and market development, the company extended (leveraged) its dominance from PC operating systems to the market of server operating systems, which posed serious risks for elimination of competition from the server markets. Essentiality has been implicitly recognized. There was also license withdrawal and industry standard character of the information, which again influenced the decision. In the case the Commission also developed the incentives balance approach. In the end it ordered Microsoft to license the interface information to its competitors on reasonable and nondiscriminatory terms (and to unbundle the media player from Windows)58. Later the Court of first instance confirmed this decision on appeal59. If the EU approach regarding the patents has to be summarized, it can be said that not only exceptional circumstances must be at hand, but even extremely exceptional circumstances, as far as in the two cases one or more of the specific scenarios have been at hand (pool, standard, withdrawal)60. At the same time, it still seems that the bodies in EU tend to recognize anticompetitive behavior in refusals for license cases. Probably for this reason some authors considered this approach hostile61. A very popular and controversial patent case in USA was the one of Intel62. The district court recognized the essentiality argument of the plaintiff and also that operating systems), compatible with Windows. Moreover, Microsoft tied its media player with its operating system for PCs. In the past Microsoft supplied the designers with all the necessary information for the development of compatible operating systems, but this changed with time. As a result of this lack of interoperability, the servers started not to work so well with Windows, which could prevent the competitors from developing their own products. One of the competitors – Sun Microsystems complained, which gave start to the official case. 57 The more consumers buy its products, the more potential customers want to buy them and also the more they want to buy products, compatible with the ones of this supplier. On this issue and the other entry barriers, see V. KORAH, The interface …, supra at note 18, at 439 – 442. 58 It can be said that in this case the Commission applied all the possible approaches and doctrines in its reasoning. We hope that this really shows a trend for narrowing the treatment of the refusals for licensing as abusive, although flexible criteria have also been at hand here, e.g. risk for potential new product development as a result of the technological development prevention. Moreover in two similar cases with Microsoft in USA, the behavior of the company has been found nonanticompetitive (see H. HOVENKAMP, M.D. JANIS and M.A. LEMLEY, Unilateral refusal …, supra at note 3, at 21 and G. MCCURDY, Intellectual property and competition …, supra at note 14, at 476 for more information on those cases). 59 Microsoft v. Commission, T-201/04, (2007) ECR 3601, (2007) 5 CMLR 846. 60 Moreover, we must say that we consider these circumstances specific not themselves, but only in combination with other circumstances as essentiality, leveraging, etc. 61 V. KORAH, The interface between …, supra at note 4. 62 The company provided microprocessor chips (having 100% market share) for use by companies on products (basically computer systems) with different markets. One of these companies was Intergraph, who held patents on chips. Intel also had patents and trade secrets, some of which Fanny Koleva 121 _______________________________________________________________________________ Intel tried to extend its monopoly on the graphic subsystem market (having 10% of it for the moment), where the plaintiff acted. Moreover it stated that as far as Intel had established relationship with Intergraph, and nothing changed, the use of IP as only objective justification was a mere pretext. On the appeal, the Federal Circuit reversed as far as the two companies were not competitors, and therefore although essential for Intergraph activity, the information foreclosure didn‘t lead to prevention, elimination or restriction of competition. The other consideration at hand was if Intel tried to create, maintain or facilitate a monopoly with its behaviour. Again, the court hasn‘t recognized abuse, because the Intergraph patent infringement suit was considered objective justification for Intel‘s refusal and also, because of the lack of competitive relationship between the two companies, the negative effect of Intel‘s conduct falls on Intergraph, but not on the competition itself. The Federal Trade Commission (FTC) started suit against Intel on the same grounds and in the same time, but it also dealt with the previous behavior of the company63. This case was closed with settlement with Intel, under which it could not withhold the information unless there was (real) objective justification64. If this case is compared with the previous ones, it can clearly be recognized that the courts in USA tend to find the refusals for licensing non-anticompetitive than vice versa. In fact under quite similar and even heavier circumstances the court refused to impose compulsory licensing, which has already been commented covered the information, it used to supply to Intergraph (chips for workstations and Windows NT operating systems). Intergraph found out that Intel used the patented information, it owned, in its own chips and tried to sell licenses to some of the Intel‘s clients. Then Intel asked Intergraph for royalty-free cross-license, offering the company patented information, which the last never used in its activity. Therefore Intergraph refused to license under these conditions and started infringement suit. As a response Intel stopped supplying the company with the necessary information and products. It must also be mentioned that Intel had the same behaviour in the past (refused to supply other companies with the necessary technical information if they do not leave the infringement suits and give royalty-free licenses for their own patented information), but the companies always dropped the case, being the weaker parties in the argument. Moreover, in the very case Intel didn‘t tell to Intergraph about a bug in the already supplied equipment and also interfered when the company tried to buy equipment from another provider in order to fix it. Together with this a public campaign on its part against Intergraph followed, the purpose of which was to show that it was no more reliable supplier on its market. Intergraph claimed antitrust behaviour on part of Intel, raising the essentiality argument. Intergraph Corp. v. Intel copr., 195 F. 3d 1346 (Fed. Cir. 1999). See R. STERN, Refusals to license …, supra at note 14, H. HOVENKAMP, M.D. JANIS and M.A. LEMLEY, Unilateral refusal …, supra at note 3, G. MCCURDY, Intellectual property and competition …, supra at note 14, at 476 for more information. 63 Together with this, FTC had the authority to act in order to ―reach incipient antitrust violations‖, meaning that the standard for finding an abuse was lower. Unfairness was an argument, which it could also use, as well as the overall public interest, especially regarding the incentives for innovations and the functioning of the patent system. 64 Moreover, later the infringement suit ended with settlement between the two companies in favour of Intergraph. See E. HAUSMAN, FTC approves Intel settlement, at http://www.crn.com/itchannel/18802020;jsessionid=EV3SXKC3VDZDJQE1GHPCKH4ATMY32JVN and L. FLYNN, TECHNOLOGY; Intergraph And Intel Settle Chip Dispute, in NYT 2004, at http://www.nytimes.com/2004/03/31/business/technology-intergraph-and-intel-settle-chipdispute.html for more information. 122 The Interface between Intellectual Property and Competition Law: Is the Refusal of a Patentee to License Anti-Competitive? as a trend in IP cases. Only FTC found abuse, but its approach was more similar to the one of EU, as far as potential harms could be considered under it, as well as unfair behavior. This again confirms the already stated that EU imposes compulsory licenses readily, especially in comparison with USA (see the comparative table). Considerations, claims and additional circumstances IGR case Microsoft case Intel case Effect on competition X X X Essential facility X X X Leverage X X Incentives for innovation X Technical development prevention X Anticompetitive intent X License withdrawal X X Standard X X X Patent pool X Others65 X Table. Comparative analysis of cases of patent refusals for licensing in EU (IGR and Microsoft) and USA (Intel) 5. CONCLUSION If the patentee‘s refusal for licensing is anticompetitive is obviously a question with a hard answer and many considerations at hand. As far as the patentee is rarely in a dominant position on the market, incl. because there are substitutes usually, the refusal can not be anticompetitive in all the cases, when there‘s a lack of dominance. Moreover, even if there‘s dominance, consistent approach and criteria for assessment of the anticompetitive character of the behaviour are missing and therefore legal certainty too. The standard approaches for refusal for supply cases have been applied and adjusted for IP (and patent) cases, and even new ones have been developed, but all of them are controversial. There are differing opinions on the issue not only between the legal systems, but even within the very same legal systems. And this also refers to the case law. The patent cases analyzed show only that the outcome reflects the basic approach of the legal systems to the refusals. Together with this, although it is broadly recognized that the patents should probably be treated with more attention 65 Similar behavior in the past, information hidden, regarding the already supplied product, anticompetitive (unfair) information campaign. Fanny Koleva 123 _______________________________________________________________________________ because of the incentives for innovations issue, only the approach of USA in practice reflects this point of view. On the other hand, even there the authorities missed to clarify what should be the extremely exceptional circumstances, which could lead to duty for patent licensing. Regarding EU, it must be mentioned, that the attitude to the cases of refusals for licensing develops (narrows), which is positive and we hope that the often called ―hostile‖ approach to IP is more a growth mistake than real issue, because something similar happened in the past in the USA too. But still the lack of consistent approach for answering to the commented question comprises the risk to have patentees penalized because of their rights and not despite them. For this reason we would conclude with the opinion that at least for the moment it‘s necessary factual based case-by-case analysis to be realized for the refusals for patent licensing than mechanical application of tests and that in case of doubts it‘s better to miss an eventual short term solution than to put at risk the long term overall incentives for innovations of the industry. 124 The Interface between Intellectual Property and Competition Law: Is the Refusal of a Patentee to License Anti-Competitive? 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Grumman Systems Support Corp., 36 F.3d 1147 (1st Cir.1994). 126 The Interface between Intellectual Property and Competition Law: Is the Refusal of a Patentee to License Anti-Competitive? Decca (Commission Decision Decca Navigation System, OJ 1989 L 43/27). IGR Stereo Television EC, Comm XIth Competition Policy Report, 1982, 63 ff., para. 94. Image Technical Services, Inc. v. Eastmen Kodak Co., 125 F.3d 1195 (9th Cir. 1997). IMS (C-418/01 [2004] ECR I-05039). In re Independent Service Organizations Antitrust Litigation (CSU v. Xerox), 203 F.3d 1322 (Fed. Cir. 2000). Intergraph Corp. v. Intel copr., 195 F. 3d 1346 (Fed. Cir. 1999). Ladbroke (T-504/93 Tierce Ladbroke [1997] ECR 927). Magill case (C-241 & 242/91P, Radio Telefis Eireann and Independent Television Publications v. Commission [1995] ECR I-743). Microsoft (COMP/C-3/37.792 [2004]). Microsoft v. Commission, T-201/04, (2007) ECR 3601, (2007) 5 CMLR 846. United States v. Grinnell Corp., 384 U.S. 563 (1966). Weiss v. York Hosp., 745 F.2d 786 (3d Cir. 1984). Others E. HAUSMAN, FTC approves Intel settlement, at http://www.crn.com/itchannel/18802020;jsessionid=EV3SXKC3VDZDJQE1GHPCKH4ATMY32JVN R. PITOFSKY, The essential facilities doctrine under United States antitrust law, submitted to the European Commission in support National Data Corporation in the IMS case. P. NEBBIA, EU competition law (lectures for the LLM in intellectual property law, 2009/2010). Wikipedia, http://en.wikipedia.org/wiki/Statute_of_Monopolies_1623 Wikipedia, http://en.wikipedia.org/wiki/Sherman_Antitrust_Act All websites cited were accessed on February 26, 2010. PATENT OWNERSHIP IN VIEW OF TECHNOLOGY TRANSFER IN GOVERNMENT-SPONSORED RESEARCH by Dragan Ćorić1 ABSTRACT This article analyzes the issue of patent ownership which arises from government sponsored research. In addition, it describes and compares two ownership systems: professor‘s privilege and institutional ownership. 1. INTRODUCTION The topic of technology transfer2 and patents that arise from the publicly funded research organizations (PFRO) is the object of discussion and interest of various stakeholders: universities3 (and other PFRO), researchers and students, industry, policy makers, and general public. In many cases these stakeholders have different position4 on the main question: how the knowledge produced at universities can be effectively transferred and commercialized? This debate became especially active in the last 30 years. Before that period even the most prominent universities considered patenting contrary to their role as public servants, and it was considered ―not deemed within the sphere of the university‘s scholarly objectives‖5. The changes came from the fact that two traditional roles of the university, education and research, are today accompanied by the third role, interaction with industry and commercialization. The creation of the invention is directly related to the intellectual property (IP), and whenever there is a property in 1 Author is researcher at Swiss Federal Institute of Technology in Lausanne Switzerland (dragan.coric@epfl.ch) 2 Technology transfer is the process of sharing of skills, knowledge, technologies, methods of manufacturing, samples of manufacturing and facilities among governments and other institutions to ensure that scientific and technological developments are accessible to a wider range of users who can then further develop and exploit the technology into new products, processes, applications, materials or services. Definition from www.wikipedia.org. 3 This work is focused on the universities as the main representative of publicly funded research organizations (PFRO). Some national legislation may treat universities differently from the rest of PFROs. 4 The extensive analysis of the subject can be found in a following works: A.L. MONOTTI, S. RICKETSON, Universities and Intellectual Property. Ownership and Exploitation, Oxford University Press, Oxford, UK, 2003; F. MONTOBBIO, Intellectual Property Rights and Knowledge Transfer from Public Research to Industry in US and Europe: which Lessons for Innovation Systems in Developing Countries? in The Economics of Intellectual Property WIPO, 2009; R. EISENBERG, Public Research and Private Development: Patents and Technology Transfer in Government Sponsored Research, in Virginia Law Review, 1996, 1663 ff. 5 S.STERCKX, Patenting and Licensing of University Research: Promoting Innovation or Undermining Academic Values?, in Science and Engineering Ethics 2009, 1ff., at 2 128 Patent Ownership in View of Technology Transfer in Government-Sponsored Research the stake there is automatically the question of the ownership. The early discussion6 was focused on the question who should be the owner of the intellectual property (on the results of the PFROs research): funding agency (government) or PFROs and researchers. Many scholars argued that giving this right to PFROs will impose double taxation7 on the public. However, currently accepted general opinion is that ownership should not be assigned to government, mostly in the name of efficiency, since the state bureaucracy had proven to be inefficient in managing technology transfer. From the legal point of view, the subject of university IP ownership is related to the broader issue of employees‘ inventions, which is regulated by national laws or acts. The main question that arises is whether employee or employer is the owner of the invention, and thus entitled to apply for the patent. This question, which can have significant social and economical impact, is regarded differently depending on the country, legal system, and type of the IP involved. Main regulations8 discuss issues such as the notification (of the employer) and claiming process, and determination of a fair remuneration. It is clear that these regulations can have a dramatic impact on the employees‘ incentives and productivity. This complexity is further reflected in the fact that international conventions such as TRIPs9 Agreement, the Paris Convention10 and Patent Cooperation Treaty (PCT)11 do not include any provisions on employees‘ inventions. Only European Patent Convention (EPC) in the Article 60(1)12 gives provision regarding conflict in the case of the different national legislations. In the public sector, it is mostly accepted that inventions performed during the employment belong to the employer (with possible employee compensation). However, in academic sector the issue of 6 Elaborated discussion can be found for example in R. EISENBERG, Public Research and Private Development: Patents and Technology Transfer in Government Sponsored Research, in Virginia Law Review 1996, 1663 ff. 7 Double taxation refers to funding of the research by public money, and paying higher price because of the patent protection. 8 Examples from German Employees‘law (Arbeitnehmererfindungsgesetz or AEG) can be found in M. DECKER, J. MATTHES, Employee Inventions in Germany, in Intellectual Asset Management 2005, 63 ff. 9 Agreement on Trade-Related Aspects of Intellectual Property Rights, Apr. 15, 1994, Marrakesh Agreement Establishing the World Trade Organization, Annex 1C, Legal Instruments-Results of the Uruguaz Round, 33 I.L.M. 1125, 1197 (1994) 10 Paris Convention for the Protection of Industrial Property (as modified in 1967), mentioned in the WTO TRIPS Agreement Article 2. 11 Patent Cooperation Treaty, done at Washington on June19, 1970, amended on September 28, 1979, modified on February 3, 1984, 2001, as in force from April 1,2002, adopted by 142 countries. 12 EPC Article 60(1) in the second sentence states‖ If the inventor is an employee the right to the European patent shall be determined in accordance with the law of the State in which the employee is mainly employed; if the State in which the employee is mainly employed cannot be determined, the law to be applied shall be that of the State in which the employer has his place of business to which the employee is attached‖. Dragan Ćorić 129 _______________________________________________________________________________ invention property is treated differently13 from the general principles of employee invention laws. Traditionally, Germany14 and Nordic countries15 preferred assigning rights to the inventors i.e. employees (regardless of funding source) based on academic freedom, and even human rights16 (right to publish) arguments, while common law countries17 such as US, UK, Canada and Australia gave preference to the university (employer) ownership. This paper aims to analyze and compare two different types of allocation of the ownership on the results of university research through patents18: Institutional (university) ownership, according to which the invention is attributed to the university where the research is performed, and professor‟s privilege, which confers the exclusive right on the invention to the professor19 who performed the research. 2. DEVELOPMENT OF TECHNOLOGY TRANSFER AND PATENTING FROM UNIVERSITIES To better understand the issue of the technology transfer and patenting from PFRO it is necessary to look at its historical and geographical evolution. United States are considered as a pioneer in this aspect: the number of patents registered by US universities at USPTO has increased from 436 in 1981 to more than 3500 patents in 200120. Usually, the increase in the patenting in US is related to the Bayh-Dole Act21 (BDA) which encouraged small businesses and non-profitable organization to patent the results of government sponsored research by allowing them to keep patent ownership. It is unquestionable that BDA had big impact on 13 The Norwegian Employee Invention Act before changes in 2005 stated that ―For the purpose of this Act teachers and scientific staff at universities and colleges shall not, in that capacity be deemed to be employees‖. 14 H.GODDAR, Compliance with the German Employees‟ Invention Law in the Handling of Inventions Developed by Universities, in Proceedings of the 1999 Summit Conference on Intellectual Property, University of Washington, Seattle, 1999 15 W.PRINZ, M.J. ADELMANN, R. BRAUNEIS, J.DREXL, R.NACK, Patents and Technological Progress in a Globalized World, Chapter 5., Springer-Verlag Berlin, 2009, 329 ff. 16 In Finland, Article 16 (3) of the constitution states that ―The freedom of science, the arts and higher education is guaranteed‖, while Article 13 in European Charter of Fundamental Right states: ―The art and scientific research shall be free of constraints. Academic freedom shall be respected‖. 17 A.F. CHRISTIE, S.D‘ALOSIO, K.L. GAITA, M.J. HOWLETT, Analysis of the Legal Framework for Patent Ownership in Publicly Funded Research Institutions, Commonwealth Department of Education Science and Training, Canberra, Austarlia, 2003 18 The report focuses on the patents, considering they are the most significant type of IP to be transferred from universities. Other important IP assets include copyright (mostly software). 19 In broader sense, the privilege extends to collaborators and student. In some countris it is also known as teacher‘s privilege. 20 The data on US patenting and licensing from US universities can be found on the www.autm.net/surveys, official web page of the Association of University Technology Managers (AUTM). 21 Act of Dec.12, 1980, Pub. L. No. 96-517, 94 Stat. 3015-3028 (codified as ammended at 35 U.S.C. §§ 200-211, 301-307 (1994) 130 Patent Ownership in View of Technology Transfer in Government-Sponsored Research university patenting, but some scholars22 argue that patenting increase in US is also related to the culture and traditional close relation between universities and industry in this country, and that such ―patent boom‖ would have occurred even without BDA. However, considering the role played by the specific characteristics of the US system, it is not possible to assume that in the other countries the simple introduction itself of similar legislation would produce the same increase in patent outputs. The BDA offered the universities the choice of using exclusive or nonexclusive licenses; it arises therefore the risk of impairing or delaying the knowledge transfer. The surveys23 show that today most of the US university patent licenses are exclusive, but, while this policy could provide the universities with more revenues in the short time, in the longer run it could provoke negative consequences to them. European Union (EU) countries witnessed important increase in the number of university patents as well. It is interesting to note that, contrary to US experience, most of the patents on EU university research results are owned by the private companies. In the US commercial companies own only 24 per cent of US academic patents, while in Europe this percentage is from 60 per cent (France) up to 81 per cent (Sweden)24. It is still questionable whether high percentage of patents owned by private companies can be considered as the sign of an efficient technology transfer system. It is common understanding that Europe is less successful in converting its academic results into economic output. The European Commission (EC) expressed concern about the fact that European research institutions are good in producing academic output, but they are not able to transfer those outputs to the industry (this is known as ―European paradox‖). Such a problem could be related to the inefficiency of European Technology Transfer Offices (TTO) as well. Recent studies25 show that this gap (between EU and US TTO generated revenues) is narrowing. 4. OWNERSHIP AND ALLOCATION OF IP RIGHTS IN UNIVERSITY ENVIRONMENT The ownership (that is in some cases separated from the creator of invention) of the IP rights created in the university depends on the various factors such as: IP creators and their legal relationship among themselves and with funding source, and legal frameworks (national laws, university IP policies, and contractual 22 D.MOWERY, B.N. SAMPAT, The Bayh-Dole Act of 1980 and University Technology Transfer: A Model for Other OECD Governments?, in Journal of Technology Transfer 2005, 124 ff. 23 M. LAMLEY, Are Universities Patent Trolls?, in Stanford Public Law Working Paper No. 980776. 2007 24 J. THURSBY, M. THURSBY, Knowledge Creation and Diffusion of Public Science with Intellectual Property Rights, in Intellectual Property Rights and Technical Changes, K. Maskus (Ed.), Elsevier Ltd. 2007 25 A. CONTI, P. GAULE, D. FORAY, Academic Licensing: a European Study, Working paper 2007-001 CEMI, 2007 Dragan Ćorić 131 _______________________________________________________________________________ agreements). As a result, the ownership can be allocated to the inventors (researchers and students), the university, industrial partners, governmental or other funding agency. The first step in ownership allocation is the identification of the inventors and their legal status and relationship with university (employees and non-employees). For example, graduate students, who are deeply involved in the research, are not often university employees. Inventor identification is important, firstly, to help allocate the ownership, and secondly, to be aware of the person that can claim compensation once the patent is exploited. The most common situation in which university can claim rights on a work occurs when it has been created as the result of the performance of employment duties. Other typical circumstances which allow the university to claim the ownership of the exclusive rights are those in which the university.26 - provides the funding or obtains funding from other sources (sponsored research) - makes available equipment, facilities and other infrastructure - provides pre-existing university IP available. An important doctrine that strongly affects the allocation of IP rights in academic environment is the so called ―employed to invent‖. This doctrine is related to the controversial issue of distinguishing between invention and research. In the case of United States v Dubliner Condenser Corporation27 the court distinguished between research and invention claiming that the two are not equivalent; as a consequence the person who was hired to perform research is not automatically employed to invent. Most of European legislations28 distinguish between service inventions (invention made under the duties of employment contract), free inventions (made without connection with duties or resources provided by employer), and dependent inventions (made outside the contract but using the employer‘s resources). The fear from the many remaining legal uncertainties resulted in increase of the contractual agreements between universities and inventors, but also in the creation of detailed university IP policies29. Every university, unless restricted with strict legal limitations (such as Bayh-Dole Act), creates its own policies, which resulted in low level of the uniformity even among similar institutions. The interesting example is Stanford University policy30where, even though the university own IP from the research, inventors have right to decide to put inventions in the public domain. The interrelation of various legislation and policies resulted in many different 26 A.L. MONOTTI, S.RICKETSON, Universities and Intellectual Property. Ownership and Exploitation, Oxford University Press, Oxford, 2003 at 302 27 United States v. Dubliner Condenser Corporation, 289 U.S. 178, amended, 289 U.S. 706 (1993) 28 L. MACDONALD, G. CAPART, Community Research. Management of Intellectual Property in Publicly-Funded Research Organizations: Towards European Guidelines, Commission of European Communities, Brussels, 2004. at 11 29 A.L. MONOTTI, S. RICKETSON, Universities and Intellectual Property. Ownership and Exploitation, supra at note 25, at 298 30 Stanford University IP policy available at http://rph.stanford.edu/5-1.html 132 Patent Ownership in View of Technology Transfer in Government-Sponsored Research ownership systems which could be classified in two31 dominant models of university IP ownership systems: professor‘s privilege and institutional ownership. 5. PROFESSOR’S PRIVILEGE The concept of ―Professor‘s privilege‖ represents the idea that the results of the research performed at the university or other PFRO are retained by the person (generally a professor) who performed the research and not by the institution where such research was performed. It aims to motivate academics to get more actively involved in the commercialization of academic output. In Europe the general trend is toward abolishing the professor‘s privilege32: Denmark abolished it in 2000, followed by Germany in 2002, Norway in 2003, and Finland in 2007. The main reasons33 for this ―abolitionist movement‖ can be found in the increased recognition that principle of academic freedom is not valid reason to grant privileges and to deprive universities from the IP rights. Another reason34 for this property shift is the desire of policy makers to create similar conditions to US where university retains all IP rights. Italy was the only country that went in opposite direction adopting the privilege regime in 2001. It seems that Italy adopted professor‘s privilege for two main reasons35: because it could encourage the patenting of existing research, and because it could help to solve the problem of bureaucracy in university administrations, which often made impossible the exploitation of many academic inventions. However, these changes introduced concern36 among Italian universities and companies since most of the university inventions could be then owned by private sector. For the same reason the adoption of professor‘s privilege system in developing countries might not be the best idea because public institutions could lose the control over strategic fields such as agriculture and health. Currently, in EU, only Italy and Sweden have professor‘s privilege 31 In EU the ownership systems are as follows: Professor‘s Privilege: Sweden, Italy Institutional Ownership: Austria, Belgium, Cyprus, Czech Republic, Denmark, Estonia, Finland, France, Germany, Greece, Ireland, Latvia, Lithuania, Luxemburg, Malta, Netherlands, Portugal, Slovak Republic, Spain, UK 32 Turning Science into Business: Patenting and Licensing at Public Research Organizations, OECD, Paris, 2003 33 W.PRINZ, M.J. ADELMANN, R. BRAUNEIS, J.DREXL, R.NACK, Parents and Technological Progress in a Globalized World, supra at note 14, at 339 34 F. LISSONI, P.LOTZ, J. SCHOVBSO, A. TRECCANI, Academic Patenting and the Professor‟s Privilege: Evidence on Denmark from the KEINS database, in Science and Public Policy 2009, 595 ff. at 596 35 Monitoring and Analysis of Technology Transfer and Intellectual Property Regimes and Their Use, Draft report to the commission, Mayson Hayes and Curran, 2008, at 17 36 F. MONTOBBIO, Intellectual Property Rights and Knowledge Transfer from Public Research to Industry in US and Europe: which Lessons for Innovation Systems in Developing Countries? in The Economics of Intellectual Property WIPO 2009, 180 ff., at 200 Dragan Ćorić 133 _______________________________________________________________________________ implemented. Outside Europe, the professor privilege existed in Japan until 2004. Traditionally, the academic research in Japan was strongly supported by private sector and professor‘s privilege system was, in a certain manner, necessary to ensure that all inventions with commercial potential could be attributed to sponsors (i.e. private companies). This kind of technology transfer process was tolerated by policy makers and university administrations. The system of professor privilege has never been introduced in US. Typical characteristics of professor‘s privilege (as implemented in Italy and Sweden) are37: - - - Scope to whom and to which IP privilege is applied: in Italy this scope is wider (compared to Sweden). For example, it applies not only to all employees of PFRO but also to all consultants and to third parties involved in research, while in Sweden it applies only to professors (teachers), graduate students and doctoral candidates. In Sweden professor‘s privilege applies to copyright as well, while in Italy it does not. Compensation: In Italy PFRO is entitled to the part of the profits derived from the exploitation of the invention, while in Sweden PFRO can not profit from it. Patent protection: In Italy, there is strict obligation on the researchers to patent their invention while in Sweden such a provision does not exist. Derogations: Italian regulation states that if the researcher does not industrially exploit the invention within 5 years then PFRO is entitled to exercise a non exclusive right on the invention. Furthermore, if the invention came from the privately financed research, then PFRO owns the invention. There are not equivalent provisions under Swedish law. The introduction or abolition of professor‘s privilege can have important consequences on the university patenting and university-industry partnership, and disrupt the usual way of collaboration. The analysis of biotechnological research in Denmark38 (which is good example because Denmark was first to abolish the privilege 10 years ago, and can provide earliest effects on the abolition), after the abolition of professor‘s privilege system in 2000, showed that it has been a decline in collaboration of Danish scientists and firms; the latter started to negotiate more with the scientists which benefit from the privilege (like those in Sweden). The same study showed that introduction of the intermediate (TT Office) can significantly delay decisions on university intellectual property. Another Danish 37 Monitoring and Analysis of Technology Transfer and Intellectual Property regimes and Their Use, supra at note 34, at 15. 38 F.VALENTIN, R.L. JENSEN, Effects on Academia-Industry Collaboration of Extending University Property Rights, in Journal of Technology Transfer 2007, 251 ff., at 271. 134 Patent Ownership in View of Technology Transfer in Government-Sponsored Research study39 showed that considerable amount of patenting activities moved from the professors to the universities. Ownership of invention is a strong financial incentive for the researchers, since salary structures are rigid and bonuses are very rare in the academic environment. Another function is to reward the individual effort and to motivate the researcher to take an active role in the commercialization of their inventions. On the other side, the professor‘s privilege system has been criticized for the following reasons40: - - - Lack of resources to commercialize: the academic researchers usually do not have skills, expertise, and financial resources, or even interest to commercialize their research output. No benefit for the universities: attribution of all IP rights to the researchers does not bring any benefit to the department where research was performed. The benefits and knowledge are shared by a small number of people instead of wider scientific community and public. Researcher Retention: PFRO are not likely to encourage any link between researchers and industry out of fear that researchers might move to industry rewards. 6. INSTITUTIONAL OWNERSHIP Institutional ownership of university related research means that the IP rights on the results of academic research belong to the institution where the research is performed. There is a global trend41 to move to this type of system. In general, institutional ownership system can be divided into two classes. First regime is automatic ownership42, where the first owner of the IP rights is the employer (university). In this regime usually there are no reversion rights to the employee. The right for compensation depends on the national legislation43 and university IP policy. Second type of the institutional ownership is pre-emption rights44, where the first owner is employee (researcher), but employer (university) is entitled to claim the invention (usually within a certain term). In the case the university does 39 F. LISSONI, P.LOTZ, J. SCHOVBSO, A. TRECCANI, Academic patenting and the professor‘s privilege: evidence on Denmark from the KEINS database, supra at note 33. 40 Monitoring and Analysis of Technology Transfer and Intellectual Property regimes and Their Use, supra at note 34, at 41. 41 Italy is rare example of opposite trend of moving from institutional ownership to professor‘s privilege 42 The examples of countries with automatic ownership are : Latvia, France, U.K. Estonia and Ireland 43 The comparison of employees‘ remuneration in Germany, Sweden, Denmark, UK, France. Japan, Switzerland and US can be found in D. HARHOFF, K. HOISL, Institutionalized Incentives for Ingenuity-Patent Value and the German Employees' Inventions Act, in Research Policy 2007, 1143 ff., at 1146 44 The examples of countries with pre-emption rights are: Austria, Finland, Germany, Lithuania Dragan Ćorić 135 _______________________________________________________________________________ not claim the invention; the rights are reverting to the inventor. The reversion of the rights (in the case that PFRO does not claim rights or has no intention to commercialize the invention) to employee depends highly on national legislature, and the time usually ranges from 3 to 6 months. In addition, the university is usually obliged to pay certain remuneration to the inventor as a compensation for transferring the rights. There are several ways of compensation, depending on the national law45: - countries where no right of remuneration is provided with by the law46; countries where right to remuneration exists and is clearly defined47; countries where a right to remuneration exists and is not clearly defined48; countries where additional right to remuneration exists when the employer owns IPR49 Institutional ownership reduces freedom and rights of the researcher, but at the same time the advocates of Institutional ownership system claim several positive aspects: - - - - Facilitation of technology transfer and competition: The institutional ownership incentivizes PFROs to develop technology transfer skills and capabilities. The US is a good example of a country where this approach has created a competitive environment. Lack of incentives to develop infrastructure: without automatic ownership system PFROs would have no motivation to develop even basic infrastructure for commercialization and patenting. Technology transfer simplification: the adoption of the institutional ownership allows creation of technology transfer offices, which can centralize and simplify the procedures. In this way the researchers can focus on what they do best – make inventions and breakthrough research. Technology transfer awareness: the presence of the TT office in the university environment will likely increase understanding of IP rights and motivate the researches to commercialize. It is important to emphasize that pre-emption rights regime, contrary to automatic ownership, can negatively affect the university IP portfolio since in many cases when the invention is not claimed by the university it is reclaimed by the inventor, and eventually can not be reutilized by the academic or the industrial users. 45 Monitoring and Analysis of Technology Transfer and Intellectual Property regimes and Their Use, supra at note 34, at 23 46 EU examples : Ireland, Lithuania, Luxemburg, Cyprus 47 EU example : Slovenia 48 EU examples: Netherlands, Czech Republic and Malta 49 EU example : France 136 Patent Ownership in View of Technology Transfer in Government-Sponsored Research 7. CONCLUSIONS Even though in theory there are only few distinctive university ownership systems, in the reality there are many layers of hard law (such as employees‘ invention law), soft law (recommendations and directives), and university IP policies. These differences indicate that there is not general agreement yet on what should be considered the best system, and this circumstance negatively affects the harmonization and cross-border research. There is a general trend toward to institutional ownership since this system of allocation of IP rights seems to be the most suitable way to transfer technology for the interests of the majority of stakeholders. Research institution seems to be the best initial owner of the rights. Even though professor‘s privilege can be a good incentive for researchers, there is no evidence that it is an efficient technology transfer system. The effect of recent abolishing of the professor‘s privilege in some European countries is still to be fully understood in the following years. Regardless of the type of the ownership, the fruitful commercialization is only possible when the creators of the inventions are actively involved and motivated. For this reason the policy makers have to try to create legal framework that will encourage effective collaboration between researches, universities, and industry, and not create the tension among them. Dragan Ćorić 137 _______________________________________________________________________________ BIBLIOGRAPHY: P. AZOULAY, W.W. DING, T.E. STUART, The Impact of Academic Patenting on Public Research Output, NBER Working paper N.11917, 2006 P. AZOULAY, W.W. DING, T.E. STUART, The Determinants of Faculty Patenting Behavior: Demographics or Opportunities? in Journal of Economic Behavior and Organization 2007, 599 ff. E. BACCHIOCCHI, F. MONTOBBIO, Knowledge Diffusion from University and Public Research. A Comparison between US, Japan and Europe using Patent Citations, in Journal of Technology Transfer 2009, 169 ff. M.CALDERINI, C. 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H.GODDAR, Compliance with the German Employees‟ Invention Law in the Handling of Inventions Developed by Universities, in Proceedings of the 1999 Summit Conference on Intellectual Property, University of Washington, Seattle, 1999 K.R. FABRIZIO, University Patenting and the Pace of Industrial Innovation, in Industrial and Corporate Change, Vol. 16, 2007, 505 ff. D. HARHOFF, K. HOISL, Institutionalized Incentives for Ingenuity-Patent Value and the German Employees' Inventions Act, in Research Policy 2007, 1143 ff. K. HARVEY, Capturing Intellectual Property Rights for the UK: A Critique of University Policies, in A. WEBSTER-K. PACKER, Innovation and the Intellectual Property System, Kluwer, Deventer, 1996, 79 ff. R. KNELLER, University-Industry Cooperation and Technology Transfer in Japan Compared with the US: Another Reason for Japan‟s Economic Malaise? in 24 University of Pennsylvania Journal of Int. Ec. Law, 2003, 329 ff. S. LACH, M. SCHANKERMAN, Incentives and Innovation in Universities, Rand Journal of Economics 2008, 403 ff. M. LAMLEY, Are Universities Patent Trolls? Stanford Public Law Working Paper No. 980776. 2007 F. LISSONI, P.LOTZ, J. SCHOVSBO, A. TRECCANI, Academic patenting and the professor's privilege: evidence on Denmark from the KEINS database, in Science and Public Policy, 2009, 595 ff. L. MACDONALD, G. CAPART, European Commission. Community research, Management of intellectual property in publicly-funded research organizations: Towards European Guidelines, Commission of European Communities, Brussels, 2004 Dragan Ćorić 139 _______________________________________________________________________________ Monitoring and Analysis of Technology Transfer and Intellectual Property regimes and Their Use, Draft Report to the Commission, Mayson Hayes and Curran, 2008 F. MONTOBBIO, Intellectual Property Rights and Knowledge Transfer from Public Research to Industry in US and Europe: which Lessons for Innovation Systems in Developing Countries? in The Economics of Intellectual Property WIPO, 2009 A.L. MONOTTI, S. RICKETSON, Universities and Intellectual Property. Ownership and Exploitation, Oxford University Press, Oxford, UK, 2003 D.MOWERY, B.N. SAMPAT, The Bayh-Dole Act of 1980 and University Technology Transfer: A Model for Other OECD Governments? in Journal of Technology Transfer, 2005, 115 ff. F. MURRAY, S. STERN, Do Formal Intellectual Property Rights Hinder the Free Flow of Scientific Knowledge? An empirical Test of the Anti-Commons Hypothesis, in Journal of Economic Behaviour and Organization 2007, 648 ff. R.R. NELSON, Observation on the Post-Bayh-Dole Rise in Patenting at American Universities, in Journal of Technology Transfer 2001, 13 ff. W.PRINZ, M.J. ADELMANN, R. BRAUNEIS, J.DREXL, R.NACK, Parents and Technological Progress in a Globalized World, Chapter 5, SpringerVerlag Berlin, 2009, 329 ff. OECD, Turning Science into Business: Patenting and Licensing at Public Research Organizations, OECD, Paris, 2003 S.STERCKX, Patenting and Licensing of University Research: Promoting Innovation or Undermining Academic Values? In Science and Engineering Ethics 2009 J. THURSBY, M. THURSBY, Knowledge Creation and Diffusion of Public Science with Intellectual Property Rights, in Intellectual Property Rights and Technical Changes, K. Maskus (Ed.), Elsevier Ltd. 2007 F.VALENTIN, R.L. JENSEN, Effects on Academia-Industry Collaboration of Extending University Property Rights, in Journal of Technology Transfer 2007, 251 ff EXTRATERRITORIAL TECHNOLOGY IN A TERRITORIAL REGIME: CHALLENGES AFTER CARDIAC PACEMAKERS V. ST. JUDE MEDICAL by Emily J. Zelenock TABLE OF CONTENTS INTRODUCTION 1. DIRECT INFRINGEMENT UNDER 35 U.S.C.§ 271(A) a. The Deepsouth Loophole: Exported Components of a Patented Product b. Expanding the Extraterritorial Reach of U.S. Patent Law by Closing the Deepsouth Loophole: Enactment of 35 U.S.C. § 271(f) 2. TRACING THE EVOLUTION OF § 271(F) CASE LAW FROM DEEPSOUTH TO CARDIAC PACEMAKERS a. The Clear-Cut Cases: Patents for Machines with Mechanical Parts b. Where § 271(a) and § 271(f) Collide: Making Sense of the Blackberry Case c. The Supreme Court Weighs In A. The Conflict: Cases Involving ―Components‖ of Methods i. ii. Union Carbide: Extension of § 271(f) to Methods Cardiac Pacemakers: Reversing Union Carbide, Narrowing the Extraterritorial Reach of U.S. Patent Law, and Creating a New Loophole 3. CLOSING THE CARDIAC PACEMAKERS LOOPHOLE B. Inadequacy of Domestic Solutions C. Proposed International Treaty Addressing Transnational Method Patents CONCLUSION 142 Extraterritorial Technology in a Territorial Regime: Challenges after Cardiac Pacemakers v. St. Jude Medical ________________________________________________________________________________ BIBLIOGRAPHY Appendix (i-iii) Emily J. Zelenock 143 ___________________________________________________________________ INTRODUCTION The territoriality of intellectual property rights (―IPRs‖) has long posed significant obstacles for IPR holders, but never more so than now.1 The Internet has made the global dissemination of information instantaneous, digitization has made it possible to cheaply reproduce and distribute perfect copies of copyrighted and patented material, and many of the most cutting-edge innovations are practiced without regard to geographical borders.2 The increasingly interdependent and ―borderless‖ world is reflected not only by the nature of technology, but also by its ownership. Whereas the territorial system of IPR was predicated on a world where inventors sought IPR protection in their own country and then exploited their rights there, the demographics of technology ownership are far different today. Indeed, last year, a full 50% of U.S. patents granted were of foreign origin, as compared to 18% in 1963 (when the United States Patent & Trademark Office began tracking the data).3 It is no longer the case that one may presume that a ―U.S. patent‖ has U.S. ownership. Therefore, developments in U.S. law regarding the territoriality of IPR have international significance, impacting not only anyone who owns U.S. IPR, but also anyone who seeks to avoid infringement of such.4 Similarly, developments in other countries with robust IP systems can have a far-reaching, transnational impact. In the patent context, the territoriality requirement generally means that a U.S. patent can only be infringed by conduct taking place ―within‖ the United States.5 Thus, as a general rule, an infringing party can escape liability for 1 While the territoriality of IPR is generally accepted and often cited principle, its basis in international law is not as easy to define. As Professors Cottier, Abbott and Gurry point out, the principle of independence embodied in the Paris and Berne Conventions appear to provide some basis, but yet territoriality is not discussed in either convention. Between those conventions and general jurisdictional principles that have evolved in the area of public international law, there remain ―a substantial number of questions regarding the territorial scope of intellectual property protection.‖ See F. ABBOTT, T. COTTIER AND F. GURRY, INTERNATIONAL INTELLECTUAL PROPERTY IN AN INTEGRATED WORLD ECONOMY, Aspen Publishers, New York, 2007, at p. 75-76. See also M. LEMLEY ET AL., Divided Infringement Claims, in 33 AIPLA Q.J. 255-56 (2005). 2 Dan L. Burk, Patents in Cyberspace: Territoriality and Infringement on Global Computer Networks, in 68 TUL. L. REV. 1, 1993, p. 38-39. (―The dissolution of geographic, political, and temporal barriers made possible by global computer networks may pose a new challenge to the operation of U.S. patent law – a challenge not yet fully realized and likely impossible for the framers of the present patent code to anticipate, but a challenge whose parameters can already be seen.‖). See also T.R. HOLBROOK, Extraterritoriality in U.S. Patent Law, 49 WM. AND MARY L. REV. 6 (2008). 3 See United States Patent & Trademark Office Patent Statistics Report, available at: http://www.uspto.gov/web/offices/ac/ido/oeip/taf/reports.htm#pat_trends. 4 For an overview of the evolution of the territoriality principle in U.S. patent law, see C.A. NARD, THE LAW OF PATENTS, Wolters Kluwer, New York, 2008, at 538-71. 5 35 U.S.C. § 271(a); see, e.g., Pellegrini v. Analog Devices, Inc., 375 F.3d 1113, 1117 (Fed. Cir. July 8, 2004) (―[T]he U.S. patent laws ‗do not, and were not intended to, operate beyond the limits of the United States….‖) (citing Brown v. Duchesne, 60 U.S. 183 (1857)); Rotec Indus., Inc. v. Mitsubishi Corp., 215 F.3d 1246, 1251 (Fed. Cir. June 13, 2000) (―extraterritorial activities are irrelevant to the case before us, because ‗the right conferred by a patent under our law is confined to 144 Extraterritorial Technology in a Territorial Regime: Challenges after Cardiac Pacemakers v. St. Jude Medical ________________________________________________________________________________ infringement of a U.S. patent by shifting the infringing conduct outside of the United States. Yet every ―general rule‖ gives rise to exceptions, which are often more important than the rule in delineating the rights at issue. Carved out through statute and case law, the exceptions to the territoriality rule are far from clear and present particular difficulty for practitioners advising American and non-American owners of U.S. patents on the scope of their patent rights and accused infringers on the legality of their conduct. This article discusses recent developments in the law governing the territorial reach of U.S. patents and suggests that international collaboration may be necessary to achieve protection of inherently transnational technology. Part I of this article addresses direct infringement under 35 U.S.C. § 271(a), the ―loophole‖ created by the U.S. Supreme Court‘s ruling in Deepsouth Packing Co. v. Laitram Corp.6, and closure of that loophole via Congressional enactment of 35 U.S.C. § 271(f). Part II traces the evolution of case law interpreting § 271(f), including the Federal Circuit‘s7 recent ruling in Cardiac Pacemakers, Inc. v. St. Jude Medical Center, Inc.8, which held that § 271(f) does not apply to transnational method patents and thus created a new loophole in the law. Part III considers various domestic options for closing the Cardiac Pacemakers loophole, but ultimately concludes that an international approach will be the most effective long-term solution. 1. DIRECT INFRINGEMENT UNDER 35 U.S.C.§ 271(A) The primary statutory provision addressing direct infringement of a U.S. patent is found in 35 U.S.C. § 271(a), which provides: ―whoever without authority makes, uses, offers to sell, or sells any patented invention, within the United States, or imports into the United States any patented invention during the term of the patent therefore, infringes the patent.‖9 While ―within the United States ―is on its face simple and clear language, the case law reveals that determining the metes and bounds of the territoriality requirement can be a very challenging task indeed. the United States and its territories….‖); Dowagiac Mfg. Co. v. Minn. Moline Plow Co., 235 U.S. 641, 650 (1915) (same). 6 Deepsouth Packing Co. v. Laitram Corp., 406 U.S. 518 (May 30, 1972). 7 The Federal Circuit refers to the U.S. Court of Appeals for the Federal Circuit, which is the U.S. federal appellate court that handles all patent-related appeals from U.S. federal district courts. 8 Cardiac Pacemakers, Inc. v. St. Jude Medical, Inc., 576 F.3d 1348 (Fed. Cir. Aug. 19, 2009). 9 35 U.S.C. § 271(a) (emphasis added). Emily J. Zelenock 145 ___________________________________________________________________ a. The Deepsouth Loophole: Exported Components of a Patented Product Section 271(a) hit the proverbial bump in the road in 1972, with the United States Supreme Court‘s landmark case Deepsouth Packing Co. v. Laitram Corp. Laitram sued Deepsouth for infringing two patents directed to machines used to ―devein‖ shrimp. Through extensive litigation, Laitram established that Deepsouth‘s shrimp deveining machines that were made, used and sold in the American market constituted infringement of Laitram‘s patents under § 271(a); the issue before the Supreme Court was whether Deepsouth could also be liable for direct infringement if it sold the disassembled components of the infringing machines and exported them to foreign countries, where they were then assembled and sold. The Court noted that Deepsouth was ―entirely straightforward‖ in admitting that it had devised this scheme for the express purpose of escaping liability under § 271(a).10 Laitram argued that ―Deepsouth in all respects save final assembly ‗makes‘ the [patented] invention‖ within the meaning of § 271(a).11 However, the Court was persuaded by Deepsouth‘s argument that the express statutory language required that, to be liable for direct infringement, an infringer make, use or sell the ―patented invention‖ ―within the United States.‖12 Accordingly, Deepsouth‘s sales and export of the disassembled components of the patented invention did not fall within the scope of § 271(a). b. Expanding the Extraterritorial Reach of U.S. Patent Law by Closing the Deepsouth Loophole: Enactment of 35 U.S.C. § 271(f) In reaching its decision in Deepsouth, the U.S. Supreme Court stated that ―clear congressional indication of intent‖ would be required in order to extend the patent monopoly in the manner suggested by Laitram.13 Clear indication of intent came -- albeit ten years later -- with 35 U.S.C. § 271(f), which was enacted in direct response ―to the…decision in Deepsouth…concerning the need for a legislative solution to close a loophole in patent law.‖14 Section 271(f)(1) provides: Whoever without authority supplies or causes to be supplied in or from the United States all or a substantial portion of the components of a patented invention…in such manner as to actively induce the combination of such 10 Deepsouth, 406 U.S. at 523. Deepsouth, 406 U.S. at 525. 12 The Court characterized the issue as follows: ―did Deepsouth ‗make‘ (and then sell) something cognizable under the patent law as the patented invention, or did it ‗make‘ (and then sell) something that fell short of infringement?‖ Deepsouth, 406 U.S. at 527. 13 Deepsouth, 406 U.S. at 532. 14 130 Cong. Rec. H10525 (1984); see also Cardiac Pacemakers, 576 F.3d at 1360 (―In response to Deepsouth, Congress enacted Section 271(f).‖) (citing Patent Law Amendments of 1984, S. Rep. No. 98-663, pp. 2-3 (1984) (explaining that 271(f) was a response to Deepsouth) and Microsoft Corp. v. AT&T Corp., 550 U.S. 437, 444 (Apr. 30, 2007) (―AT&T II‖)). 11 146 Extraterritorial Technology in a Territorial Regime: Challenges after Cardiac Pacemakers v. St. Jude Medical ________________________________________________________________________________ components outside of the United States in a manner that would infringe the patent if such combination occurred within the United States, shall be liable as an infringer.15 2. TRACING THE EVOLUTION OF § 271(F) CASE LAW FROM DEEPSOUTH TO CARDIAC PACEMAKERS a. The Clear-Cut Cases: Patents for Machines with Mechanical Parts Not surprisingly, cases involving similar fact patterns to Deepsouth -- that is, patents for machines with mechanical components -- are the ―easy‖ cases involving a relatively cut-and-dried application of § 271(f). When the fact pattern of a case falls squarely within the Deepsouth loophole that § 271(f) was designed to close, the dispute is not whether § 271(f) applies16 (it clearly does), but rather whether the accused infringer‘s disassembled component parts would infringe the patent if combination thereof took place within the United States.17 b. Where § 271(a) and § 271(f) Collide: Making Sense of the Blackberry Case In NTP, Inc. v. Research in Motion, Ltd.18 (well-known as the ―Blackberry case‖), NTP alleged that Research in Motion‘s (―RIM‖) Blackberry devices (and systems and processes for using wireless e-mail via those devices) infringed its 15 Section 271(f)(2) includes a similar, related provision: ―Whoever without authority supplies or causes to be supplied in or from the United States any component of a patented invention that is especially made or especially adapted for use in the invention and not a staple article or commodity of commerce suitable for substantial noninfringing use, where such component is uncombined in whole or in part, knowing that such component is so made or adapted and intending that such component will be combined outside of the United States in a manner that would infringe the patent if such combination occurred within the United States, shall be liable as an infringer.‖ 35 U.S.C. § 271(f)(2). 16 Challenges regarding the scope of § 271(f) have arisen in cases involving product claims that are not directed to machines having mechanical parts - namely, claims directed to a chemical formulations in which the ―components‖ are individual chemical compounds and claims directed to software in which the ―components‖ are code. The chemical cases were resolved with relative ease by the Federal Circuit, however, and there is no longer any dispute that chemical compounds are ―compounds‖ within the meaning of § 271(f). See, e.g., W.R. Grace & Co.-Conn. v. Intercat, Inc., 60 F. Supp.2d 316 (D. Del. Aug. 9, 1999) (holding that that chemical compounds are ―components‖ within the meaning of § 271(f)); Bristol-Myers Squibb Co. v. Rhone-Poulenc Rorer, Inc., 326 F.3d 1226 (Fed. Cir. Apr. 15, 2003) (same). The cases involving software are more complex and are discussed in Section II.C., infra. 17 For examples of cases involving the application of 271(f) in scenarios directly analogous to Deepsouth, see, e.g., T.D. Williamson, Inc. v. Laymon, 723 F.Supp. 587, 590 (N.D. Okla. Sept. 21, 1989); Windsurfing Int‟l v. Fred Ostermann, 668 F. Supp. 812, 813 (S.D.N.Y. Aug. 21, 1987); Smith Int‟l, Inc. v. Hughes Tool Co., 1986 U.S. Dist. LEXIS 28247 (C.D.Cal. Mar. 12, 1986) (vacated for reasons unrelated to resolution of § 271(f) issue). 18 NTP, Inc. v. Research in Motion, Ltd., 418 F.3d 1282 (Fed. Cir. Aug. 2, 2005), reh‟g denied, 2005 U.S. App. LEXIS 23112 (Fed. Cir. Oct. 7, 2005), cert. denied, 546 U.S. 1157 (U.S. Jan. 23, 2006). Emily J. Zelenock 147 ___________________________________________________________________ patents. One of the key bases upon which RIM argued that it did not infringe was that a component of its system/process (known as a ―relay station‖) was based in Canada and, as such, was not ―within the United States‖ as required by 35 U.S.C. § 271(a). The Federal Circuit drew a distinction between NTP‘s patent claims that were directed to systems and processes, holding that the ―use‖ of a patented process (as proscribed by § 271(a) required completion of each and every process step within the United States. This compelled the Court‘s conclusion that RIM did not infringe NTP‘s process claims, as one step was performed in Canada. However, as to NTP‘s system claims, the Court stated that ―the ‗use‘ of the claimed system under § 271(a) is the place at which the system as a whole is put into service, i.e. the place where control of the system is exercised and beneficial use of the system obtained.‖19 Accordingly, RIM was liable under § 271(a) for infringing NTP‘s system claims, but not its process claims.20 NTP also argued that RIM infringed its method claims under § 271(f). RIM supplied Blackberry devices to its U.S. customers and those devices, concert with the Canadian relay station, employed NTP‘s patented method. In essence, NTP argued that each device was a ―component‖ of the patented method sufficient to trigger liability under § 271(f). The Court disagreed, noting that a component of a process claim is not a physical product, but rather a step of the process: ―By merely supplying products to its customers in the United States, RIM is not supplying or causing to be supplied in this country any steps of a patented process invention for combination outside the United States and cannot infringe NTP‘s asserted method claims under section 271(f) as a matter of law.‖21 The Court did not reach the question of whether § 271(f) could apply to process claims, but noted that ―it is difficult to conceive of how one might supply or cause to be supplied all or a substantial portion of a patented method in the sense contemplated by the phrase ‗components of a patented invention‘ in section 271(f)22. 19 NTP, 418 F.3d at 1317 (citing Decca Ltd. v. United States, 544 F.2d 1070, 1083 (Ct. Cl. July 19, 1976). 20 A similar approach has been taken in the United Kingdom. See Menashe Business Mercantile Ltd. & Anor v William Hill Organization Ltd. [2002] EWCA Civ 1702 (28 November 2002) (Court of Appeal decision); see also Menashe Business Mercantile Ltd. & Anor v William Hill Organization Ltd. [2002] EWHC 397 (Patents) (15 March, 2002) (Court of First Instance decision). In the Menashe case, the patent holder alleged that the defendant‘s operation of an online gaming system infringed the patent-at-issue. The defendant argued that there could be no infringement of the patented system because the server (which was an essential part of the system) was located outside of the U.K. Noting that to allow such a defense would undercut the spirit of the patent laws, the Court of First Instance found infringement. The Court of Appeal likewise found infringement, but did so based on a rationale similar to the NTP Court, i.e. that the ―use‖ of the invention was in the U.K., irrespective of where the server was located. 21 NTP, 418 F.3d at 1322-23. 22 NTP, 418 F.3d at 1322. 148 Extraterritorial Technology in a Territorial Regime: Challenges after Cardiac Pacemakers v. St. Jude Medical ________________________________________________________________________________ c. The Supreme Court Weighs In Software has presented particular challenges in the § 271(f) context. In Eolas Technologies, Inc. v. Microsoft Corp.23, Eolas Technologies, Inc. (―Eolas‖) sued Microsoft Corp. (―Microsoft‖) alleging, inter alia, that Microsoft‘s Internet Explorer infringed two of Eolas‘ patent claims for a web browser having an interactive environment.24 At the trial stage, Microsoft was found to infringe and the district court ruled that Microsoft was liable for its domestic and foreign sales of Internet Explorer.25 On appeal to the Federal Circuit, one of the key issues was whether Microsoft‘s software code on its exported ―golden master disks‖26 could be considered a ―component‖ within the meaning of § 271(f).27 Microsoft argued that code was not a component and, therefore, should not be liable for infringement damages for its foreign sales.28 The Federal Circuit ruled against Microsoft, noting §271(f)‘s use of the ―broad and inclusive term ‗patented invention‘…[which] includes ‗any new and useful process, machine, manufacture or composition of matter‖ and further noting that ―[w]ithout question, software code alone qualifies as an invention eligible for patenting[.]‖29 The Court expressly rejected Microsoft‘s argument that ―component‖ should be limited to machines with physical components, explaining that this did not square with the plain language of § 271(f), in which ―every form of invention eligible for patenting falls within…§ 271(f).‖30 Notably, the Court cited the TRIPS Agreement‘s non-discrimination provision for additional support of its view that ―all forms of invention‖ should be covered under § 271(f), noting that ―this court cannot construct a principled reason for treating process inventions different than structural products.‖31 23 Eolas Techs., Inc. v. Microsoft, Inc., 399 F.3d 1325 (Fed. Cir. Mar. 2, 2005), reh‟g denied, 2005 U.S. App. LEXIS 10067 (Fed. Cir. May 3, 2005), cert. denied, 126 S. Ct. 568 (U.S. Oct. 31, 2005). 24 Eolas, 399 F.3d at 1328. 25 Eolas, 399 F.3d at 1331. 26 The golden master disks were either physical disks that were sent to foreign manufactus l yorers via conventional mailing methods or encrypted electronic versions that were transmitted to foreign manufacturers electronically. 27 The golden master disks contained the ―software code for [Microsoft‘s] Windows operation system to Original Equipment Manufacturers (OEMs) abroad who use that disk to replicate the code onto computer hard drives for sale outside the United States. The golden master disk itself does not end up as a physical part of an infringing product.‖ Eolas, 399 F.3d at 1331. 28 Eolas, 399 F.3d at 1331. 29 Cf. European Patent Convention, Article 52(2) (stating that ―programs for computers‖ are not patentable inventions). 30 Eolas, 399 F.3d at 1339. 31 Eolas, 399 F.3d at 1339. The non-discrimination provision of the TRIPS Agreement provides that ―Patents shall be available and patent rights enjoyable without discrimination as to the place of invention [] [and] the field of technology[.]‖ See Agreement on Trade-Related Aspects of Intellectual Property Rights, Apr. 15, 1994, Marrakesh Agreement Establishing the World Trade Organization, Annex 1C, Legal Instruments—Results of the Uruguay Round, 33 I.L.M. 1125, 1197 (1994) (hereinafter ―TRIPS Agreement‖). Emily J. Zelenock 149 ___________________________________________________________________ Shortly after the Eolas case, a similar case came before the Federal Circuit which involved Microsoft‘s exportation of ―golden master‖ disks containing Microsoft‘s Windows software (which was then copied and sold to customers abroad), though this time the patent holder was AT&T.32 Relying on the reasoning in Eolas, the Court held that the software was a ―component‖ of a patented invention and, accordingly, Microsoft could not escape liability under § 271(f). However, the U.S. Supreme Court agreed to take this case on appeal and ultimately reversed the Federal Circuit, ruling in favor of Microsoft.33 Critical to the Supreme Court‘s reasoning was the fact that the master disk itself was never installed on any foreign-made computers; rather, the software contained on the master disk was copied and those foreign-made copies were installed. Therefore, these ―components‖ were not supplied from the United States, as required by § 271(f).34 Moreover, the Supreme Court was of the view that the software was not a ―component‖ until it was expressed as computer-readable copy (which occurred when the foreign-made copies were generated). The Supreme Court expressly rejected the Federal Circuit‘s view that the software on the master disk was a ―component‖ because copies could be readily and cheaply made from it: ―While copying software abroad is indeed easy and inexpensive….Section 271(f) contains no instruction to gauge when duplication is easy and cheap enough to deem a copy in fact made abroad nevertheless ‗supplie[d]…from the United States.‖35 Finally, the Supreme Court explained: The presumption [against extraterritoriality] tugs strongly against construing § 271(f) to encompass as a ‗component‘ not only a physical copy of software, but also software‘s intangible code, and to render ‗supplie[d]…from the United States‖ not only exported copies of software, but also duplicates made abroad…. If AT&T desires to prevent copying abroad, its remedy lies in obtaining and enforcing foreign patents.36 32 AT&T Corp. v. Microsoft Corp., 414 F.3d 1366 (Fed. Cir. July 13, 2005) (“AT&T I”). Microsoft Corp. v. AT&T Corp., 550 U.S. 437 (U.S. Apr. 30, 2007) (“AT &T II”). 34 As the Supreme Court pointed out, neither party ―argues that software can never rank as a ‗component‘ under § 271(f).‖ Rather, the parties disagreed ―over the stage at which software becomes a component.‖ AT&T II, 550 U.S. at 447. AT&T maintained that ―software in the abstract, not simply a particular copy of the software, qualifies as a ‗component‘‖ and Microsoft argued (supported by an amicus brief of the United States) that only a copy of software in its usable form (i.e., functional object code rather than source code) and not software in the abstract, can be a component.‖ AT&T II, 550 U.S. at 447. Microsoft and the United States maintained that The Supreme Court ultimately agreed with Microsoft and the United States‘ position: ―Abstract software code is an idea without physical embodiment, and as such, it does not match 271(f)‘s categorization: ‗components‘ amenable to ‗combination.‘‖ AT&T II, 550 U.S. at 449. 35 AT&T II, 550 U.S. at 440. 36 AT&T II, 550 U.S. at 440. See also C.A. BRADLEY, Territorial Property Rights in an Age of Globalism, 37 VA. J. INT‘L L. 505, 513–16 (1997) (discussing five separate bases underlying the presumption against extraterritoriality). 33 150 Extraterritorial Technology in a Territorial Regime: Challenges after Cardiac Pacemakers v. St. Jude Medical ________________________________________________________________________________ A. The Conflict: Cases Involving “Components” of Methods i. Union Carbide: Extension of § 271(f) to Methods In 2006, a Federal Circuit panel explicitly held that § 271(f) applies to patented methods.37 In Union Carbide, Union Carbide had patent protection for a method of producing ethylene oxide and alleged that Shell‘s chemical catalyst, which was necessary for performing the patented method and was exported outside of the U.S. for the purpose of performing the method outside of the U.S., was a ―component‖ within the meaning of § 271(f). The Court distinguished the facts from NTP on relatively shaky grounds: ―NTP is different from this case because Shell supplies catalysts from the United States directly to foreign customers[,]‖ whereas in NTP, ―RIM itself did not supply any component to a foreign affiliate.‖38 Rather than NTP, the Union Carbide Court relied upon the reasoning of Eolas, which is of course now the Supreme Court has reversed in pertinent part. ii. Cardiac Pacemakers: Reversing Union Carbide, Narrowing the Extraterritorial Reach of U.S. Patent Law, and Creating a New Loophole In August 2009, the Federal Circuit, sitting en banc, overruled Union Carbide and held that § 271(f) does not apply to patented methods.39 Cardiac Pacemakers alleged that St. Jude infringed its patented method of heart stimulation in which an implantable heart stimulator (known as an implantable cardioverter defibrillator or ―ICD‖) is used to determine an abnormal heart condition (e.g., an irregular heart rhythm known as an arrhythmia) and then selects and executes a single or multimode operation to treat that condition.40 After a long and complicated procedural history, St. Jude‘s ICDs were found to infringe Cardiac‘s patented method -- at least insofar as the ICDs were used (and thus the method practiced) within the United States.41 However, the parties vigorously disputed whether St. Jude should also have to pay royalties on those ICDs that were exported from the United States to other countries. Cardiac argued that § 271(f) applied, meaning that St. Jude should be liable for having supplied a ―component‖ (the ICD) of the ―patented invention‖ (the method). St. Jude argued that § 271(f) does not apply to method claims, so it should be relieved from any duty to pay royalties when the ICDs had been exported and thus the patented method had been 37 Union Carbide Chemicals & Plastics Technology Corp. v. Shell Oil Co., 425 F.3d 1366 (Fed. Cir. Oct. 3, 2005). 38 Union Carbide, 425 F.3d at 1380. 39 Cardiac Pacemakers, 576 F.3d at 1365. 40 U.S. Patent No. 4,407,288 (―the ‗288 patent), claim 4 (claim 4 reproduced at Cardiac Pacemakers, 576 F.3d at 1352). 41 For a summary of the procedural history, see Cardiac Pacemakers, 576 F.3d at 1352-55. Emily J. Zelenock 151 ___________________________________________________________________ practiced outside of the United States. The Federal Circuit agreed to resolve this issue en banc.42 The Court acknowledged that Cardiac was correct that the term ―patented invention‖ encompasses both product and method claims.43 However, the Court noted that ―it is critical‖ to bear in mind that ―components‖ of patented methods are the ―intangible‖ steps of the method, thus flatly rejecting Cardiac‘s argument that a ―component‖ of a method also includes ―the apparatus that performed the process.‖44 Based on this definition of ―component,‖ the Court then concluded that § 271(f)‘s requirement that the components be ―‗supplied‘…eliminates method patents from Section 271(f)‘s reach.‖45 The Court reasoned that the word ―supply‖ connotes ―the transfer of a physical object. Supplying an intangible step is a physical impossibility.‖46 The Court explained that its conclusion was ―fully consistent‖ with Congress‘ intent underlying its enactment of § 271(f), which was to close the Deepsouth loophole and nothing more.47 Moreover, ―[a]ny ambiguity as to Congress‘s intent in enacting Section 271(f) is further resolved by the presumption against extraterritoriality.‖48 Therefore, St. Jude was not liable for its shipment overseas of ICDs capable of performing Cardiac‘s patented method.49 Judge Pauline Newman issued a strong dissent in response to the Court‘s interpretation of § 271(f). Judge Newman is particularly bothered that the Court‘s exclusion of methods from the scope of § 271(f) ―place[es] a different definition on ‗patented invention‘ in § 271(f) than in any other provision of‖ the United States patent statute.50 Moreover, she points out that the policy underlying the enactment of § 271(f) was to prevent purposeful ―evasion of United States patents,‖ and the 42 See Cardiac Pacemakers, Inc. v. St. Jude Medical Center, Inc., 315 Fed. Appx. 273 (order granting rehearing en banc) (Fed. Cir. 2009). 43 Cardiac pointed to 35 U.S.C. 101, which broadly defines ―invention‖ as ―any new and useful process, machine, manufacture or composition of matter.‖ The Court could not disagree that this definition ―is broad enough to include method patents.‖ Cardiac Pacemakers, 576 F.3d at 1362. 44 Cardiac Pacemakers, 576 F.3d at 1362-63. 45 Cardiac Pacemakers, 576 F.3d at 1364; see also James R. Farrand, Territoriality and Incentives Under the Patent Laws: Overreaching Harms U.S. Economic and Technological Interests, 88 JPTOS 761, 771-72 (2006) ("The wording and legislative history of Section 271(f) discourage application of that provision to method claims"). 46 Cardiac Pacemakers, 576 F.3d at 1364. 47 Cardiac Pacemakers, 576 F.3d at 1364. 48 Cardiac Pacemakers, 576 F.3d at 1365. The Federal Circuit was particularly swayed by the Supreme Court‘s reversal of its decision in AT&T I. In that case, the Supreme Court held that Microsoft‘s export of master disks (for overseas copying) did not constitute the ―supply‖ of combinable ―components.‖ AT&T II, 550 U.S. 437 (2007); see also Cardiac Pacemakers, 576 F.3d at 1362 (discussing AT&T II). From this case, the Federal Circuit received a ―clear message that the territorial limits of patents should not be lightly breached.‖ Cardiac Pacemakers, 576 F.3d at 1362 (citing AT&T II, 550 U.S. 454-56). 49 Cardiac Pacemakers, 576 F.3d at 1365-66. 50 Cardiac Pacemakers, 576 F.3d at 1366 (Newman, J., dissenting); see also 35 U.S.C. § 101 et seq. 152 Extraterritorial Technology in a Territorial Regime: Challenges after Cardiac Pacemakers v. St. Jude Medical ________________________________________________________________________________ Court‘s ruling creates yet another loophole for infringers.51 While she ―share[s]… [the] concern about legislatively impinging upon sovereign foreign rights[,]‖ she rejects the notion that allowing methods to fall underneath the umbrella of § 271(f) would constitute an overreaching of U.S. patent laws: [T]he statutory purpose is to reach the evasion of United States rights by actions that are taken within the United States by entities subject to United States law. The practice in foreign countries of United States-origin technology without any contribution of components from the United States is untouched by § 271(f), whether of process or product. Liability under § 271(f) is based on domestic conduct and intent.52 In addition, Judge Newman dismissed the idea that foreign patents could adequately protect inventors, noting that this alternative is not only expensive, but not always available.53 Judge Newman cautioned: When a patented process is practiced so that some steps are performed in the United States and other steps are performed offshore, the purloiner of the patented process may escape liability everywhere, for United States infringement is avoided if all of the patented process steps are not practiced in the United States, and infringement of foreign patents is avoided for the same reason.54 Judge Newman concluded that Congress could not have intended to ―enable avoidance of process patents by this ploy, while correcting it for machine patents‖ and, thus, the en banc‘s interpretation of § 271(f) to exclude method patents leads to an ―absurd result,‖ as it ―seriously devalue[s]‖ all method patents.55 3. CLOSING THE CARDIAC PACEMAKERS LOOPHOLE There can be no doubt, as Professor Holbrook has pointed out, that the word ―loophole‖ itself suggests a ―normative bias‖ against the strict application of the territoriality principle. 56 Indeed, it is entirely possible that one ―could view these ‗loopholes‘ as the proper functioning of a territorially based patent system.‖57 However, it is clear that the preference for a strictly territorial regime is slowly but 51 Cardiac Pacemakers, 576 F.3d at 1366-71 (Newman, J., dissenting) (finding puzzling the Court‘s ruling that ―the legislators intended to preserve a large loophole for patented processes, and never intended to cover more than the narrow Deepsouth loophole for machinery.‖). 52 Cardiac Pacemakers, 576 F.3d at 1373 (Newman, J., dissenting) (emphasis added). 53 Cardiac Pacemakers, 576 F.3d at 1373 (Newman, J., dissenting). 54 Cardiac Pacemakers, 576 F.3d at 1373 (Newman, J., dissenting). 55 Cardiac Pacemakers, 576 F.3d at 1373 (Newman, J., dissenting) (citing Dewsnup v. Timm, 502 U.S. 410, 427 (1992) (the interpretation of a statute should ―avoid absurd results‖). 56 T.R. HOLBROOK, Extraterritoriality in U.S. Patent Law, 49 WM. AND MARY L. REV. 2119, 2127 (2008). 57 HOLBROOK, 49 WM. AND MARY L. REV. at 2127. Emily J. Zelenock 153 ___________________________________________________________________ steadily eroding, even in countries that have long favored such an approach.58 What is far from clear, however, is where --- and how -- to draw the line.59 B. Inadequacy of Domestic Solutions On January 10, 2010, the U.S. Supreme Court denied Cardiac‘s petition for writ of certiorari, meaning that the Federal Circuit‘s holding in Cardiac Pacemakers will have a significant impact on U.S. patent law.60 For patent attorneys advising U.S. and non-U.S. clients who own U.S. patents or patent applications, the challenge is how to secure the best protection for innovative processes in light of this decision. First, to the extent possible, patent attorneys should be sure to always include claims directed to the products as well as the methods.61 This was in fact the case in Cardiac Pacemakers, as there were product claims directed to the ICDs as well as claims directed to the method of using the ICDs (but only a method claim was at issue on appeal). If a product claim had been at issue in Cardiac Pacemakers, St. Jude‘s would have been liable for infringement under § 271(f) if it had exported ―all or a substantial portion‖ of the disassembled components of the ICD ―in such a manner as to actively induce the combination of such components outside of the United States.‖62 Moreover, patent applicants should strategically target markets in which their invention is likely to be made, used or sold and apply for foreign 58 G.A. BENDER, Clash of the Titans: The Territorality of Patent Law vs. The European Union, 40 IDEA 49 (2000) (noting several signs that ―the territorial limit of patents in European countries is rapidly dissolving.‖). 59 Academics and practitioners have advanced various possible theories and solutions. See, e.g., T.R. HOLBROOK, Extraterritoriality in U.S. Patent Law, 49 WM. AND MARY L. REV. 2119, 2122 (2008); D. DEFRANCO & A. SMITH, Technology and the Global Economy: Progress Challenges the Federal Circuit To Define the Extraterritorial Scope of U.S. Patent Law, 34 AIPLA Q.J. 373 (2006); JAMES R. FARRAND, Territoriality and Incentives Under the Patent Laws: Overreaching Harms U.S. Economic and Technological Interests, 88 JPTOS 761 (2006); J. OSBORNE, A Rational Analytical Boundary for Determination of Infringement by Extraterritorially-Distributed Systems, 46 IDEA 587 (2006); Y. CHAIKOVSKY & A. PERCER, Globalization, Technology Without Boundaries & the Scope of U.S. Patent Law, 9 U.S.F. INTELL. PROP. L. BULL. 95 (2005); R. DREYFUSS, The ALI Principles on Transnational Intellectual Property Disputes: Why Invite Conflicts?, 30 BROOK. J. INT'L L. 819 (2005); C.A. BRADLEY, Territorial Property Rights in an Age of Globalism, 37 VA. J. INT‘L L. 505, 513–16 (1997); D. CHISUM, Normative and Empirical Territoriality in Intellectual Property: Lessons from Patent Law, 37 VA. J. INT'L L. 603 (1997); J.R. THOMAS, Litigation Beyond the Technological Frontier: Comparative Approaches to Multinational Patent Enforcement, 27 LAW & POL'Y INT'L BUS. 277 (1996) 60 Cardiac Pacemakers, Inc. v. St. Jude Medical Center, Inc., 78 U.S.L.W. 3392 (U.S. Jan. 11, 2010). 61 Professor Lemley is among the prominent academics who advocates for careful claim drafting to reduce (though admittedly not eliminate) the ―divided infringement‖ problem, i.e., the problem of an otherwise infringing act becoming non-infringing by virtue of the infringing steps taking place in different countries. See M. LEMLEY ET AL., Divided Infringement Claims, 33 AIPLA Q.J. 255, 256 (2005). 62 35 U.S.C. § 271(f). 154 Extraterritorial Technology in a Territorial Regime: Challenges after Cardiac Pacemakers v. St. Jude Medical ________________________________________________________________________________ patents in those countries. This was a point made by both the Supreme Court in AT&T II and the Federal Circuit in Cardiac Pacemakers. While it is best practice to have a diversity of claims directed to both products and processes, not all method claims can be rewritten as product claims. Indeed, while technology like Cardiac‘s is a physical device (ICD) used in a process, often it is the process itself that is the heart of the innovation. In such cases, the process is only infringed if each and every step takes place ―within the United States‖ under § 271(a); after Cardiac Pacemakers, there can be no doubt that § 271(f) is not an option for direct infringement of a method claim. For industries where transnational processes are inherent (such as telecommunications, distributed computer systems and Internet-based services), this can be seen as a blessing or a curse -- depending to some extent on whether the party is a patent holder or an accused infringer. Likewise, while it is best practice to obtain patents from multiple countries, doing so will not necessarily provide protection, as Judge Newman pointed out in dissent. Indeed, in a scenario involving an innovative process that can be practiced so that some steps are performed in the U.S. and another step (or steps) can be performed outside of the U.S., infringers ―may escape liability everywhere, for United States infringement is avoided if all of the patented process steps are not practiced in the United States, and infringement of foreign patents is avoided for the same reason.‖63 To the extent that this loophole is sought to be closed, it is unlikely that it can be done so through a purely domestic solution. The Supreme Court made it crystal clear in AT&T II that any further ―reaching‖ of the U.S. patent laws beyond the strict territorial boundaries of the U.S. will need to be determined by Congress, not the courts. However, it took Congress over ten years to close the Deepsouth loophole with § 271(f) and that involved a far less controversial measure. Indeed, the U.S. software industry and the Solicitor General of the United States (in an amicus brief) supported Microsoft‘s position in AT&T II; with such powerful lobbying, it is difficult to imagine that Congress could or would even want to respond to this loophole, much less in a timely manner. C. Proposed International Treaty Addressing Transnational Method Patents Any proposed international solution dealing with transnational method patents should be narrowly tailored to specifically resolve the problem identified in Judge Newman‘s dissent in Cardiac Pacemakers -- i.e., to respond to the situation where someone has a U.S. patent for a patented method and foreign equivalent(s) but nevertheless is deprived of enforcing any of those patents because potential 63 Cardiac Pacemakers, 576 F.3d at 1373 (Newman, J., dissenting). Emily J. Zelenock 155 ___________________________________________________________________ infringers could simply avoid liability by strategically placing the method steps in different countries. The international community should give serious consideration to this scenario, realizing of course that without international collaboration on this point, the effective result is to eliminate transnational methods from the scope of patent coverage. CONCLUSION A survey of the recent U.S. case law regarding the territoriality principle in the patent area calls to mind the old adage: the only thing that is certain is that nothing is certain. This uncertainty is compounded when we consider that every country will ultimately devise its own solution for dealing with these issues. Still, perhaps now we have one more point to hold onto as practitioners: U.S. patent claims directed to transnational methods are in peril after the holding in Cardiac Pacemakers, allowing potential infringers to escape liability for patent infringement by strategically placing in different countries the different steps of a protected method. Whether this is a loophole that should be closed is one that requires careful examination by - and potentially collaboration with - the international community. 156 Extraterritorial Technology in a Territorial Regime: Challenges after Cardiac Pacemakers v. St. Jude Medical ________________________________________________________________________________ BIBLIOGRAPHY Cases AT&T Corp. v. Microsoft Corp., 414 F.3d 1366 (Fed. Cir. July 13, 2005) Bristol-Myers Squibb Co. v. Rhone-Poulenc Rorer, Inc., 326 F.3d 1226 (Fed. Cir. Apr. 15, 2003) Brown v. Duchesne, 60 U.S. 183 (U.S. 1857) Cardiac Pacemakers, Inc. v. St. Jude Medical Center, Inc., 315 Fed. Appx. 273 (Fed. Cir. 2009) Cardiac Pacemakers, Inc. v. St. Jude Medical Center, Inc., 576 F.3d 1348 (Fed. Cir. Aug. 19, 2009) Cardiac Pacemakers, Inc. v. St. Jude Medical Center, Inc., 78 U.S.L.W. 3392 (U.S. Jan. 11, 2010) Decca Ltd. v. United States, 544 F.2d 1070 (Ct. Cl. July 19, 1976) Deepsouth Packing Co. v. Laitram Corp., 406 U.S. 518 (May 30, 1972) Dowagiac Mfg. Co. v. Minn. Moline Plow Co., 235 U.S. 641 (U.S. Jan. 11, 1915) Eolas Techs., Inc. v. Microsoft, Inc., 399 F.3d 1325 (Fed. Cir. Mar. 2, 2005), reh‟g denied, 2005 U.S. App. LEXIS 10067 (Fed. Cir. May 3, 2005), cert. denied, 126 S. Ct. 568 (U.S. Oct. 31, 2005). Menashe Business Mercantile Ltd. & Anor v William Hill Organization Ltd. [2002] EWCA Civ 1702 (28 November 2002) Menashe Business Mercantile Ltd. & Anor v William Hill Organization Ltd. [2002] EWHC 397 (Patents) (15 March, 2002) Microsoft Corp. v. AT&T Corp., 550 U.S. 437 (Apr. 30, 2007) NTP, Inc. v. Research in Motion, Ltd., 418 F.3d 1282 (Fed. Cir. Aug. 2, 2005) NTP, Inc. v. Research in Motion, Ltd, 2005 U.S. App. LEXIS 23112 (Fed. Cir. Oct. 7, 2005) NTP, Inc. v. Research in Motion, Ltd., 546 U.S. 1157 (U.S. Jan. 23, 2006). Emily J. Zelenock 157 ___________________________________________________________________ Pellegrini v. Analog Devices, Inc., 375 F.3d 1113 (Fed. Cir. July 8, 2004) Rotec Indus., Inc. v. Mitsubishi Corp., 215 F.3d 1246, 1251 (Fed. Cir. June 13, 2000) Smith Int‟l, Inc. v. Hughes Tool Co., 1986 U.S. Dist. LEXIS 28247 (C.D.Cal. Mar. 12, 1986) T.D. Williamson, Inc. v. Laymon, 723 F.Supp. 587 (N.D. Okla. Sept. 21, 1989) Union Carbide Chemicals & Plastics Technology Corp. v. Shell Oil Co., 425 F.3d 1366 (Fed. Cir. Oct. 3, 2005) W.R. Grace & Co.-Conn. v. Intercat, Inc., 60 F. Supp.2d 316 (D. Del. Aug. 9, 1999) Windsurfing Int‟l v. Fred Ostermann, 668 F.Supp. 812 (S.D.N.Y. Aug. 21, 1987) Statutes and Legislative History 35 U.S.C. § 101 35 U.S.C. § 271(a) 35 U.S.C. § 271(f) 130 Cong. Rec. H10525 (1984) European Patent Convention, Article 52(2) Patent Law Amendments of 1984, S. Rep. No. 98-663 (1984) Agreement on Trade-Related Aspects of Intellectual Property Rights, Apr. 15, 1994, Marrakesh Agreement Establishing the World Trade Organization, Annex 1C, Legal Instruments—Results of the Uruguay Round, 33 I.L.M. 1125, 1197 (1994) Other Sources F. ABBOTT, T. COTTIER AND F. GURRY, INTERNATIONAL INTELLECTUAL PROPERTY IN AN INTEGRATED WORLD ECONOMY, Aspen Publishers, New York (2007) G.A. BENDER, Clash of the Titans: The Territorality of Patent Law vs. The European Union, 40 IDEA 49 (2000) 158 Extraterritorial Technology in a Territorial Regime: Challenges after Cardiac Pacemakers v. St. Jude Medical ________________________________________________________________________________ DAN L. BURK, Patents in Cyberspace: Territoriality and Infringement on Global Computer Networks, in 68 TUL. L. REV. 1 (1993) C.A. BRADLEY, Territorial Property Rights in an Age of Globalism, 37 VA. J. INT‘L L. 505, 513–16 (1997) Y. CHAIKOVSKY & A. PERCER, Globalization, Technology Without Boundaries & the Scope of U.S. Patent Law, 9 U.S.F. INTELL. PROP. L. BULL. 95 (2005) D. CHISUM, Normative and Empirical Territoriality in Intellectual Property: Lessons from Patent Law, 37 VA. J. INT'L L. 603 (1997) D. DEFRANCO & A. SMITH, Technology and the Global Economy: Progress Challenges the Federal Circuit To Define the Extraterritorial Scope of U.S. Patent Law, 34 AIPLA Q.J. 373 (2006) R. DREYFUSS, The ALI Principles on Transnational Intellectual Property Disputes: Why Invite Conflicts?, 30 BROOK. J. INT'L L. 819 (2005) JAMES R. FARRAND, Territoriality and Incentives Under the Patent Laws: Overreaching Harms U.S. Economic and Technological Interests, 88 JPTOS 761 (2006) T.R. HOLBROOK, Extraterritoriality in U.S. Patent Law, 49 WM. AND MARY L. REV. 2119 (2008). M. LEMLEY ET AL., Divided Infringement Claims, 33 AIPLA Q.J. 255 (2005) C.A. NARD, THE LAW OF PATENTS, Wolters Kluwer, New York (2008) J. OSBORNE, A Rational Analytical Boundary for Determination ofInfringement by Extraterritorially-Distributed Systems, 46 IDEA 587 (2006) J.R. THOMAS, Litigation Beyond the Technological Frontier: Comparative Approaches to Multinational Patent Enforcement, 27 LAW & POL'Y INT'L BUS. 277 (1996) United States Patent & Trademark Office Patent Statistics Report, available at: http://www.uspto.gov/web/offices/ac/ido/oeip/taf/reports.htm#pat_trends. THE LEGAL ASPECTS OF TECHNOLOGY TRANSFER OFFICES IN ARAB PUBLIC-FUNDED UNIVERSITIES Cairo University (Egypt) and Sultan Qaboos University (Oman) by: Ahmed Elsisi and Sheikha Al-Akhzami TABLE OF CONTENTS 1. INTRODUCTION 2. LITERATURE REVIEW 3. THE HISTORICAL DEVELOPMENT OF TTOS IN UNIVERSITIES 4. SOCIAL & ECONOMIC IMPACT OF TTOS IN THE COMMUNITY 5. ESTABLISHED IP POLICIES 5.1. Stanford University IP Policy, Usa 5.2. Glasgow University IP & Commercialization Policy, Uk 5.3. Osaka University IP Policy, Japan 6. ANALYSIS OF THE CURRENT SITUATION IN ARAB UNIVERSITIES 6.1. Sultan Qaboos University IP Policy, Oman 6.2. Cairo University, Egypt 7. RECOMMENDATIONS 8. CONCLUSION BIBLIOGRAPHY 160 The Legal Aspects of Technology Transfer Offices in Arab Public-Funded Universities ________________________________________________________________________________ 1. INTRODUCTION As from the eleventh century and during the Islamic Renaissance, the Arab world was the unrivaled intellectual centre for science, philosophy, medicine and art. Scholars were attracted from all over the world to cities like Cairo, Damascus and Baghdad, acquiring the knowledge and innovation. Nowadays, Arab countries‘ contribution to science and art is far beyond the contribution of developed countries. This situation is in part due to the brain drain problem and the inadequate implementation of rules, that makes their universities miss essential tools in research and education which are commonly used by their counterparts in the developed countries; and one of these tools is the necessary interaction between the university-industry-government (triple helix model) as a key for innovation through developing technology transfer offices. The two selected Arab universities are examples from the two categories of the Arab countries. While Egypt is representing the countries with historical universities and a strong industry, Oman represents the Arabian Gulf countries with young universities and a growing economy due to the oil evolution in the 1970s. Our research will excavate different intellectual property (IP) policies in the developed countries, giving examples of three universities representing three different continents (Stanford University in the US as private university, Glasgow University in the UK and Osaka University in Japan as public funded universities). Then, it will analyze the current situation in the two selected Arab public funded universities (Cairo University in Egypt and Sultan Qaboos University in Oman) highlighting the IP systems in both universities. Based on that, the research will recommend the improvements in the IP system for the Arab universities. 2. LITERATURE REVIEW Technology Transfer Office (TTO) is a new organizational entity has emerged in the administrative structure of universities. Its main function is to facilitate commercial knowledge transfers from universities to practitioners in the industry.1 The Organization for Economic Co-operation and Development (OECD) report on patenting and licensing at public research organizations shows that many of the TTOs are in their infancy. Most TTOs are less than 10 years old and have 1 D. Siegel, D. Waldman, L. Atwater, A. Link, Toward a model of the effective transfer of scientific knowledge from academicians topractitioners: qualitative evidence from the commercialization of university technologies, Journal of Engineering and Technology Management, Volume 21, Issues 12, 2004, p. 115-142. Ahmed Abd Eltawab Elsisi and Shaikha Nasser Ali Al-Akzam 161 _______________________________________________________________________________ less than five full-time staff. However, the number of new TTOs is growing, to the order of 1 per year per institution.2 A common problem identified in the literature is the difficulty these universities face in getting the researchers to first disclose their inventions to the TTO and second to cooperate with the university in further development of their patent after licensing3. Some studies support the importance of encouraging inventors to disclose, protect and exploit their inventions through the incentives which can be legal or administrative. Royalty sharing agreements or equity participation in academic start-ups could be key factor to encourage researchers to evaluate and patent their inventions and eventually will increase the university number of patents and revenue obtained from licensing. Therefore, incentive element in the license seems to encourage higher levels of research effort and attract more productive researchers.4 According to Nelson5, The sharp increase in university patenting and licensing are clearly associated with the development and maturation of certain new fields of university research, in particular the rise of biotechnology, where research results seem to promise significant commercial value of great interest to the industry6. WIPO publication shows that technology transfer in universities calls for a high level of different expertise, a firm knowledge of technology and the way universities function, and familiarity with the legal aspects of IPRs. One problem researcher face is their lack of expertise in filing patent application and negotiating agreement with the industry. This raises a fundamental issue for universities to have strong and effective TTO staffed with legal and technical experts.7 The literature lacks published work regarding technology transfer in the Arab universities, and no studies were found on IP policies in the Arab world. According to Zahlan8, what‘s needed for the Arab development is to combine 2 M. Cervantes, Academic Patenting: How universities and public research organizations are using their intellectual property to boost research and spur innovative start-ups,WIPO website:http:// www.wipo.int/sme/en/documents/academic_patenting.htm 3 I. Macho-Stadler, D. Pérez-Castrillo, R.Veugelers, Licensing of university inventions: The role of a technology transfer office, International Journal of Industrial Organization., 2007, p. 483-510 4 Supra note 2 M. Cervantes, Academic Patenting… 5 R. Nelson, Observations on the post-bayh-dole rise of patenting at American universities, Journal of technology transfer, 26, 2001, pp13-19 6 D. Mowery, R. Nelson, B. Sampat, A. Ziedonis, The growth of patenting and licensing by U.S. universities: an assessment of the effects of the Bayh–Dole act of 1980, Research Policy,Volume 30, Issue 1, January 2001, Pages 99-119 7 Technology transfer, intellectual property and effective university-industry partnerships: the experience of China, India, Japan, Philippines, the Republic of Korea, Singapore and Thailand, WIPO website: http://www.wipo.int/freepublications/en/intproperty/928/wipo_pub_928.pdf 8 A. B. Zahlan is an independent science policy consultant. Formerly a professor of physics at the American University of Beirut, he has published extensively in the fields of chemical physics, science and technology policy, and the history of technology in the Arab World. 162 The Legal Aspects of Technology Transfer Offices in Arab Public-Funded Universities ________________________________________________________________________________ human resources and support services with effective government policies. But he shows a negative view when he mention the immigration of professionals including scientists and engineers and the massive brain drain.9 Also Saleh10 emphasize that many universities in the Arab countries ought to change from being classical establishments to become more pro-active in their research management. 3. THE HISTORICAL DEVELOPMENT OF TTOS IN UNIVERSITIES The concept of technology transfer found its way through the American industrial environment and education system in the last century. Before 1940, a little thought was given to the importance of technology, but during World War II, the value of technological advances to a strong military defense was recognized. The emerging needs of the U.S. military resulted in a large increase in governmentsponsored research. The government began contracting with qualified companies, universities, but with no overall plan for handling the intellectual property that would be developed. In 1945, US president Franklin D. Roosevelt's Science Advisor, Vannevar Bush, drafted a report (published on Science: ―The Endless Frontier‖ magazine) emphasizing the importance of basic research to a strong economy. At that time, each funding agency developed its own intellectual property policies. There were more than 25 different policies for dealing with intellectual property. In general, research institutions were unable to obtain title to their inventions developed under federal funding and were unable to license their own technologies, because at that time the government had the right to own the outcome of federal funding. In addition, the government adopted a non exclusive licensing policy. The result was that few inventions were licensed and even fewer were commercialized. In 1960‘s, the Department of Health, Education, and Welfare and then the National Science Foundation entered into inter-institutional patent agreements with a few universities. These agreements were the foundation for modern technology transfer. For the first time, universities were permitted to own the inventions they made under government-funded research. The terms and provisions of these agreements led to the passage of two very important statutes concerning technology transfer in the United States. As Lee mentioned in his book (Technology transfer and public policy)11, the first statute is the Stevenson-Wydler Technology Innovation Act in 1980 (Public Law 96-480). This Act established the foundation for technology transfer at the national laboratories. It made technology transfer an integral part of the research 9 A.Zahlan, Arab societies as knowledge societies, Minerva, 2006, 44:103-112 N. Saleh, Research management issues in the Arab countries, Higher Education Policy, Volume 15, Issue 3, September 2002, Pages 225-247 11 Y. Lee, Technology Transfer and Public Policy, Quorum Books, 1997, p. 28 10 Ahmed Abd Eltawab Elsisi and Shaikha Nasser Ali Al-Akzam 163 _______________________________________________________________________________ and development responsibilities of federal laboratories and their employees. A main target was to disseminate the information from the Federal government to private industry, and to establish an Office of Research and Technology Application (i.e., technology transfer office). After only two months of Stevenson-Wydler Act, US Congress passed the Bayh-Dole Act, the key piece of legislation enabling technology transfer in the whole nation. In this law, Congress determined that private (not government) ownership of inventions, motivated by the prospect of financial gain, would lead to commercialization of federally funded inventions. Consequently, small businesses and nonprofit organizations were given a statutory right to choose to retain title to inventions made during federally-assisted research and development (R&D), as long as they were interested in patenting and attempting to commercialize those inventions. After the Bayh-Dole Act, some minor laws were also issued serving the same purpose. One of them was the Federal Technology Transfer Act, which was issued in 1986 empowering government-owned government-operated labs (GOGOs) directly to enter into cooperative R&D agreements (CRADA) with firms and established the Federal Laboratory Consortium (FLC) for Technology Transfer. The great success of these former laws has strengthened the U.S. economy and helped make the United States a world technology leader. 12 According to Nelson13, the number of universities with technology transfer offices increased in the US from 25 in 1980, to 200 in 1990. 4. SOCIAL AND ECONOMIC IMPACT OF TTOS IN THE COMMUNITY Over the last twenty years or so, the contribution of university research output of technological advance in industry has become even more important than it used to be. In particular, industries employing biotechnology draw greatly on university research. The contribution of university research to industrial development has been strong in several areas of electronics, and in certain kinds of software developments.14 Having a successful TTO in a university as a central body to handle all issues relating to the transfer of technology makes possible to professionalize technology transfer activities and enhance the bargaining power of the universities.15 Also, it generates high social returns to the society at large by both creating new products or enhancing product quality/variety and boosting new industries. 12 Technology transfer: The history, Industrial partnership office, 2005, website: https://ipo.llnl.gov/data/assets/docs/TechTransfer.pdf 13 Supra note 5, R. Nelson, Observations on the post-bayh-dole… 14 ibid 15 Supra note 7, Technology transfer, intellectual property… 164 The Legal Aspects of Technology Transfer Offices in Arab Public-Funded Universities ________________________________________________________________________________ As widely known, innovation is very much dependent on R&D which had to be accompanied by the acquisition of knowledge16 especially through basic sciences research which is done mostly at public funded universities. Moreover, quantitative studies tend to show that patenting has effect on the direction of research which led universities to conduct more applied research. This means that IP and technology transfer activities is making university research more responsive to the economy, leading to a danger impact on basic research.17 In a free market economy, firms are not willing to invest in basic science research due to a high degree of technical and commercial uncertainty associated with it. Therefore, government direct financial support to public funded universities prevents underinvestment in basic science research and eventually will prevent market failure.18 In general, public funded universities have obligations toward promoting local and regional development through IP spillovers. This leads to a preference for local licensing agreements in favor of smaller firms with a consequent income loss.19 The technology transfer policy in a university gives firms incentives to develop commercial products resulted from university patents and on the other hand it gives incentives for researchers to cooperate in the commercial exploitation of their inventions by allowing them to own patents and to share profits.20Therefore, in order for universities to balance the benefits, there are three types of licenses between the university and industry: exclusive, non-exclusive and sole licenses. 5. ESTABLISHED IP POLICIES In this section we will go through examples of developed systems in technology transfer in three universities from different developed countries (USA, UK and Japan). We will discuss the provisions of ownership, income sharing, confidentiality and clauses in case the university is unable to commercialize the patent. In the following IP policies. 5.1. Stanford University IP Policy, United States 16 D. Siegel, M. Weight, IP: the assessment, Oxford review of economic policy, v.23 no4, 2007, pp.529-540. 17 Supra note 2 M. Cervantes, Academic Patenting….. 18 Report of the multi-year expert meeting on enterprise development policies and capacity-building in science, technology and innovation (STI) on its first session, United Nations conference on trade and development, 2009, p.12, website: http://www.unctad.org/en/docs/ciimem1d4_en.pdf 19 Supra note 16, D. Siegel, M. Weight, IP: the assessment… 20 R. Eisenberg, Public Research and Private Development: Patents and TT in governmentsponsored research, Virginia law review, v.82, 1996, p.1709 Ahmed Abd Eltawab Elsisi and Shaikha Nasser Ali Al-Akzam 165 _______________________________________________________________________________ For nearly three decades, Stanford University has been a leader in technology transfer, fostering the growth of northern California's Silicon Valley and the biotechnology industry and providing a model for other research and educational institutions across the United States and the world. Stanford Office of Technology Licensing (OTL) is the first office to be set up for university technology transfer in the US. It was established in 1970 by its first director Mr. Niels Reimers who left Stanford in 1991 to consult to other universities. According to statistics, patent licenses income in Stanford from 1954 to 1967 (before the Bayh-Dole Act) was roughly $45,000. Now, Stanford‘s start-ups in one year are more than what were raised by University of Cambridge -the leading university in the UK- in the whole period of the Nineteenth. A huge success that led universities like; Harvard and the Massachusetts Institute of Technology to model their own technology transfer programs on Stanford's practices.21 5.1.1. Ownership of IPRs: Regardless of the source of funding, all potentially patentable inventions conceived or first reduced to practice in whole or in part by university employees and students in the course of their university responsibilities or with more than incidental use of the university resources shall be assigned to the university. Waivers of the provisions of this policy may be granted only by the president or the president's designate on a case-by-case basis, giving consideration among other things to university obligations to sponsors, whether the waiver would be in the best interest of the university and whether the waiver would result in a conflict of interest. 5.1.2. Income Sharing from IP: Before distributing the revenues, a deduction of 15% to cover the administrative overhead of OTL is taken from gross royalty income, followed by a deduction for any directly assignable expenses, typically patent filing fees. After deductions, royalty income is divided one third to the inventor, one third to the inventor's department, and one third to the inventor's school. In the case of Independent Laboratories and Independent Research Centers or Institutes, which report directly to the vice provost and dean of research, the inventor may assign to his/her independent laboratory, center or institute the department's third of the royalty income or a part thereof, based on support of the work. In these cases, the school's portion goes to the dean of research. Similarly, when more than one department is involved, the inventor shall designate the distribution of the department and school thirds based on support of the work. 21 L. Fisher, The Innovation Incubator, Strategy+Business Magazine, Issue13, 1998. 166 The Legal Aspects of Technology Transfer Offices in Arab Public-Funded Universities ________________________________________________________________________________ 5.1.3. Confidentiality Clauses: Inventors in Stanford must prepare and submit on a timely basis an invention disclosure to the TLO for each potentially patentable invention conceived or first actually reduced to practice in whole or in part in the course of their university responsibilities or with more than incidental use of university resources. 5.1.4. Where the University is unable to commercialize the IP If the University cannot, or decides not to, proceed in a timely manner to patent and/or license an invention, it may reassign ownership to the inventors upon request to the extent possible under the terms of any agreements that supported or related to the work. 5.2. Glasgow University IP & Commercialization Policy, United Kingdom: In the UK during the period 1997-2000, an average of 95 spin-offs per year were created from universities. As a result of changes in government policy, 2006 witnessed an increase in spin-offs having the potential to create new markets. 22 The Glasgow university IP issues are managed through the Research and Enterprise Department which deals with the ownership, protection and commercialization of IP and know-how created by employees of the university. The policy aims to encourage and reward inventors and protects the university against any unnecessary risks as will be seen from the different clauses below. 5.2.1. Ownership of IPRs: It indicates that all rights in IP devised or created by a University employee including students employed by the university in the course of his or her normal duties of employment will generally belong automatically to the university. But in the case of a sponsored research or other type of agreement with an external body, the IP will initially belong to the university and then ownership will be determined according to the terms of such agreement. In the case of any IP created by a university employee, the ownership belong to the university if the employee‘s normal duties are such that it would be reasonable to expect the creation of IP and if the employee of the university creates IP outside the course of his/her employment or normal duties with more than incidental use of university resources. 22 Supra note 16, Siegel, M. Weight, IP: the assessment… Ahmed Abd Eltawab Elsisi and Shaikha Nasser Ali Al-Akzam 167 _______________________________________________________________________________ In the case of university employees working at other institutions, any IP created during that appointment should lie with the employer who pays the salary. On the other hand, in the case of academic or researchers who have an honorary association with the university but are not employed by the university, they are generally required to transfer any IP they create in the course of their honorary activities to the university. This includes visiting academics and individuals with honorary appointment in the university. Students who are not employed by the university own any IP they create and shall be given the option to assign any IP to the university; then they will be granted the same rights as any employee inventor. 5.2.2. Income Sharing from IP: The policy stated that all license income from new technologies is distributed net of any legal, patent or other costs. The distribution is according to the income generated as following: - Up to £50,000 income: 50% inventor, 50% faculty. Over £50,000 income: 33% inventor, 67% faculty. For equity sharing from spin-out development the distribution is as following: founding scientist 50%, faculty 25%, and university 25%. But if there is a partnership from an IP Group23, the following equity sharing applies: Founding scientist 50%, faculty 19%, university 19% and IP Group 12%. In general, the share distributed for the inventor remains the same (50% of the net income) in different scenarios. 5.2.3. Confidentiality Clauses: The policy indicated that all university information must be treated sensitively and each employee (or student) of the university must ensure that any valuable or potentially valuable information is protected by a suitable agreement before disclosure to others who are not university employees or students. While the policy emphasizes strictly the importance of non disclosure clauses of information covered under any agreement/understanding with external body. But the disclosures may be permitted to other employees of the university. 5.2.4. Where the University is unable to commercialize the IP After the decision by the faculty to commercialize the IP, the university agrees to a commercialization plan with the individual within 3 months of the decision by the faculty. Appropriate steps will be taken to protect the IP generated 23 University support individuals in the creation of spin-out ventures via its partnership with the IP Group (www.ip2ipo.co.uk), IP and commercialization policy, Glasgow University, P. 8 168 The Legal Aspects of Technology Transfer Offices in Arab Public-Funded Universities ________________________________________________________________________________ by employees and students generally at the university‘s expense and within the timetable of the commercialization plan. If the university is unable to commercialize the IP then, upon the request from the individual, the university will assign all its rights, titles and interest of such IP to the individual in return for a perpetual non-exclusive royalty-free license with the right to sub-license. Where the individual successfully commercialize any IP created by them, following an assignment of such IP to them, then the individual will reimburse any expenses previously incurred by the university in connection with the protection of such IP, including patent agents‘ and other legal costs, out of any income generated by or on behalf of the individual from the commercialization of such IP. 5.3. Osaka University IP Policy, Japan The WIPO report in the Japan experience mention that during 1977, it was agreed to transfer the IPRs resulted from national universities research to the individual researchers. But it was too burdensome for individual researchers to file patent applications or undergo the other processes necessary to claim and use IPRs. It was only as late as the 1990s that Japanese society became serious about establishing mutually supportive relation with industry due to the heavy loss of competitiveness by Japanese firms to the US in such key sectors as information technology and biotechnology. Under the pressure of global competition, companies began to show increasing interest in utilizing the most advanced knowledge developed by universities. On the part of universities, there have been increasing indications that Japanese universities are falling behind foreign universities in their levels of academic research because they have not interacted with industries. Therefore, as the result of a set of laws that were introduced in the late 1990s, Japanese universities are now capable of owning IPRs for inventions developed at their universities and are obliged to go through radical transformation in managing IPRs at universities. 24 Osaka University IP policy issued in April 2004 and managed through the IP office and the Technology Licensing Organization (TLO). The IP policy objective is to provide fundamental rules with regard to the handling of IP in order to advance the university‘s social contribution and to serve the promotion of academic study. 5.3.1. Ownership of IPRs: 24 Supra note 7, Technology transfer, intellectual property… Ahmed Abd Eltawab Elsisi and Shaikha Nasser Ali Al-Akzam 169 _______________________________________________________________________________ IPR created by the employees of the university during their duties at the university shall belong to the university. If an IP is created through study conducted by students of the university using funds or equipment of the university or the public, the IPR may be assigned to the university by conducting agreements with students. However, students employed by the university and signed agreements concerning their rights to the IP they create shall be treated as employees of the university. Rights regarding the IP created by the employees shall belong to the university in principle. If the invention is made jointly by the employees and research partners, the IPRs shall be jointly owned by the university and the partner. But when the IP from the results of joint research are considered to be best used only by the partner, the IPR may be assigned to the partner for an appropriate compensation to the university. Income Sharing from IP The income gains from an invention for which application is made by the TLO will be distributed after deducting actual expenses related to the application as the following: the inventor, the TLO, the university each receive one third (1/3) of the net income. In that case, the university distribute one half (1/2) of its share to the inventor‘s research laboratory. If the income generated by the transfer or assignment of a tangible research results, the university pays 50 per cent of the net income to the inventor and his/her research laboratory as compensation. If the income generated related to IP assigned by students to the university, the university pays compensation to the student in the same manner as employees of the university. Confidentiality Clauses The policy stated that university employees shall have responsibility to faithfully observe any secrecy obligations related to IP. In the case of conducting cooperative activities with external organizations, both external organizations and the university shall conclude and observe secrecy agreements. 5.3.1. Where the University is unable to commercialize the IP The policy mentioned briefly that the IPR that the university decides not to succeed shall belong to the employee who created the IP. 170 The Legal Aspects of Technology Transfer Offices in Arab Public-Funded Universities ________________________________________________________________________________ 5. ANALYSIS OF THE CURRENT SITUATION IN ARAB UNIVERSITIES From the WTO data, the below figures where generated to summarize the economic situation in the two selected Arab countries. The figures25 show that the GDP for Egypt is more compared to Oman, this indicate a stronger industry base in Egypt (Figure1) which is reflected in the number of industrial property of 300 patents compared to non in Oman (Figure2). But this is far below the number of industrial property for the three developed countries: US, UK and Japan. 180,000 160,000 140,000 120,000 100,000 80,000 GDP(US$) 60,000 40,000 20,000 0 Egypt Oman 350,000 300,000 250,000 200,000 150,000 100,000 50,000 0 United States United Kingdom Trademark registrations by office 172,427 Patent grants by patent office 157,283 Japan Egypt Oman 31,966 95,034 3,029 118 5,930 164,954 300 Figure (1) GDP in million US$, 2008 25 Figure (2) number of industrial property, 2007 25 Some data shows that 69% of research is carried out in governmental institutions and 30% in universities in the Arab countries, and only 30–35% of all universities in region are research universities26. But this data is outdated because many Arab universities have made the transition from being classical academic establishments to becoming more pro-active toward research 25 The two figures were generated in addition to several bar graphs showing the GDP in comparison with the population. This is based on the statistical data from the trade profile of each country (US, UK, Japan, Egypt and Oman) in the World Trade Organization report “Trade profiles 2009”. 26 Supra note 10, N. Saleh, Research management issues… Ahmed Abd Eltawab Elsisi and Shaikha Nasser Ali Al-Akzam 171 _______________________________________________________________________________ . 6.1. Sultan Qaboos University IP Policy, Oman The IP policy in SQU was issued in January 2006 managed by the Research & Innovation Affairs Department (RIAD) to protect the intellectual creation and innovation in the university resulted from the investment in laboratories and experimental fields. In addition, it will lead to commercialize the IP either through establishing spin-offs or licensing. But the IP policy is putting all the responsibility for the management of IPRs, including disclosure, ownership protection and commercialization on one single researcher with coordination with RIAD. This would discourage the researcher and reduce the likelihood of filing patents. On the other hand, the high royalty share of 70% for the inventor is given as encouragement to disclose and patent his/her invention. 6.1.1. Ownership of IPRs: Any IP created by the university employees (this includes the present employees and employees who left the university after creating the IP), students and visiting researchers with incidental use of university facilities belongs to the university. This is applied unless specified in an agreement of sponsored research with external organizations. 6.1.2. Income Sharing from IP: The income generated from the IP is distributed after deducting the related expenses of filing and legal expenses. The remaining income is distributed as following: inventor/s 70% and the university 30% will be divided between the research department, college and the department/research center. 6.1.3. Confidentiality Clauses: The policy emphasize that, from the idea is perceived, the inventor must not disclose the information related to his invention and keep it confidential. If it‘s necessary to disclose it to a third party, then a confidentiality and non-disclosure agreement should be signed. The inventor must keep a confidential notebook of the invention technical details of the experiments or research achievements in a time frame signed by one of the researchers as a witness. This notebook will include the invention stages and the university will rely on it as evidence in distributing the future royalties among the research team. In addition, the technical details will help in drafting the application for patent filing. 6.1.4. Where the University is unable to commercialize the IP 172 The Legal Aspects of Technology Transfer Offices in Arab Public-Funded Universities ________________________________________________________________________________ The IP commercialization shall be initiated and managed by the inventor on behalf of the university by identifying the interested companies. The university is responsible for the administrative and financial procedures related to IP protection, commercialization and licensing unless the university expresses unwillingness to proceed with it or renew the IP. In that case, the university will transfer back the IPR to the inventor unless the IP is a result of a sponsored research with a condition to prevent transferring the IPRs stated in the agreement. In the case of successful commercialization of the IP after transferring the IPR back to the inventor, the latter will benefit from any licensing or commercial contracts that may occur. In addition, he could establish a spin-off firm from the IP and the university may hold a share as a return of participating in the cost of protecting the IP. 6.2. Cairo University, Egypt In Egypt, one of the first national systems for planning and funding R&D activities was set up in 1972 with the establishment of the Egyptian Academy of Scientific Research and Technology (ASRT). ASRT serves as a national organization responsible for the planning and funding of R&D activities in Egypt as well as patents and intellectual properties. Planning is carried out through 15 specialized research councils. 27 In the Middle East, Egypt was one of the leading countries in issuing IP law. The first Egyptian IP law was issued in 1949. Then, after Egypt joined TRIPS agreement, the new law was drafted to comply with the agreement and it has been put into force since 2002. The regulation included in that law is similar to the one in the TRIPS agreement which finally gives a quite strong protection to the IPRs. According to Article 7 of the said law, the employer shall have all the rights derived from the inventions discovered by the worker or the employee during the period of work relationship or employment, insofar as the invention falls within the scope of the work contract, relationship or employment. Also, the name of the inventor shall be mentioned in the patent, and he shall be remunerated in all cases. If such remuneration was not agreed on, he shall be entitled to a fair compensation from the employer who requested the invention.28 Cairo University like all Egyptian universities, has not yet issued an IP policy. The technology transfer issue is based on a contractual agreement between the researcher and the institution in order to regulate the revenues generated from the research within the scope of the law. In addition, the university-industry 27 28 Supra note 10, N. Saleh, Research management issues… The Egyptian Law of Protecting the Intellectual Property Rights number 82/2002 Ahmed Abd Eltawab Elsisi and Shaikha Nasser Ali Al-Akzam 173 _______________________________________________________________________________ relation is under the role of the research liaison and marketing office in Cairo University but most Egyptian Universities do not have an IP or technology transfer office. This has a profound negative influence on the research environment in Egypt especially the public funded research institutions which are almost 90 percent of the research institutions in Egypt as it reflected negatively on the researchers‘ incentives to innovate. However, still we can find some inventions that are patented by the Egyptian Patent Office, but most of them are driven by individuals not research institutions. 7. RECOMMENDATIONS The factors that affect the success of technology transfer are both individual researcher‘s motivation and institutional forces from inside and outside academia such as public policy.29 Since both Arab countries are signatories of the TRIPS Agreement, the following recommendations shall be adopted inside academia: 1. Oblige universities to issue IP policies and establish TTOs responsible of evaluating the inventions, patenting procedures and commercialization. 2. Include provisions in the IP policy to monitor the patenting and the commercialization process. If the office did not start the patent procedures for an invention after a certain period of time, the inventor shall have the right to go for patenting it individually and acquire the title and the ownership for him/her automatically. On the other hand, if the inventor failed to meet the commitments in the commercialization plan, then the TTO have the right to terminate the commercialization process. 3. To compete globally, Arab public funded universities must push themselves to understand exactly what the markets want from them and learn to commercialize research outputs. 4. Like education and research, technology transfer should be part of the mission of Public funded universities in the Arab countries through its role in the community service. 5. Arab public funded universities should contribute to generate knowledge in basic science in all levels of its growth in addition to support research in applied science. 6. In the Arab countries where the industry is not strong and the surrounding IP environment is not yet well established in reality, Arab public funded universities should focus on funding research in the engineering and life science research which include biotechnology and medical research which are the most attractive for the industry. Moreover, from those fields the fruits can be harvested quicker and its affect will make a difference in the community. 29 Y. Dai, D. Popp, S. Bretschneider, Institutions and intellectual property: the influence of institutional forces on university patenting, Journal of policy analysis and management, V.24 No.3, 2005, p.p. 579-598. 174 The Legal Aspects of Technology Transfer Offices in Arab Public-Funded Universities ________________________________________________________________________________ 7. Arab public funded universities should adopt awareness programs among it‘s‘ staff and students about the IP policy and to what extent is the important effect of the IPRs. This could be in forms of seminars, workshops, etc. 8. Arab public funded universities should give higher royalty shares to the inventor in the first stage after establishing the TTOs. Meanwhile, this incentive encourages researchers to become inventors by encouraging them to disclose, protect and exploit their inventions before publishing it. Gradually, the quality, rather than the quantity, of inventions will increase. In addition, such incentive will help in preventing the brain drain problem because inventors in that case are getting compensation for their intellectual creation in their country. 9. Arab public funded universities should realize the pro-active role of the TTOs to help the university to generate funding having three primary functions: legal, technical and managerial. Therefore, keeping technology transfer professionals is a difficult task and common worldwide. But this should be done by adjusting employment and pay-scales rules to provide competitive salaries to such professionals. 10. Due to the current situation in the Arab world with under-developed industry facing lack of adopting new technologies in the market, Arab public funding universities have to realize its objectives relating to the promotion of local development through IP spillovers and a preference for local licensing agreements to smaller firms. 11. Arab public funded universities should focus on two effective tools of transferring technologies from academia to industry: First, establishing Science Parks and incubators to accommodate the new technologies and commercialize the patents in order to strengthen the industry in the longrun. Second, involving the existing firms from the research proposal stages and employs the research expertise to improve the local firm‘s product/service. 12. Arab public funded universities should adopt a balanced mix of exclusive and non-exclusive licenses and should decide depending on the type of technology. On one side, transferring the new technology and develop it as a new product in the market is a risky situation for a local business firm. So, in order to attract them, an exclusive license has to be granted to prevent competitors from exploiting the patent. On the other side, non exclusive license shall be granted to maintain disseminating the knowledge among the science community for further research. Ahmed Abd Eltawab Elsisi and Shaikha Nasser Ali Al-Akzam 175 _______________________________________________________________________________ 8. CONCLUSION This research paper is the first to explore the current situation of IP policies and TTOs in Arab public funded Universities presented by Sultan Qaboos University in Oman and Cairo University in Egypt. Major points were observed to emphasize the necessities of adopting IP policies in the Arab Universities to cope with the rapid changes in the education field as well as in the technology field. In addition, the recommendations were based on combining both analysis; the legal through the existing IP policies and the economical through WTO statistical report due to the interrelation of the IP issues with the economic and welfare of the countries. Technology transfer is a very important factor for developing research and economy in the Arab countries. To reach and maintain a competitive edge globally in education and research, Arab universities should recognize the paramount social and economic importance of the academia-industry linkage. 176 The Legal Aspects of Technology Transfer Offices in Arab Public-Funded Universities ________________________________________________________________________________ BIBLIOGRAPHY Books Monotti, S. Ricketson, Universities and intellectual property, Oxford, 2003. Y. Lee, Technology transfer and public policy, Library of congress, 1997. 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Wright, Technology transfer offices and commercialization of university intellectual property: performance and policy implications, Oxford review of economic policy, v.23 no4, 2007, pp.640-660. D. Siegel, M. Weight, IP: the assessment, Oxford review of economic policy, v.23 no4, 2007, pp.529-540. A.Zahlan, Arab societies as knowledge societies, Minerva, 2006, 44:103-112 B. Verspagen, University research, intellectual property rights and European innovation systems, Oxford, 2006 I. Macho-Stadler, D. Pérez-Castrillo, R.Veugelers, Licensing of university inventions: The role of a technology transfer office, Elsevier B.V., 2006. Y. Dai, D. Popp, S. Bretschneider, Institutions and intellectual property: the influence of institutional forces on university patenting, Journal of policy analysis and management, V.24 No.3, 2005, p.p. 579-598. S. Lach, M. Schankerman, Incentives and invention in universities, Center for Economic Policy Research, 2003. N. Saleh, Research management issues in the Arab countries, International Association of Universities, 2002. R. Nelson, Observations on the post-bayh-dole rise of patenting at American universities, Journal of technology transfer, 26, 2001, pp13-19 D. Mowery, R. Nelson, B. Sampat, A. Ziedonis, The growth of patenting and licensing by U.S. universities: an assessment of the effects of the Bayh–Dole act of 1980, Research Policy,Volume 30, Issue 1, January 2001, Pages 99-119 178 The Legal Aspects of Technology Transfer Offices in Arab Public-Funded Universities ________________________________________________________________________________ L. Fisher, The Innovation Incubator, Strategy+Business Magazine, Issue13, 1998. T. Massaro, Innovation, technology transfer, and patent policy: the university contribution, Virginia Law Review,V. 82, 1996, p.p 1729-1735. R. Eisenberg, Public Research and Private Development: Patents and TT in government-sponsored research, 1996. v.82, Virginia Law Review, 1996, p.p 1663-1727. Laws and Policies Stanford University IP policy. Glasgow University IP & commercialization policy. Osaka University IP policy. Sultan Qaboos University IP policy. The Egyptian Law of Protecting the Intellectual Property Rights number 82/2002 Bayh-Dole Act 1980. THE OPTIMAL SCOPE OF PATENT PROTECTION IN COMMON LAW AND CIVIL LAW COUNTRIES by Zhao Wenhua and Zhang Zhu 1. INTRODUCTION 2. SUBJECT MATTER 2.1. In Common Law 2.1.1.Nowadays in the US 2.1.2. History of Subject Matter 2.1.3. Technology Development History in the US 2.1.4. Economic Changes in the US 2.1.5. Political Changes in the US 2.1.6. Analysis 2.1.7. Conclusion 2.2. In Civil Law 2.2.1. In the EU 2.2.2. In China 2.3. Discussion 3. NOVELTY, UTILITY, NON-OBVIOUSNESS 3.1. Novelty 3.1.1. In Common Law 3.1.2. In Civil Law 3.2. Utility 3.3. Non-obviousness 3.3.1. In Common Law 3.3.2. In Civil Law 3.4. Discussion 180 The Optimal Scope of Patent Protection in Common Law and Civil Law Countries ________________________________________________________________________________ 4. THE SCOPE OF CLAIMS 4.1. Disclosure 4.1.1. In Common Law 4.1.2. In Civil Law 4.2. The Scope of Claims 4.2.1. Literal Infringement 4.2.2. the Doctrine of Equivalents 5. TERMS OF THE PATENT 5.1. In Common Law 5.2. In Civil Law 5.2.1. In the EU 5.2.2. In China 6. CONCLUSIONS Zhao Wenhua and Zhang Zhu 181 ______________________________________________________________________________ 1. INTRODUCTION In the last decades, patent laws have been changed more rapidly.1 The subject matters of patent law have been developed, such as software, business methods, generic methods, etc. No surprisingly, therefore, patent laws have been at the centre of the policy and economic agenda over the last 30 years. 2 Look back to the history, we would find the changes of the scope of patent protection, and we would have interest to find what will be, and how it could be. For us, we want to do some researches to find what would be the optimal scope of Patent Laws. On 1884, Paris Convention on the Protection of Industrial Property was built. It cost more than one century to develop members‘ number from first 11 to 173 till 2008, 3which gives influence to the whole word, but could not provide a harmonized dispute solution. On 1994, GATTs gives more attention on IP, and TRIPs came to the international stage4, which made big effects on worldwide patent law‘s development, now it has 153 members5, and built a new legal system of DSB6. After that, many countries make their efforts to try to harmonize patent laws.7 On these basis, we will list some acts in Common laws and Civil Laws, try to compare Patent laws under Common Law system and Civil Law system, find difference between them, abstract the common regulations in them, put forward analysis including legal parts, political parts, economic parts and so on, give suggestion of what will be the optimal choice for them. 1 EC patent laws give 13 editions during last 30 years (1977-2007), nearly every 2 years a new version, under legal system, it is amazing for changing so often. See EPC official website. 2 On 2007, Falk Martin wrote an article about ―What Determines Patents per Capita in OECD Countries?‖, introduced elements affecting patent application through 22 members of OECD, including policy and economy. Article, See, http://findarticles.com/p/articles/mi_qa5417/is_200704/ai_n21288317/pg_1?tag=artBody;col1. And, to the Common Law, we could find topics of ―on the political economy of patent reform in the US‖, see Landes and Posner (2004) and Scherer (2007) . 3 See Statistics of Paris Convention for the Protection of Industrial Property, provided by WIPO. 4 In the Uruguay Round Agreement, the TRIPS Agreement is Annex 1C of the Marrakesh Agreement Establishing the World Trade Organization, signed in Marrakesh, Morocco on 15 April 1994. See WTO official website. 5 See WTO website, 153 members on 23 July 2008 (with dates of membership). 6 See Dispute Settlement Body Of WTO 7 The most important example is what happened in USA. On April 18, 2007, U.S. Congress proposed the bill of Patent Reform Act ( S1145), which made many harmonizations between Common Law system and Civil Law system. Act, See 110th CONGRESS Calendar No. 563,1st 110th CONGRESS,2d Session, S. 1145[Report No. 110-259] 182 The Optimal Scope of Patent Protection in Common Law and Civil Law Countries ________________________________________________________________________________ 2. SUBJECT MATTER In order to be eligible for patent protection, an invention must fall within the scope of patentable subject matter. Patentable subject matter is always established by statute, and is usually defined in terms of the exceptions to patentability.8 The statutory subject matter requirement pertains to the kinds of inventions that are eligible for patent protection.9 Generally, patents shall be available for any invention, whether products or processes, in all fields of technology.10 But actually, it differed widely from country to country as what can be patentable subject matter or not. Subject matter is the most important element of patent protection. If one invention was excluded out of subject matter, it never could be protected by patent laws. We will try to tell the difference between Common legal system and Civil legal system, and discuss the optimal scope in Common law and Civil law. 2.1. In Common Law 2.1.1. Nowadays in the US According to United State patent law, ―Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefore, subject to the conditions and requirements of this title.‖11 The courts have taken an expansive view of statutory subject matter; in case Diamond v. Chakrabarty, which happened on 1980, the Supreme Court made the following points: ―this Court has read the term ‗manufacture‘ in § 101 in accordance with its dictionary definition to mean ‗the production of articles for use from raw materials prepared by giving to these materials new forms, qualities, properties, or combinations whether by hand labor or by machinery.‘‖―The Committee Reports accompanying the 1952 act inform us that Congress intended statutory subject matter to ‗include any thing under the sun that is made by man.‘ S. Rep. No. 1979, 82d Cong., 2d Sess., 5 (1952).‖ ―This is not to suggest that § 101 has no limits or that it embraces every discovery. The laws of nature, physical phenomena, and abstract ideas have been held not patentable.‖12 8 See WIPO Intellectual Property Handbook, 2006, 18 ff. Craig Allen Nard, The Law of Patents, Aspen Publisher, 2008, 109 ff 10 See Article 27.1 of the TRIPS Agreement. 11 See 35 U.S.C 101 12 See case Diamond v. Chakrabarty 9 Zhao Wenhua and Zhang Zhu 183 ______________________________________________________________________________ Indeed, Chief Justice Burger famously wrote that ‗‗Congress intended statutory subject matter to ‗include anything under the sun that is made by man.‖13 In fact, it was not easy to say after that anything under the sun that is made by man always could be granted patent. There were lots of changes in the US patent laws, and we can trace the development of the scope of subject matter. 2.1.2. History of Subject Matter The first United States Patent Act that of 1790 was a short act of seven sections only entitled ―An act to promote the Progress of Useful Arts‖.14 Under its terms any two of the Secretary of State, the Secretary of War and the Attorney General were empowered to grant patents for terms of up to fourteen years for inventions that were "sufficiently useful and important" provided that the grantee submitted a specification describing the invention (and where appropriate a model thereof) to the Secretary of State at the time of the grant.15 There was no direct definition of scope of subject matter. In 1793, patent law was amended. Under it, first time a definition was given: any new and useful art, machine, manufacture or composition of matter and any new and useful improvement on any art, machine, manufacture or composition of matter.16 In 1842 a statute was passed to provide for the grant of patents for "any new and original design for a manufacture or for printing on a fabric.17 In 1930, the Plant Patent Act provided for the possibility of patent protection for asexually reproduced plants. In 1952, patentable subject matter was changed by replacing the eighteenth century word "art" by "process". In 1954, Provisions relating to plant patents were amended to make it clear that cultivated sports, mutants, hybrids and newly found seedlings were patentable. 13 Craig Allen Nard, The Law of Patents, Aspen Publisher, 2008, 110 ff. A similar title was used for all acts relating to patents before the consolidation of 1870. 15 See ―A Brief History of the Patent Law of the United States,‖ there is no author for this article. http://www.ladas.com/Patents/USPatentHistory.html 16 See "Patent Act 1793" section 1; the term "art" was replaced by "process" in 1952 but this term is itself defined as a "process, art or method" 35 USC 101 17 See ―A Brief History of the Patent Law of the United States,‖ there is no author for this article. http://www.ladas.com/Patents/USPatentHistory.html 14 184 The Optimal Scope of Patent Protection in Common Law and Civil Law Countries ________________________________________________________________________________ In 1980, Supreme Court upholds the patentability of a genetically modified bacterium quoting the Congressional report leading up to the 1952 Act that "anything made by man under the sun" should be patentable.18 But even after this decision, in 1989, United States Court of Appeals for the Federal Circuit made a decision that denied software to be a patent by holding a pre-solution step of gathering data incapable of imparting patent-eligibility under § 101.19 In 1992, under courts‘ decision, software was able to be eligible subject matter.20 On March 29, 1996, Examination Guidelines for Computer-Related Inventions applied.21 In 1998, The Court of Appeals for the Federal Circuit in State Street Bank v. Signature Financial22 holds that there is no prohibition in U.S. law on patents for business methods as long as they are new, useful and non-obvious. Therefore, after the brief review of US patent law‘s history, we could find eligible subject matter was always changed with time goes on. 2.1.3. Technology Development History in the USA At the same time, technology has changed fast. The First Industrial Revolution happened in the late 18th and early 19th centuries when major changes in agriculture, manufacturing, production, and transportation had a profound effect on the socioeconomic and cultural conditions in Britain.23 The changes subsequently spread throughout Europe, North America, and eventually the world. The signal was the application of power-driven machinery to manufacturing, such as stationary steam engine.24 The Industrial Revolution began an era of per-capita economic growth in capitalist economies.25 18 See Diamond v. Chakrabarty 206 USPQ 193. See In re Grams, 888 F.2d. 835, 838-39 (Fed. Cir. 1989). 20 See Arrhythmia Research Technology, Inc vs. Corozonix Corp (Feb.Cir.1992), and In re Alappat (Feb.Cir.1992) 21 See Examination Guidelines for Computer-Related Inventions,61 federal Register 7478(Feb.28 1996) 22 See 149 F.3d. 1368 47 USPQ2d 1596 (Fed Cir 1998). 23 There were many different opinion of when the Industrial Revolution began, but the common opinion is late 18th century. 24 There are many innovation on that time, which are big steps to development, including textiles, steam power, and iron founding. 25 Lucas, Robert consider "annual growth rates of 2.4 percent for the first 60 years of the 20th century, of 1 percent for the entire 19th century, of one-third of 1 percent for the 18th century. See 19 Zhao Wenhua and Zhang Zhu 185 ______________________________________________________________________________ In the USA, it first happened in Lowell, Massachusetts26. During this period, the most common inventions were about machine manufacture. After the 1850s, there came further progress in the application of electricity and cheap steel technology.27 In succession, telegraph, plane, radio, TV and so on came one by one. In 1940s, computer appeared first time. In 1980s, software grew up, went into not only enterprise use but private use. In 1990s, business methods became popular in money market, especially in investment banks.28 If we reflected the technology development to patent eligible subject matter, we could find they have direct ratio relationship. Technology development changes the range of subject matter, takes wider scope of subject matter. 2.1.4. Economic Changes in the USA In 1790, USA had established for short time, things were bad that time. The economy was struggled during the happening war. 29USA had no much stronger economic power that time. Technology developing makes economy better. But conflict between the North and the South of American grew, and since 1849, Civil War happened. Economy rushed down.30 "The Industrial Revolution Past and Future".2003 annual report essay. Whole article could be found on the website: http://www.minneapolisfed.org/publications_papers/pub_display.cfm?id=3333 26 Lowell, Massachusetts is considered the Cradle of the American Industrial Revolution, as it was the first large-scale factory town in America. See history of Lowell, Massachusetts 27 It was not until 1873 that a dynamo capable of prolonged operation was developed, but as early as 1831 Michael Faraday demonstrated how electricity could be mechanically produced. Through the nineteenth century the use of electric power was limited by small productive capacity, short transmission lines, and high cost. Up to 1900 the only cheap electricity was that produced by generators making use of falling water in the mountains of southeastern France and northern Italy. Italy, without coal resources, soon had electricity in every village north of Rome. Electric current ran Italian textile looms and, eventually, automobile factories. As early as 1890 Florence boasted the world's first electric streetcar. 28 There were more and more technology invention to be mentioned, such as satellite, space shuttle. 29 We can find the first several decades of USA was war time. American colonists fought off the British army in the American Revolutionary War of the 1770s and issued a Declaration of Independence in 1776. Seven years later, the signing of the Treaty of Paris officially recognized independence from Britain. See History of the United States, http://en.wikipedia.org/wiki/History_of_the_United_States#Westward_expansion_.281789.E2.80.9 31849.29 30 Civil war era happened in the middle of the 19th century, white Americans of the North and South were unable to reconcile fundamental differences in their approach to government, economics, society and African American slavery, Which led to the Civil War. In 1965, the North of American won. See History of the United States, http://en.wikipedia.org/wiki/History_of_the_United_States#Westward_expansion_.281789.E2.80.9 31849.29 186 The Optimal Scope of Patent Protection in Common Law and Civil Law Countries ________________________________________________________________________________ In 1865, Civil war was over. There came the era for rreconstruction and the rise of industrialization, which made the consequence of progressivism. USA became the most important rich country before World War Ι. Because of the special geographical location, World War Ι took little harm to USA, on the contrary, USA made more health economic steps, and became the largest economic entity. In the 1920s and 1930s the Great depression came. In the later 1930s, World War Two took place. Before USA joined, The War provided immediate benefits to the U.S. economy because it led to a substantial increase in exports.31 When joined, The War stimulated martial relevant industries, such as steel manufacture. After world War Two, US got bigger and bigger progress in economy. After 1980s, economy gets more benefits from High-technology product, and takes more and more welfare to whole US. 2.1.5. Political Changes in the USA Policy is one of important factors to patent protection, when policy trending to protect more rights, patent protection went into broad range, and with tough policy, patent would be confined into a narrow space tightly. During late 18th century and early 19th century, USA was only consisted of north states. The most important policy was how to defend USA, and establishing a whole legal system and a whole government system. Reflecting to patent law, patent law was simple in 1790, and amended with a whole definition on subject matter in 1793. In 1890, Sherman Act passed, which is forming the basis for antitrust law32 , which showed policy to keep balance between public welfare and private interest. Competition policy always influences the patent authorization.33 During 1930s and 1940s, policy turned to give more and more severe restriction to patent protection. For example, during the depression and World War II, the courts were generally not sympathetic to patents. Indeed in 1941, in Cuno Engineering v. Automatic Devices Corp,34 the Supreme Court suggested that to be 31 Dr. Carole E. Scott, ―American Economic History‖, See http://freepages.history.rootsweb.ancestry.com/~cescott/economics.html 32 Sherman Act have no direct effect to patent law, but after that, antitrust law gives principle how to defend unfair competition arose by patent exclusive rights. 33 Nowadays, some competition policy trends to circumscribe patent pool application. 34 See 314 U.S. 84, 51 USPQ 272 Zhao Wenhua and Zhang Zhu 187 ______________________________________________________________________________ patentable an invention must "reveal the flash of creative genius not merely the skill of the calling". After World War Two, policy comes into positive time, pays more attention to economic affairs, and technology development, and makes more projects to promote welfare of the whole society. In US, policy for innovation always changes with the whole environment, sometimes stimulates, sometimes balances, totally, which is trending to protect each invention in special regulation. 2.1.6. Analysis What is the factor to influence patent law? Every body could give the answer, but there are some obvious factors including economy, policy and technology. What will be the most important factor? Maybe the most important factor in different time is different, sometimes economic factors would take the important position, e.g. during the depression through 1920s and 1930s, patent was tough restricted, and hard to achieve. Back to late 19th century, one clear affair was antitrust policy. In early 20th century, political power took on in every area, especially in patent system; there were fewer patents to be granted. After world war two, USA got a big chance to develop itself, began to incent innovation, and in 1952, patent law was a whole amendment which is the foundation of today‘s patent law. Since 1950s, USA has more innovations on computer-related area and business industries. With technology, economic and political changes, patentable subject matter changes lot. We try to analysis how software got to be subject matter to tell how the influence works.35 35 Sometimes, people may confuse softwares with programs, programs have longer history than software. Here, softwares only mean computer software, and we will focus on those not programs. 188 The Optimal Scope of Patent Protection in Common Law and Civil Law Countries ________________________________________________________________________________ 1. Background Software came with computers. Since computer into market, software went into market.36 First several decades, only several independent companies got orders from US government and big companies, which took software industries into rapid development.37 Software grew strong and strong, till 1980s, which was one of big industry in US. But the great achievement was in 1990s; Microsoft, Oracle, Sun companies and so on became independent from hardware, and got more attractive. Especially, in 1993, National Information Infrastructure came into implementation.38 2. Case law First period (1946-1978), is a period without patent protection. Software was not the eligible subject matter. The Supreme Court refused to authorize patent rights to computer software. In Gottschalk vs. Benson, 409U.S.63(1972) case, The Supreme Court held that a patent cannot cover all possible uses of a mathematical procedure or equation within a computer. That would be tantamount to granting the inventor a patent on the mathematical procedure itself, and this was no more acceptable than granting Samuel Morse a patent covering all possible uses of magnetism to communicate, rather than a narrower patent covering only the specific way in which Morse actually used magnetism to communicate in his telegraph. The court then said that "[i]f these programs are to be patentable, considerable problems are raised which only committees of Congress can manage ...." This decision was accepted as a final determination that computer programs were not patentable, and the Patent Office immediately ceased examining all 36 In 1949, the language Short Code appeared . It was the first computer language for electronic devices and it required the programmer to change its statements into 0's and 1's by hand. Still, it was the first step towards the complex languages of today. In 1951, Grace Hopper wrote the first compiler, A-0. A compiler is a program that turns the language's statements into 0's and 1's for the computer to understand. This lead to faster programming, as the programmer no longer had to do the work by hand. And after those, software was easy to produce. See www.byte.com. 37 Big orders were all from US government, for example, the SAGE project for continental air defense (1949-1962) costed nearly 8 billion dollars, which is the first huge software project in the history. See Dag Spicer,” Dr. Strangelove Meets IBM: The SAGE System‖, http://www.ddj.com/architect/184403974 38 The National Information Infrastructure (NII) was the product of the High Performance Computing and Communication Act of 1991. It was a telecommunications policy buzzword, which was popularized during the Clinton Administration under the leadership of Vice-President Al Gore. It was a proposed, advanced, seamless web of public and private communications networks, interactive services, interoperable hardware and software, computers, databases, and consumer electronics to put vast amounts of information at users' fingertips. A side-effect of the Clinton Administration programs to build the NII was a push by cultural industries to expand the scope of copyright. This led to the creation of the WIPO Copyright Treaty and the passage of the Digital Millennium Copyright Act. It was also used by the patent industry in order to widen the scope of patentability. Zhao Wenhua and Zhang Zhu 189 ______________________________________________________________________________ computer program inventions.39 In the case Dann vs. Johnston, 425 U.S.219(1976) and Parker vs.Flook,437 U.S.584(1978), The Supreme Court still refused to grant patent rights.40 Second period was a limited patent protection period (1978-1992). During this period, The Supreme Court didn‘t deny each case. In 1981, in Diamond v. Diehr, 450 U.S. 175 (1981) case, The Supreme Court ordered the P.T.O. to grant a patent on an invention even though computer software was utilized. 41As such, this case is important in the history of software patents. The invention in this case relates to a method for determining how rubber should be heated in order to be best "cured." The invention utilizes a computer to calculate and control the heating times for the rubber. However, the invention (as defined by the claims) included not only the computer program, but also included steps relating to heating rubber, and removing the rubber from the heat. The Supreme Court stated that in this case, the invention was not merely a mathematical algorithm, but was a process for molding rubber, and hence was patentable. This was true even though the only "novel" feature of this invention was the timing process controlled by the computer.42 But only eight years later, in In re Grams, 888 F.2d 835 (Fed. Cir. 1989) case, the Federal Circuit stated that these remaining steps were ―a procedure for solving a given kind of mathematical problem." The court cited the rule of In re Abele, which stated that: ―if a claim would be otherwise statutory, albeit inoperative or less useful without the algorithm, the claim likewise presents statutory subject matter when the algorithm is included.‖43 The Federal Circuit would not interpret this language as declaring any claim that was statutory without the algorithm as patentable. It also pointed to the ―provided that" qualification in Abele as denying effect to field of use limitations or nonessential post-solution activity. The court decided that the claimed process was nonstatutory subject matter because the step of performing lab tests ―merely provides the data for the algorithm,‖ and that whether or not the claims required that the method be performed by a programmed computer was irrelevant to the determination of whether the claim defined a Section 101 process.44 Last period (1992- ) is the width protection period. In 1992, in Arrhythmia Research Technology, Inc vs. Corozonix Corp (Feb.Cir.1992) case45, the 39 See Gottschalk vs.Benson,409U.S.63(1972), http://www.oyez.org/cases/19701979/1972/1972_71_485/ 40 See Dannvs.Johnston,425 U.S.219(1976), Parker vs.Flook,437 U.S.584(1978), in those case, the Supreme Court thought software could not be patentable, and no mere mathematical algorithm could be patentable. 41 See Diamond v. Diehr, 450 U.S. 175 (1981), http://supreme.justia.com/us/450/175/case.html 42 See Diamond v. Diehr, 450 U.S. 175 (1981) 43 See In re Abele, 684 F.2d 902 (C.C.P.A. 1982) . 44 See In re Grams, 888 F.2d 835 (Fed. Cir. 1989) 45 See Arrhythmia Research Technology, Inc vs. Corozonix Corp (Feb.Cir.1992) 190 The Optimal Scope of Patent Protection in Common Law and Civil Law Countries ________________________________________________________________________________ transformation of electrocardiograph signals from a patient's heartbeat by a machine through a series of mathematical calculations constituted a practical application of an abstract idea (a mathematical algorithm, formula, or calculation), because it corresponded to a useful, concrete or tangible thing--the condition of a patient's heart, and the Court of Appeals Federal Circuit reasoned that the method claims qualified as statutory subject matter by noting that the steps transformed physical, electrical signals from one form into another form - a number representing a signal related to the patient's heart activity, a non-abstract output. In 1994, further, In re Alappat, 33 F.3d 1526, at 1544, 31 U.S.P.Q.2d 1545 (Fed. Cir. 1994) case, the Court of Appeals Federal Circuit confirmed that software could be patentable subject matter.46 In 1996, USPTO applied ―Examination Guidelines for Computer-Related Inventions‖. 3. Analysis When software could not be popular goods, and could not make more economic benefits, no regulation would give the patent protection to software. But when technology developed, software came into more popular in the market, and made more and more money. The first condition is technology development, if no quick progress happened, there were not enough numbers of companies to pursue the absolute monopoly rights. Now software industry could not be replaced, which spreads every where. If no personal computer makes, software industry could develop so quickly, now each computer has to have many softwares, or could not work. When we reviewed the economic rate, we could find in the last few decades, software industry got larger and larger rate in US GDP.47 More and more huge software companies appeared. Never mind made in US or other nations because of outsourcing, software industry has much more influence to whole economy. For the political reasons, U.S government supported software development from the first period, and with software industry growing, adapted their policy to support. For instance, in 1991, NII was proposed, in 1993, NII came in to implementation. The corresponding relationship of patent law and economic, technology, political factors could be easy found. What will be considered is how to find the future influence, which will decide the optimal scope of subject matter. 46 47 See In re Alappat, 33 F.3d 1526, at 1544, 31 U.S.P.Q.2d 1545 (Fed. Cir. 1994) See Bureau of Economic Analysis of U.S. Zhao Wenhua and Zhang Zhu 191 ______________________________________________________________________________ 2.1.7. Conclusion Summarizing U.S. Patent legal, economic, political and technical history, from 1790-2007, could find three important factors during the development of Patent law: economic, political, technical factors. Educational and other factors will not be focused. In the historical view, we should connect those with the development of globalization, we could find patents become more and more important for US Goods in the world, such as Qualcomm Company, which has got lots of profits from his patents‘ pool, not only in USA, but all over the world. Let us imagine that if no export, what would be? Maybe we could read some materials of North Korea, 48 we could find no argue on the scope of patent protection. Patent could be barriers for other countries‘ competitors, especially in hightechnology fields. In order to keep advantage, US will continue strength the patent power and give more and more broad scope of the subject matters. 2.2. In Civil Law 2.2.1. In the EU According to EPC, European patents shall be granted for any inventions, in all fields of technology, provided that they are new, involve an inventive step and are susceptible of industrial application.49 The subject matter will be any inventions, in all fields of technology. EPC give a list to exclude some kinds of inventions out of the subject matter, if not on the exception list, it could follow Article 52(1), and be patentable. The following in particular shall not be subject matter: ―(a) discoveries, scientific theories and mathematical methods; (b) aesthetic creations;(c) schemes, rules and methods for performing mental acts, playing games or doing business, and programs for computers;(d) presentations of information.‖50 And in Article 53, there are exceptions to be subject matter: ―(b) plant or animal varieties or essentially biological processes for the production of plants or animals; this provision shall not apply to microbiological processes or the products thereof; (c) methods for treatment of the human or animal body by surgery or therapy and diagnostic methods practiced on the human or animal body; this provision shall not apply to products, in particular substances or compositions, for use in any of these methods.‖51 48 Law on invention of North Korea, http://www.kcckp.net/ko/notice/rainbow/index.php?en+Laws+3 49 See EPC Article 52 (1) 50 See EPC Article 52 (2) 51 See EPC Article 53 192 The Optimal Scope of Patent Protection in Common Law and Civil Law Countries ________________________________________________________________________________ So, under EU patent law, subject matter is strictly defined, only the invention not in the excluding list could be subject matter. It is very clear for the inventors, they could easy to find whether or not their invention‘s patentability. But look back to the history, there are many things out of the meaning literatim. In 1998, European Union (EU) based on the consideration of the needs both of economy and respects, finally legislated Directive 98/44/EC52 to provide a clear and determinative legal protection for biotechnological inventions, which enlarges the scope of subject matters. Another thing in EU is about software. In theory, the systems should be consistent: all should follow the Convention, which says that computer programs "as such" are not eligible for patenting. But different interpretations of that rule have evolved, with the European Patent Office in particular becoming rather liberal about its granting of software-related patents. In 2002, the Commission published a draft Directive53 that intended to harmonize the approaches of the various patent offices and only permit so-called computer-implemented inventions, not pure software. Its proposal provided that, in order to be patentable, an invention that is implemented through the execution of software on a computer or similar apparatus has to make a contribution in a technical field that is not obvious to a person of normal skill in that field. The Commission considered this consistent with the 1973 Convention. But, as a result, on 6th July 2005, the proposal was killed by the European Parliament. The Commission had no plans to put forward a new draft in the near future. Also the bill delayed, but the argument never goes down. Some fear that Europe would get a much more liberal regime, like that of the US. Some fear that they would lose the patent protection they already enjoyed. And some think no patent protection would reduce competition facing companies from USA or other nations which give patent protection to software, others think it will depress innovation on software. On November, 2007, on Official Journal EPO, EPO pressed the article ―Examination of computer-implemented inventions at the European Patent Office with particular attention to computer-implemented business methods‖54, which gave some standards for computer software. In Oct. 8, 2008, the Court of Appeal in London confirmed that software can be patented if it provides a technical contribution to the state of the art, in Symbian‘s case.55 So EU has to move to patent protection for software. 52 See Directive 98/44/EC of the European Parliament and of the Council of 6 July 1998 on the legal protection of biotechnological inventions 53 See Directive on the patentability of computer-implemented inventions(2002/0047/COD) 54 See http://www.european-patent-office.org/epo/pubs/oj007/11_07/11_5947.pdf 55 See http://www.managingip.com/Article/2025189/Court-of-Appeal-confirms-software-can-bepatented.html Zhao Wenhua and Zhang Zhu 193 ______________________________________________________________________________ Nowadays, globalization makes earth like a small village, some have no protection, but some give, which will lead to confliction. How to face it? As the argument to software, EU will face more and more challenges, what will be? If analyzing factors, such as economy, policy, and technology, maybe when the benefits are so attractive that no one could resist it, the optimal scope of subject matters will be the same as USA, EU would choose broader scope. 2.2.2. In China In Chinese patent law system, any invention or utility model for which patent right may be granted must possess novelty, inventiveness and practical applicability. 56Just like EPC, it gives clear exclusion of subject matter by a list. If not on the list, the invention would be eligible. For any of the following, no patent right shall be granted: (1) scientific discoveries; (2) rules and methods for mental activities; (3) methods for the diagnosis or for the treatment of diseases; (4) animal and plant varieties; (5) substances obtained by means of nuclear transformation. For processes used in producing products referred to in items (4) of the preceding paragraph, patent right may be granted in accordance with the Provisions of this Law.57 2.3. Discussion Under the globalization economic environment, any nation would choose better regime to develop quickly. Patent protection would be the same, and the scope of subject matter would be the same too. There are many different regulations in different countries. USA has one, EU has one, and others are the same. So there will be conflict. Now, EU companies could feel it when they could not apply for patent protection on software. To some extent, they loose the competition. How to solve? Maybe the first choice is adopting the same standard. I think some day, EU will choose patent to protect software, and it will be the optimal scope for EU. Another choice is rebuilding the convention, for example, PCT could substitute domestic Law. It will depend on the negotiation. Maybe WIPO could lead it. 56 57 See Patent law of the People's Republic of China, Article 22. See Patent law of the People's Republic of China, Article 25 194 The Optimal Scope of Patent Protection in Common Law and Civil Law Countries ________________________________________________________________________________ 3. NOVELTY, UTILITY, NON-OBVIOUSNESS 3.1 Novelty The novelty is related with prior art. The novelty requirement asks whether the applicant‘s invention is new. In another meaning, the novelty requires that no other person previously knew, disclosed or invented the applicant is seeking to patent. If an invention isn‘t new, it is said to be anticipated by the prior art. 3.1.1. In Common Law Under U.S. patent law, a person shall be entitled to a patent if no conflict to novelty. In the regulation, there are many actives to destroy the novelty, including: (a)the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent, or (b)the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States, or (c)he has abandoned the invention, or (d)the invention was first patented or caused to be patented, or was the subject of an inventor‘s certificate, by the applicant or his legal representatives or assigns in a foreign country prior to the date of the application for patent in this country on an application for patent or inventor‘s certificate filed more than twelve months before the filing of the application in the United States, or (e)the invention was described in — (1) an application for patent, published under section 122(b), by another filed in the United States before the invention by the applicant for patent or (2) a patent granted on an application for patent by another filed in the United States before the invention by the applicant for patent, except that an international application filed under the treaty defined in section 351(a) shall have the effects for the purposes of this subsection of an application filed in the United States only if the international application designated the United States and was published under Article 21(2) of such treaty in the English language; or (f)he did not himself invent the subject matter sought to be patented, or Zhao Wenhua and Zhang Zhu 195 ______________________________________________________________________________ (g)(1)during the course of an interference conducted under section 135 or section 291, another inventor involved therein establishes, to the extent permitted in section 104, that before such person‘s invention thereof the invention was made by such other inventor and not abandoned, suppressed, or concealed, or (2) before such person‘s invention thereof, the invention was made in this country by another inventor who had not abandoned, suppressed, or concealed it. In determining priority of invention under this subsection, there shall be considered not only the respective dates of conception and reduction to practice of the invention, but also the reasonable diligence of one who was first to conceive and last to reduce to practice, from a time prior to conception by the other.‖58 There are still two aspects related, one is first-to-invent, the other is one-year grace period. First-to-invent asks the person applies for patent should be the first inventor. Invention ownership is determined by who can establish she was "first to invent". All other developed economies grant patent rights to she who is "first to file" a successful patent application. Clause 101 of US Code 35 states:‖ Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefore, . . ."This has further been defined by the following case law: "He who first perfected a thing is the inventor although others might have experimented with the idea." 59 and "Crude and imperfect experiments are not sufficient to confer right to patent; until invention is perfected and adapted to use it is not patentable and he who first perfects it and adapts it to use is first inventor in sense of patent law and entitled to patent." 60 Grace period: The patent laws therefore seek both to protect the public‘s right to retain knowledge already in the public domain and the inventor‘s right to control whether and when he may patent his invention. In 1839, Congress ameliorated that requirement by enacting a 2-year grace period in which the inventor could file an application. In 1939, Congress reduced the grace period from two years to one year.61 3.1.2. In Civil Law 1. In EU Law The novelty requirement is:― (1) An invention shall be considered to be new if it does not form part of the state of the art. (2) The state of the art shall be held to comprise everything made available to the public by means of a written or oral description, by use, or in any other way, before the date of filing of the European patent application. (3) Additionally, the content of European patent applications as 58 See 35 U.S.C. 102 See Agawam Co. v Jordan (1869) 74 US583, 19 L Ed 177 60 See Seymour v Osborne (1871) 78 US516, 20 L Ed 33 61 Craig Allen Nard, The Law of Patents, Aspen Publisher, 2008, 264 ff 59 196 The Optimal Scope of Patent Protection in Common Law and Civil Law Countries ________________________________________________________________________________ filed, the dates of filing of which are prior to the date referred to in paragraph 2 and which were published on or after that date, shall be considered as comprised in the state of the art. (4) Paragraphs 2 and 3 shall not exclude the patentability of any substance or composition, comprised in the state of the art, for use in a method referred to in Article 53(c), provided that its use for any such method is not comprised in the state of the art. (5) Paragraphs 2 and 3 shall also not exclude the patentability of any substance or composition referred to in paragraph 4 for any specific use in a method referred to in Article 53(c), provided that such use is not comprised in the state of the art. ‖62 2. In China Novelty means that, before the date of filing, no identical invention or utility model has been publicly disclosed in publications in the country or abroad or has been publicly used or made known to the public by any other means in the country, nor has any other person filed previously with the patent administrative organ under the State Council an application which described the identical invention or utility model and was published after the said date of filing.63 3. First-to-File and Grace Period Most Civil Law countries adopt first-to-file and six-month grace period. Grace period always is strict. In China, only three conditions could apply for grace period: (1) where it was first exhibited at an international exhibition sponsored or recognized by the Chinese Government; (2) where it was first made public at a prescribed academic or technological meeting; (3) where it was disclosed by any person without the consent of the applicant.64 Currently, the European Patent Convention (EPC) and Member States' patent laws do not offer a general grace period, except in specific situations in which a grace period is provided. Disclosure of an invention is not taken into account if it occurred less than six months before the filing of a patent application and if: (1) a third person has disclosed the invention in an abusive way that obviously harms the applicants' interests; (2) the applicant has displayed the invention at an official international exhibition falling within the terms of the Convention on international exhibitions .65 Some countries, such as Spain and Portugal, which are Member States of the EPC, have a special regulation on grace period . The Spanish patent law offers a grace period for tests carried out by the applicant or by his legal predecessor 62 See EPC Article 54 See Patent law of the People's Republic of China, Article 22 64 See Patent law of the People's Republic of China, Article 24 65 See EPC, Article 55 63 Zhao Wenhua and Zhang Zhu 197 ______________________________________________________________________________ provided that they do not imply using the invention or offering it for sale, and that they were carried out during the six months preceding the filing of the application. Under Portuguese patent law, the novelty of an invention shall not be eliminated by communications made before scientific societies or professional technical associations or for the purpose of Portuguese or international competitions or exhibitions if the patent application is filed in Portugal within 12 months. Furthermore, the grace period for abusive disclosures does not have any time limit.66 3.2. Utility The utility requirement demands the invention should be operable, in another words, the invention should be made or used and can produce effective results. While there are examples of inoperable inventions (e.g., perpetual motion machines), the operability requirement is easily satisfied. Therefore, it is more similar in Common Law countries and Civil Law countries. 3.3. Non-Obviousness The inventive step and non-obviousness reflect a same general patentability requirement present in most patent laws, according to which an invention should be sufficiently inventive — i.e., non-obvious — in order to be patented. The expression "inventive step" is predominantly used for instance in Germany, in the United Kingdom and under the European Patent Convention (EPC), while the expression "non-obviousness" is predominantly used in United States patent law. Although the basic principle is roughly the same, the assessment of the inventive step and non-obviousness varies from one country to another. For instance, the practice of the European Patent Office (EPO) differs from the practice in the United States. 3.3.1. In Common Law "Non-obviousness" is the term used in US patent law to describe one of the requirements that an invention must meet to qualify for patentability, codified in 35 U.S.C. §103. One of the main requirements of patentability is that the invention being patented is not obvious, meaning that a "person having ordinary skill in the art" would not know how to solve the problem at which the invention is directed by using exactly the same mechanism. The Graham Factors, shown below, are used by courts to determine if the claimed invention is nonobvious. Further, the combination of previously known elements can be considered obvious. As stated by Winner Int'l Royalty Corp. v. Wang, 202 F.3d. 1340, 1348 66 See Grace Period in the Industrial Property Law, http://www.iprhelpdesk.org/documents/ES_GracePeriod_0000006559_00.xml.html 198 The Optimal Scope of Patent Protection in Common Law and Civil Law Countries ________________________________________________________________________________ (Fed. Cir., 2000), there must be a suggestion or teaching in the prior art to combine elements shown in the prior art in order to find a patent obvious. Thus, in general the critical inquiry is whether there is something in the prior art to suggest the desirability, and thus the obvious nature, of the combination of previously known elements. This requirement is generally referred to as the "teaching-suggestionmotivation" (TSM) test and serves to prevent against hindsight bias (In re Kahn, Fed. Cir. 2006). As almost all inventions are some combination of known elements, the TSM test requires a patent examiner (or accused infringer) to show that some suggestion or motivation exists to combine known elements to form a claimed invention. Some critics of the TSM test have claimed that the test requires evidence of an explicit teaching or suggestion to make a particular modification to the prior art, but the Federal circuit has made clear that the motivation may be implicit, and may be provided for example by an advantage resulting from the modification. In other words, an explicit prior art teaching or suggestion to make a particular modification is sufficient, but not required for a finding of obviousness. The TSM test has been the subject of much criticism. The U.S. Supreme Court addressed the issue in KSR v. Teleflex (2006). The unanimous decision, rendered on April 30, 2007, overturned a decision of the Federal Circuit and held that it "analyzed the issue in a narrow, rigid manner inconsistent with §103 and our precedents," referring to the Federal Circuit's application of the TSM test.67 The court held that, while the ideas behind the TSM test and the Graham analysis were not necessarily inconsistent, the true test of nonobviousness is the Graham analysis. However, according to Chief Judge Michel, the TSM test remains a part of the Federal Circuit's analysis, though it is applied mindful of the decision in KSR.68 Graham Factors The factors a court will look at when determining obviousness and nonobviousness in the United States were outlined by the Supreme Court in Graham et al. v. John Deere Co. of Kansas City et al., 383 U.S. 1 (1966) and are commonly referred to as the "Graham factors"69. The court held that obviousness should be determined by looking at: (1)the scope and content of the prior art; (2)the level of ordinary skill in the art; (3)the differences between the claimed invention and the prior art; and (4)objective evidence of nonebviousness. 67 See Syllabus and Opinion of the Court in KSR v. Teleflex http://www.supremecourtus.gov/opinions/06pdf/04-1350.pdf 68 See Lawrence Ebert,More on the impact of KSR, 2007-05-01, http://www.scotusblog.com/wp/more-on-the-impact-of-KSR/ 69 See Tag, Gramham factors, http://www.fedcirc.us/index.php?option=com_tag&tag=Graham%20factors Zhao Wenhua and Zhang Zhu 199 ______________________________________________________________________________ In addition, the court outlined examples of factors that show "objective evidence of nonebviousness". They are: (1)commercial success; (2) long-felt but unsolved needs; and (3)failure of others. 3.3.2. In Civil Law 1. In the EU Pursuant to the Article 52(1) in conjunction with Article 56, first sentence, EPC, European patents shall be granted for inventions which inter alia involve an inventive step, that is, the invention, having regard to the state of the art, must not be obvious to a person skilled in the art.70 In the practice, The Examining Divisions, the Opposition Divisions, and the Boards of Appeal of the EPO almost always apply the "problem-solution approach" in order to decide whether an invention involves an inventive step. The approach consists in: (1)identifying the closest prior art, i.e., the most relevant prior art; (2)determining the objective technical problem, i.e., determining, in the view of the closest prior art, the technical problem which the claimed invention addresses and successfully solves; and (3)examining whether or not the claimed solution to the objective technical problem is obvious for the skilled person in view of the state of the art in general. 71 This last step is conducted according to the "could-would approach". Pursuant to this approach, the question to address in order to assess whether the invention involves an inventive step is the following (the question is the climax of the problem-solution approach):Is there any teaching in the prior art, as a whole, that would, not simply could, have prompted the skilled person, faced with the objective technical problem formulated when considering the technical features not disclosed by the closest prior art, to modify or adapt said closest prior art while taking account of that teaching [the teaching of the prior art, not just the teaching of the closest prior art], thereby arriving at something falling within the terms of the claims, and thus achieving what the invention achieves? 72 If the skilled person would have been prompted to modify the closest prior art in such a way as to arrive at something falling within the terms of the claims, then the invention does not involve an inventive step. The point is not whether the skilled person could have arrived at the invention by adapting or modifying the closest prior art, but whether he would have done so because the prior art incited him to do so in the hope of solving the objective technical problem or in expectation of some improvement or advantage. 70 See EPC Article 56,―An invention shall be considered as involving an inventive step if, having regard to the state of the art, it is not obvious to a person skilled in the art.‖ 71 See The Problem-Solution Approach, http://www.spiraldomain.com/6h_Problem_Solution.htm 72 See Guidelines for Examination in the EPO, 11.7.3 Could-would approach 200 The Optimal Scope of Patent Protection in Common Law and Civil Law Countries ________________________________________________________________________________ This must have been the case for the skilled person before the filing or priority date valid for the claim under examination. 2. In China Inventiveness means that, as compared with the technology existing before the date of filing the invention has prominent substantive features and represents a notable progress.73 3.4. Discussion In fact, it was more similar in common law and civil law. The difference focuses on two points, one is the first-to-file and first-to-invent, the other is grace period. Only in the court, or in the examination, judges or examiners would have different comprehension, in fact, there would be no substantial different between them. 4. THE SCOPE OF CLAIMS Patent claims are usually in the form of series of specified elements and corresponding limitations, or more precisely noun phrases, following the description portion of the invention in a patent or patent application. The claims define, in technical terms, the extent of the protection conferred by a patent, or the protection sought in a patent application. Patent claims are the touchstone of patent protection, and it is the claims that make two functions. Patent claims serve as a way for the Patent Office to determine whether an invention is patentable, and as a way for a court to determine whether a patent has been infringed. In concept, a patent claim marks the boundaries of the patent in the same way as the legal description in a deed specifies the boundaries of the property. 4.1. Disclosure The claims (typically found at the end of a patent document) provide a definition of what the patent protects. Terms used in a claim may be defined by the whole document, but ultimately only what is described in the claims is protected. The claims are always used when judging the validity of a patent (or application). When prior art is found, it must be compared against the claims to determine if the patent is new and nonobvious. Even if the "spirit of the invention" or the "general idea" is the same as in the prior art, if the claims contain one feature that is 73 See Patent law of the People's Republic of China, Article 22 Zhao Wenhua and Zhang Zhu 201 ______________________________________________________________________________ not mentioned in the prior art, the invention is new. If the one new feature is not obvious, then the claim is patentable. 74So disclosure is very important. 4.1.1. In Common Law The disclosure requirements of § 112 are perhaps the most important of any of the patentability requirements, and are at the heart of patent law‘s goal of promoting the progress of the useful arts. By requiring the patent applicant to claim the invention with clarity and to sufficiently disclose his invention to persons having ordinary skill in the art, patent law seeks to facilitate the dissemination of technical information and follow-on innovation. Moreover, the disclosure requirements oblige the patentee to provide notice to the public of what the patentee regards as the boundaries of his property right.75 There are four disclosure requirements under US patent law: (1) Enablement; (2) Written Description; (3) Best Mode; and (4) Definiteness. 76 1. Enablement United States patent law requires that the patent specification "contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same." 77 The requirement "to enable" a person of ordinary skill in the art to make and use the invention is colloquially referred to as the "enablement" requirement. A patent that does not meet the enablement requirement may be declared invalid by a court. The enablement requirement can be viewed as serving two functions: (1) information dissemination; and (2) constraining claim scope. Technical information disclosed in the patent has potential immediate value to follow-on researchers interested in improving the patented invention or to the public by contributing to the general storehouse of technical knowledge.78 2. Written Description As mentioned above, the patent specification "contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms ". 74 See Determining the scope of a patent, http://www.iusmentis.com/patents/claims/ Craig Allen Nard, The Law of Patents, Aspen Publisher, 2008, 49 ff 76 See 35 U.S.C. 112 77 See 35 U.S.C. 112 78 Craig Allen Nard, The Law of Patents, Aspen Publisher, 2008, 51 ff 75 202 The Optimal Scope of Patent Protection in Common Law and Civil Law Countries ________________________________________________________________________________ The ‗‗purpose of the ‗written description‘ requirement is broader than to merely explain how to ‗make and use‘; the applicant must also convey with reasonable clarity to those skilled in the art that, as of the filing date sought, he or she was in possession of the invention. The invention is, for purposes of the ‗written description‘ inquiry, whatever is now claimed.‘‘79 3. Best Mode The specification shall set forth the best mode contemplated by the inventor of carrying out his invention.80 Determining compliance with the best mode requirement requires a twoprong inquiry. First, it must be determined whether, at the time the application was filed, the inventor possessed a best mode for practicing the invention. This is a subjective inquiry which focuses on the inventor's state of mind at the time of filing. Second, if the inventor did possess a best mode, it must be determined whether the written description disclosed the best mode such that a person skilled in the art could practice it. This is an objective inquiry, focusing on the scope of the claimed invention and the level of skill in the art.81 4. Definiteness The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.82 Because claims delineate the patentee‘s right to exclude, the patent statute requires that the scope of the claims be sufficiently definite to inform the public of the bounds of the protected invention, i.e., what subject matter is covered by the exclusive rights of the patent. Otherwise, competitors cannot avoid infringement, defeating the public notice function of patent claims.83 In the case ―Athletic Alternatives, Inc. v. Prince Mfg., Inc., 73 F.3d 1573, 1581 (Fed. Cir. 1996) ,‖court stated that ―the primary purpose of the requirement is ‗to guard against unreasonable advantages to the patentee and disadvantages to others arising from uncertainty as to their respective rights.‘‖. The Supreme Court has stated that ―the statutory requirement of particularity and distinctness in claims is met only when the claims clearly distinguish what is claimed from what went before in the art and clearly circumscribe what is foreclosed from future enterprise.‖84. 79 See Vas-Cath, 935 F.2d at 1563-64 See 35 U.S.C. 112 81 See Eli Lilly & Co. v. Barr Laboratories Inc., 251 F.3d 955, 963, 58 USPQ2d 1865, 1874 (Fed. Cir. 2001). 82 See 35 U.S.C. 112 83 See The Patent Prospector, http://www.patenthawk.com/blog/2008/01/indefinite_drilling.html 84 See United Carbon Co. v. Binney & Smith Co., 317 U.S. 228, 236 (1942) 80 Zhao Wenhua and Zhang Zhu 203 ______________________________________________________________________________ 4.1.2. In Civil Law 1. In the EU Article 84 of the European Patent Convention (EPC) defines the function of the claims under the European Patent Convention, the function being to define the matter for which patent protection is sought. This article also imposes that the claims must be clear, concise as well as supported by the description of the European patent application or patent. The form and content of the claims are supported by Article 84, and supplemented by the Rule 43 EPC. 85 2. In China The request shall state the title of the invention, the name of the inventor or creator, the name and the address of the applicant and other related matters. The description shall set forth the invention or utility model in a manner sufficiently clear and complete so as to enable a person skilled in the relevant field of technology to carry it out; where necessary, drawings are required.86 4.2. The Principle of Protection Similar to the language in a deed for real property (i.e., land), the claims are to set out the "metes and bounds" of the intellectual property protected by the patent. They are of the utmost importance both during prosecution and litigation. 4.2.1. Literal Infringement Literal infringement demands that the accused product possess each and every limitation of at least one of the patent claims in suit. The Larami case highlights this rule as well as the importance of claim drafting, particularly drafting with an eye towards litigation and competitor conduct. Literal infringement cannot be avoided if the accused device contains additional elements not found in the claim. Literal infringement has considerable practical significance. 87 While there are relatively few published opinions, literal infringement is a common occurrence in practice, largely because of the uncertainties relating to claim interpretation, namely, ‗‗the pre-litigation ambiguity of the literal scope of the claims.‘‘ 88 85 See EPC Article 84, ―The claims shall define the matter for which protection is sought. They shall be clear and concise and be supported by the description‖ 86 See Patent law of the People's Republic of China, Article 26 87 Craig Allen Nard, The Law of Patents, Aspen Publisher, 2008, 434 ff 88 Jannice M.Mueller, An Introduction to Patent Law, Aspen Publishing 2nd ed.,2006,287 ff . 204 The Optimal Scope of Patent Protection in Common Law and Civil Law Countries ________________________________________________________________________________ 4.2.2. The Doctrine of Equivalents The doctrine of equivalents is a legal rule in most of the world's patent systems that allows a court to hold a party liable for patent infringement even though the infringing device or process does not fall within the literal scope of a patent claim, but nevertheless is equivalent to the claimed invention. U.S. judge Learned Hand has described its purpose as being "to temper unsparing logic and prevent an infringer from stealing the benefit of the invention". 89 The goal of the doctrine of equivalents is to provide patent owners with fair protection for their patents. Historically, courts took a literal approach to patent interpretation, based on established principles of legal interpretation. However, by the 18th and 19th centuries, this had come to be seen as unduly limiting on the scope of protection afforded a patent-holder, especially as patent applicants are often required to describe new technology for which an adequate vocabulary has not yet been developed. In response to this, the English courts developed a socalled 'pith and marrow' approach, which tried to distinguish between the essential and non-essential features of a patent claim when deciding infringement cases. At the same time, courts in other countries, notably the United States, developed slightly different approaches to claim interpretation, of which the 'doctrine of equivalents' is perhaps the most famous. The equivalents doctrine takes a more holistic approach when comparing the patented invention with an alleged infringing device than did the 'pith and marrow' approach. 4.3. Discussion To some extent, the claims are the most important part of a patent. Not the title, not the text, not the examples, and not the figures. It is the claims that define the boundaries of the patent owner's rights. Importantly, the patent owner's rights are exclusionary: he may exclude others from making, using, selling, offering to sell, and importing the patented invention (e.g., a product or a process) and importing a product made by a process patented in the importing country. To determine if someone is infringing a patent (that is, making or using the invention) without the patent owner's permission, the allegedly infringing product or process is compared only to the claims of the patent. Sometimes, claims defend on the demand of disclosure, and disclosure defends on the regulation. Actually, nowadays, many nations take the same steps to determine the scope of the claims. PCT is a good example for civil patent system, we could find the demands of claims, and we can easily find how broad the claims would be. The optimal scope of claims in Common Law and Civil Law countries are almost the same, sometimes they have to choose the same steps as PCT, so today claims get to be harmonized. 89 See Royal Typewriter Co. v. Remington Rand, Inc., 168 F.2d 691, 692 (2d Cir. 1948). Zhao Wenhua and Zhang Zhu 205 ______________________________________________________________________________ 206 The Optimal Scope of Patent Protection in Common Law and Civil Law Countries ________________________________________________________________________________ 5. CONCLUSIONS Firstly, subject matter should be restricted in some scope, and maybe civil law could give some more width scope; as mentioned in the article, there are three important factors to determine how broad the subject matter could be. Nowadays, globalization changes behavior of countries, though patent law is always a national law issue. More and more countries make efforts to harmonize patent law system in the worldwide range. Since USA adopted software to be subject matter, many countries amended their law to adapt the change, but it was not a good thing, which means more and more countries want to divide the market in their territories. Therefore, I think the optimal scope of subject matter is the criterion of EPC, which could be more effective and sufficient to protect patent, and provide the ability for every country to protect patent. But EPC would not have sufficient reasons to refuse broader protection, and reject the profits during the EU nations. Maybe in few years, we would find more and more countries, never mind in Common Law countries, or in Civil Law countries, including EU and China, would have to choose the broader scope of subject matters. And someday, we could find no one would think invention is necessary for a patent, many other things could be eligible. Secondly, grace period should be harmonized. And first-to-file will substitute first-to-invent. How long grace period will be is related with the choice of first-tofile and first-to-invent. Three years ago, USA made a try to change first-to-invent system into first-to-file system. So we could expect the same regulation on first-tofile system and the same length and width of grace period. Thirdly, the scope of claims will be more similar in Common Law countries and Civil Law countries. Case Kirin-Amgen, Inc. v Hoechst Marion Roussel Ltd. was quoted as a common reorganization on enablement, never mind in Common Law countries or Civil Law countries. Fourthly, nowadays, most countries choose same term of patent protection. The duration will achieve more protection under same regulations, on the other hand, some countries would refuse giving longer term protection, so it is an opportunity to harmonize the term worldwide. Finally, international treaties will be more effective, and will push the progress to whole patent system. When we look back to the history, we could find after WTO established, there were how many changes happened. It will be beneficial to each country. PCT could play an important role in the harmonization all the world, which could provide a standard for each country. THE MADRID PROTOCOL FOR TRADEMARK REGISTRATION: WOULD IT BE CONVENIENT FOR BOLIVIA? by Pablo Kyllmann1 DESCRIPTION OF RESEARCH 1. WHAT IS THE MADRID PROTOCOL? 1.1. Traditional System 1.2. Madrid Protocol 2. WHY THE MADRID PROTOCOL? 2.1 The International Conference of The Union For The Protection of Industrial Property held in Madrid, April 2 to 14, 1890 2.2. Development 3. MEMBERS OF THE PROTOCOL 3.1. Madrid Union 3.2. Does the Protocol work for the Members? 4. NOT MEMBERS OF THE PROTOCOL 4.1. Who are not Members and Why? 4.2. The Case of Bolivia 5. FINAL REMARK BIBLIOGRAPHY The Madrid Agreement concerning the International Registration of Marks (―the Madrid Agreement‖ that was concluded in 1891 and entered into force in 1892), and the Protocol Relating to the Madrid Agreement (―the Madrid Protocol‖ or ―the Protocol‖ that was adopted in 1989, entered into force on December 1, 1995, and came into operation on April 1, 1996) are treaties which were adopted at 1 Pablo Kyllmann is an attorney in private practice in Bolivia, IP LL.M. 2010 (University of Turin and WIPO), Domain Name Panellist for the .bo, and co-founder of DAK Intellectual Property (www.dak.com.bo). 208 The Madrid Protocol for Trademark Registration: Would it be Convenient for Bolivia? ________________________________________________________________________________ Diplomatic Conference held in Madrid, Spain, and are conveniently referred to jointly as ―the Madrid system‖.2 The application of these two treaties is governed by two texts, namely the Common Regulations under the Madrid Agreement and Protocol (―the Common Regulations‖ or ―the Regulations‖) and the Administrative Instructions for the Application of the Madrid Agreement and Protocol (―the Administrative Instructions‖).3 The Madrid system of international registration of marks is administered by the International Bureau of the World Intellectual Property Organization (WIPO) in Geneva, Switzerland.4 This international procedural mechanism offers a trademark owner the possibility to have his trademark protected in several countries by filing one application directly with his own national or regional trademark office. An international mark so registered is equivalent to an application or a registration of the same mark effected directly in each of the countries designated by the applicant. If the trademark office of a designated country does not refuse protection within a specified period, the protection of the mark is the same as if it had been registered by that Office. The Madrid system also deals with the subsequent management of the mark, like recording subsequent changes or to renew the registration through a procedural step at the International Bureau of WIPO. Also further countries may be designated subsequently. I will mention later which countries are members of the Madrid Union, but I can anticipate that the Madrid Union has 84 members today February 22, 2010). It is important to study this system and the possible implications that the eventual ratification and application of it would have in a specific country or region and arrive to conclusions and recommendations. I have chosen to conduct my research paper about the Protocol (not the Agreement) because the Protocol has more chances to meet the expectations of holders, representatives and contracting parties to attract more undeveloped countries also to the system. For example, the official language for the Agreement is only French, but for the Protocol the official languages are French, English, and 2World Intellectual Property Organization, Guide to the International Registration of Marks under the Madrid Agreement and the Madrid Protocol, WIPO publication, Geneva, 2008, p. A. 1. 3World Intellectual Property Organization, Guide to the International Registration of Marks under the Madrid Agreement and the Madrid Protocol, WIPO publication, Geneva, 2008, p. A. 1. 4World Intellectual Property Organization, Guide to the International Registration of Marks under the Madrid Agreement and the Madrid Protocol, WIPO publication, Geneva, 2008, p. A. 2. Pablo Kyllmann 209 ________________________________________________________________________________ Spanish. On the other hand, just States can be members of the Agreement, but States and Organizations can be members of the Protocol. The other difference is that the basic mark for the Agreement has to be a basic registration, but for the Protocol it can be a basic registration or application. Also has to be mentioned that the Protocol permits ―individual fees‖ to be decided by each Contracting Party for each designation, but with the condition of not charging higher than national fees. With respect to periods of denial, the Protocol provides for the possibility that the Contracting Parties replace the general term for the 12 months notice or the refusal of protection for a period of 18 months, or if denial is based in an opposition, an even longer period. The system has to be attractive, flexible, and user friendly, but there are concerns in countries like South American countries about the implications that the eventual ratification and application of the Protocol would have in a specific country or region. No South American country (with the exception of Cuba, Antigua and Barbuda) is a member of the system. Bolivia is not a member, so I analyse the advantages and disadvantages of the Protocol specifically for Bolivia, considering the stakeholders: IP Agents, National IP Office, National Applicants, Foreign Applicants, Bolivia itself. 1. WHAT IS THE MADRID PROTOCOL? 1.1. Traditional System A mark can get protection through different routes: a. National route (country by country), b. Regional route (Example: European Union), and c. International route (Example: Madrid system, specifically in my research paper, the Madrid Protocol). The traditional system would be the national route or national system. Anybody can use the national system filing applications in the countries of interest. The argument against this system is that there are several languages involved because each country has its own language, different national procedural rules, and lawyers in each country that make the cost are higher. But the traditional system is very important and depending the country and region has to be analyzed and used to satisfy the different interests analyzed in my research paper. 210 The Madrid Protocol for Trademark Registration: Would it be Convenient for Bolivia? ________________________________________________________________________________ 1.2. Madrid Protocol Any State which is party to the Paris Convention for the Protection of Industrial Property may become a party to the Agreement or the Protocol or both. In addition, an intergovernmental organization may become a party to the Protocol (but not the Agreement). It has to be mentioned that an international mark does not exist. The system is a procedural system, an international application must be presented to the International Bureau through the IP office which is the Office of Origin of the applicant: The IP Office of the contracting party where the applicant has: a. required company, b. domicile, or c. nationality. The system is only for family members meaning this that the system can not be used by a person or legal entity which does not have the necessary connection, through establishment, domicile or nationality, with a member of the Madrid Union. Nor can it be used to protect a mark outside the Madrid Union. The filing formalities indicate that there is one form (MM2), one language (English, French or Spanish), and payment of the following fees: a. basic fee, b. a complementary fee in respect of each designated Contracting Party for which no individual fee is payable, and c. a supplementary fee in respect of each class of goods and services beyond the third. The international registration is for ten years, renewable per periods of ten years. There is a centralized management, for example regarding also assignments, changes in name and address of holder and representative, recording of limitation, renunciation and cancellation, recording of licenses. All this at the International Bureau, not with local law firms neither with National Offices. The International Bureau does the formality examination, publication at the WIPO Gazette, inscription in the International Register, issues one certificate, and notifies it to all the designated contracting parties. An International trademark registration (ITM) means, in other words, that there is one registration with many designations. The countries that are the major users of the Madrid Protocol are Germany, France, and the United States. The average fee per registration is CHF 3.734 (Three thousand seven hundred thirty four 00/100 Swiss Francs) that are about US$ 3.638 (Three thousand six hundred thirty eight 00/100 American dollars). The ten top holders of ITM registrations in 2008 are Henkel (DE), Janssen Pharmaceutica (BE), Novartis (CH), L'Oreal (FR), Nestlé (CH), Unilever (NL), Sanofi-Aventis (FR), Siemens Building Technologies Fire & Security Products (DE), ITM Enterprises (FR), Lidle (Germany). Pablo Kyllmann 211 ________________________________________________________________________________ WIPO states that the system of international registration of marks has several advantages for trademark owners. Instead of filing many national applications in all countries of interest, in several different languages, in accordance with different national procedural rules and regulations and paying several different (and often higher) fees, an international registration may be obtained by filing one application with the International Bureau (through the Office of the home country), in one language (either English, French, or Spanish) and paying one set of fees. According to WIPO similar advantages exist when the registration has to be renewed, this involves the payment of the necessary fees, every 10 years, to the International Bureau. Likewise, if the international registration is assigned to a third party or any other change, such as a change in name and/or address, has occurred, this may be recorded with effect for all the designated Contracting Parties by means of a single procedural step. Later I will analyse the implications of this. 2. WHY THE MADRID PROTOCOL? 2.1. The International Conference of The Union For The Protection of Industrial Property held in Madrid, April 2-14, 1890 The system (first as the Madrid Agreement) was created as a system to expand a national mark. At the fourth session on April 09, 1890 at the international conference of the Union for the protection of industrial property held in Madrid (April 2 to 14, 1890), the subject of the Agreement concerning the international registration of trademarks was finally addressed. The text serving as a basis for discussion was that which had been submitted by the Swiss administration in the preceding Conference in Rome, with amendments made by Italy. The Swiss project accorded with the spirit of the International Convention of March 20, 1883, but it was criticized for depriving the signatory states of the fees they had been receiving, and for failing to take into account relevant national legislations.5 At all events, from the beginning of the Conference, national registration was regarded as the basis of international protection. But this system would be disadvantageous to signatory countries which were less developed industrially. Such countries which consumed more than they produced, and which therefore received more files from abroad than from their own nationals, would have to set very high fees for international registration, compensating with the few trademarks they filed internationally for the lack of income resulting from the shortage of direct registration of foreign trademarks in 5REGISTRO DE LA PROPIEDAD INDUSTRIAL, MINISTERIO DE INDUSTRIA Y ENERGIA, A brief history of the Madrid Agreement concerning the international registration of marks signed 1891, Impresión Epes, Industrias Gráficas, S.L., Spain, 1989. 212 The Madrid Protocol for Trademark Registration: Would it be Convenient for Bolivia? ________________________________________________________________________________ their national offices. Mr. Snyder, a delegate from the Netherlands, pointed out the inequities which would result from the adoption of this clause of the draft. In his opinion, an international surcharge of 200 francs should be added to the fees freely established by each state. This suggestion sparked a lively argument, since it would mean sacrificing one of the main purposes of the Agreement: to offer international protection of trademarks at a moderate cost.6 2.2. Development The Madrid Protocol introduced elements into the system originally created under the base of the Madrid Agreement in order to favor the accession of new States and Intergovernmental Organizations like the European Community. As mentioned, the Protocol permits ―individual fees‖ to be decided by each Contracting Party for each designation, but with the condition of not charging higher than national fees. With respect to periods of denial, the Protocol provides for the possibility that the Contracting Parties replace the general term for the 12 months notice or the refusal of protection for a period of 18 months, or if denial is based in an opposition, an even longer period. Under the Protocol it is possible to file an international applications based on a pending trade mark application, so that a trade mark owner can file an international application concurrently with or immediately after filing an application in a member jurisdiction. By comparison, the Agreement requires that the trade mark owner already holds an existing registration in a member jurisdiction. Also one significant development is the mentioned that the official language for the Agreement is only French, but for the Protocol the official languages are French, English, and Spanish. The system has been revised through the years, but it did not adjust to the necessities of all countries, so that at the beginning of 1989 only 23 countries were members. Today the Protocol has 80 members. It has to be mentioned the accession of the United States on November 02, 2003 and the accession of the European Union on October 01, 2004 as mayor accessions to the Protocol. 6 REGISTRO DE LA PROPIEDAD INDUSTRIAL, MINISTERIO DE INDUSTRIA Y ENERGIA, A brief history of the Madrid Agreement concerning the international registration of marks signed 1891, Impresión Epes, Industrias Gráficas, S.L., Spain, 1989. Pablo Kyllmann 213 ________________________________________________________________________________ 3. MEMBERS OF THE PROTOCOL 3.1. Madrid Union Together, the Contracting Parties to the Agreement and the Protocol constitute the Madrid Union, which is a Special Union under Article 19 of the Paris Convention for the Protection of Industrial Property. The mentioned article indicates the following: It is understood that the countries of the Union reserve the right to make separately between themselves special agreements for the protection of industrial property, in so far as these agreements do not contravene the provisions of this Convention. The Madrid Union has 84 current members: Albania (A&P), Germany (A&P), Antigua and Barbuda (P), Algeria (A), Armenia (A&P), Australia (P), Austria (A&P), Azerbaijan (A&P), Bahrain (P), Belarus (A&P), Belgium (A&P), Bhutan (A&P), Bosnia and Herzegovina (A&P), Botswana (P), Bulgaria (A&P), China (A&P), European Community (P), Croatia (A&P), Cuba (A& P), Denmark (P), Egypt (A&P), Slovakia (A & P), Slovenia (A&P), Spain (A&P), USA (P), Estonia (P), Former Yugoslav Republic of Macedonia (A&P), Russian Federation (A&P), Finland (P), France (A&P), Georgia (P), Ghana (P), Greece (P), Hungary (A&P), Iran - Islamic Republic of (A&P), Ireland (P), Iceland (P), Italy (A & P), Japan (P), Kazakhstan (A), Kenya (A & P), Kyrgyzstan (A& P), Lesotho (A&P), Latvia (A&P), Liberia (A& P) , Liechtenstein (A& P), Lithuania (P), Luxembourg (A&P), Madagascar (P), Morocco (A& P), Monaco (A&P), Mongolia (A& P), Montenegro (A& P), Mozambique (A&P), Namibia (A&P), Norway (P), Oman (P), the Netherlands: - Territory in Europe (A& P) and Netherlands Antilles (P), Poland (A& P), Portugal (A&P), UK (P), Czech Republic (A&P), Syrian Arab Republic (A&P), Republic of Korea (P), Republic of Moldova (A& P), Democratic People's Republic of Korea (A&P), Romania (A&P), San Marino (A& P), Sao Tome and Principe (P), Serbia (A&P), Sierra Leone (A&P), Singapore (P), Sudan (A), Sweden (P), Switzerland (A&P), Swaziland (A&P), Tajikistan (A), Turkmenistan (P), Turkey (P), Ukraine (A&P), Uzbekistan (P), Vietnam (A & P), Zambia (P). So (A) means part of the Agreement (56), and (P) means part of the Protocol (80). No protection may apply separately for Belgium, Luxembourg and the Netherlands, but only for all these three countries (Benelux) subject to payment of a fee complement or a unique individual rate. The territory of the Netherlands Antilles is part of the Kingdom of the Netherlands. However, the Benelux Trademark Act does not apply in the territory of the Netherlands Antilles. These have their own trademark law and their own Office in charge of registering trademarks. Protection from the Netherlands Antilles must be submitted through a specific designation of the Netherlands Antilles, other than the designation of the Benelux. The Madrid Protocol for Trademark Registration: Would it be Convenient for Bolivia? 214 ________________________________________________________________________________ 3.2. Does the Protocol Work for the Members? The Madrid Protocol has its advantages and disadvantages. Japan is a member of the Protocol, but 80% of the Japanese companies opt to file their trademarks through the national route. Maybe Japanese companies fear the disadvantages of the Madrid Protocol. Regarding the regional exchange of commerce, the treaty can be useful for certain regions and not for other regions; it works for some members, and not for others. 4. NOT MEMBERS OF THE PROTOCOL 4.1. Who are not Members and why? Many countries are not members of the Protocol yet because as mentioned the Protocol has its advantages and disadvantages that each country has to consider according to his own reality. The world has different regions and different countries with diverse economies and laws, and systems of Intellectual Property protection. For each country there are stakeholders that have to be taken into consideration the moment of studying this system and the possible implications that the eventual ratification and application of it would have in a specific country or region and arrive to conclusions and recommendations. 4.2. The Case of Bolivia My analysis considers the stakeholders (IP Agents, National IP Office, National Applicants, Foreign Applicants, Bolivia itself): IP Agents The registration is done for 10 years and renewals and changes are done directly at the International Bureau of WIPO, not with local agents. This situation is against the income of the IP agents. Law firms reduce staff, so less people specializes in IP. Agents can prepare themselves for the eventual ratification of the Protocol because it is mentioned that litigation will increase, licenses too, but actually it is uncertain and in a country like Bolivia where judges and authorities do not now work properly regarding litigation, less will litigation work if the registration of the trademark is in the International Bureau. Unfortunately IP is seen many times as a strange distant discipline, and could be seen further away with the Protocol. It is not good to centralize the applications in Geneva, it is like State control, and it is difficult to conduct searches. Pablo Kyllmann 215 ________________________________________________________________________________ National IP Office The National Office has to work well for receiving a system like the Protocol. In Bolivia, the National IP Office is not ready for the Protocol. It needs capacity building and automation first, support staff. The registration is done for 10 years and renewals and changes are done directly at the International Bureau of WIPO, not with local agents, and not with the National Office, so it is replacing those important works for the National Office and income. The National Office loses competence with the Protocol, does not only lose the competence to do the formality examination, but also loses the competence to renew the trademark or to record the following changes regarding the trademarks (changes of name, address, etc.), so there is a limitation in the work for the National IP Office, also taxes are not paid locally. The publication is insufficient because the international applications are published in the WIPO Gazette. The applications could be republished in the country again, but the cost would be too high. The law in Bolivia obligates to publish the applications in Bolivia, so the Protocol is against Bolivian law. I see constitutional problems and sovereignty problems because also when a country ratifies the Protocol the Assembly takes legislative decisions and can modify the system. The territoriality justification for sovereignty and jurisdiction is an argument that is important. Now it is not possible to file an international application directly in Geneva at the International Bureau, but maybe in the near future the Assembly will decide to change the rules, so that also any other change can happen through the Assembly and not the Legislative Power of a certain country. National Applicants If the country does not use the right to deny the application, an administrative positive silence is applied, so that the trademark is considered registered. This can bring problems because the National Office should mention if accepts or not the application. From year 2010 all countries will have to communicate their decision. Till 2009 if there was no opposition the international application was considered registered and problems can arise if that application is very similar or identical to an existent trademark and the National Office did not deny it properly on time for examination difficulties, and the public itself can suffer confusion. The National Office receives income from the designations and the country can establish individual fees with the condition that those individual fees are not higher than national fees, so if we increase the individual fees for Bolivia, national fees will also have to be increased in detriment of national applicants (national users). There is also the problem of the central attack, there is no security. I mean, there is the possibility to transform and re-file the application locally, but maybe it 216 The Madrid Protocol for Trademark Registration: Would it be Convenient for Bolivia? ________________________________________________________________________________ is better to file directly in the market of interest. For example, regarding Japan, 80% of the Japanese companies opt to file their trademarks through the national route. Maybe Japanese companies fear the ―central attack‖. The Protocol is a mechanism that facilitates the access to transnational companies, is not good for local companies because Bolivia does not export trademarks as much as receiving them. Local companies have to defend and file oppositions against new international applications, so it is not good for local companies. The searches cost increases and is more complicated with the Protocol. Foreign Applicants The Protocol reduces costs for companies that export much IP and simplifies the monitoring of the trademarks. A Contracting Party, indicating the motives, can deny the protection of the international application in his territory after 12 to 18 months after the publication of the application. In Bolivia it takes about 10 months from application to registration. With the Protocol the country can communicate the acceptance or denial before, but I believe our National Office would take the 12 to 18 months to do so if Bolivia ratifies the Protocol, so it would not be good for the foreign applicants. Also a problem is the one regarding to the ―central attack‖. There is the possibility to transform and file an application locally, but it is better to file directly in the market of interest. With the Protocol the search cost increases and is more complicated. The Case of Bolivia Bolivia is a developing country, not an emerging economy. The world has a widely variant economic reality, and attitudes toward IP tend to differ greatly between countries that import IP and countries that export it. 5. FINAL REMARK The regional exchange in South America tells us to wait and see. There is no value addition for Bolivia for ratifying the Protocol. Pablo Kyllmann 217 ________________________________________________________________________________ BIBLIOGRAPHY Books David Bainbridge, Intellectual Property, Longman, 7th Ed, 2009. E.P. WINNER. A.W. DENBER, International Trademark Treaties with Commentary, Oceana Publications, Inc., Dobbs Ferry, New York, USA, 2004. F.M. ABBOTT-TH. COTTIER-F. GURRY, International Intellectual Property in an Integrated World Economy, Aspen Publishers, New York, USA, 2007. L.E. BERTONE-G. CABANELLAS, Derecho de marcas, Marca, Designaciones Y Nombres Comerciales, Tomo I and II; Editorial Heliasta, Buenos Aires, 2003. Lionel Bently-Brad Sherman, Intellectual Property Law, Oxford University Press, 2009. M. LOBATO, Comentario a la Ley 17/2001, de marcas, Ed. Thomson Civitas, 2a ed., 2007. REGISTRO DE LA PROPIEDAD INDUSTRIAL, MINISTERIO DE INDUSTRIA Y ENERGIA, A brief history of the Madrid Agreement concerning the international registration of marks signed 1891, Impresión Epes, Industrias Gráficas, S.L., Spain, 1989. S. ALIKHAN, World Intellectual Property Organization, Socio-Economic Benefits of Intellectual Property Protection in Developing Countries, WIPO publication, Geneva, 2000. Willliam Cornish-David Llewelyn, Intellectual Property: Patents, Copyright, Trade Marks and Allied Rights, Thomson-Sweet & Maxwell, 2007. World Intellectual Property Organization, Guide to the International Registration of Marks under the Madrid Agreement and the Madrid Protocol, WIPO publication, Geneva, 2008. World Intellectual Property Organization, Intellectual Property A Power tool for Economic Growth, WIPO publication, Geneva, 2003. World Intellectual Property Organization, Summaries of Conventions, Treaties and Agreements Administered by WIPO, WIPO publication, Geneva, 2006. World Intellectual Property Organization, The Madrid Agreement Concerning the International Registration of Marks and the Protocol Relating to 218 The Madrid Protocol for Trademark Registration: Would it be Convenient for Bolivia? ________________________________________________________________________________ that Agreement: Objectives, Main Features, Advantages, WIPO publication, Geneva, 2008. World Intellectual Property Organization, WIPO Intellectual Property Handbook, Second Edition, WIPO publication, Geneva, 2004, Reprinted 2008. Articles DENIS S. PRAHL, The Madrid Protocol: International Trademark Protection for United States Trademark Owners, USA, 2003 (www.marcasur.com). F. TRIANA-SOTO, Aspectos polémicos del Protocolo de Madrid, Colombia, 2006 (www.dinero.com). J. BARREDA, The Madrid Protocol: Does it require a revision? In Trademark World No. 118, 1998/1999, 29-33. W.D. UBEDA, No al Protocolo de Madrid en el CAFTA, Nicaragua, 2004 (www.marcasur.com). Laws and Treaties Arreglo de Madrid relativo al Registro Internacional de Marcas, del 14 de abril de 1891, revisado en Bruselas el 14 de diciembre de 1900, en Washington el 2 de junio de 1911, en la Haya el 6 de noviembre de 1925, en Londres el 2 de junio de 1934, en Niza el 15 de junio de 1957, en Estocolmo el 14 de julio de 1967 y modificado el 28 de septiembre de 1979-Protocolo concerniente al Arreglo de Madrid relativo al Registro Internacional de Marcas, adoptado en Madrid el 27 de junio de 1989, modificado el 3 de octubre de 2006 y el 12 de noviembre de 2007Reglamento, texto en vigor el 1 de septiembre de 2008-Instrucciones Administrativas, texto en vigor el 1 de enero de 2008. Constitución Política del Estado, Estado Plurinacional de Bolivia. Decisión 486, Régimen Común sobre Propiedad Industrial (Bolivia, Colombia, Ecuador, and Perú). Websites: www.asipi.org. www.comunidadandina.org. www.dinero.com. www.inta.org. www.marcasur.com. Pablo Kyllmann 219 ________________________________________________________________________________ www.oepm.es. www.turin-ip.com. www.wipo.int. www.wto.org. Others Gaceta del Congreso, Ponencia para primer debate al proyecto de Ley No. 277 de 2009, República de Colombia. Gaceta del Senado, Punto de acuerdo sobre el Protocolo de Madrid, por el Grupo Parlamentario del Partido Verde Ecologista de México, 2008, México. Proyecto de Ley No. 277 de 2009, Senado, 2009, República de Colombia. OMPARATIVE STUDY OF WELL-KNOWN TRADEMARKS PROTECTION IN ITALY, PAKISTAN AND UZBEKISTAN by Saad Nasrullah Luigi Mastroianni Djakhagir Aripov TABLE OF CONTENTS INTRODUCTION 1. INTERNATIONAL REGIME FOR THE PROTECTION OF WELL KNOWN TRADEMARKS: 1.1. Protection of Well Known Trade Marks under the Paris Convention 1.2. Protection of Well Known Trademarks under TRIPS 1.3. WIPO Joint Recommendation for Well Known Trademarks 2. PROTECTION OF WELL KNOWN TRADEMARKS IN ITALY: 3. PROTECTION OF WELL KNOWN TRADEMARKS IN PAKISTAN: 4. PROTECTION OF WELL KNOWN TRADEMARKS IN UZBEKISTAN: 5 A COMPARATIVE ANALYSIS CONCLUSIONS 222 A Comparative Study of Well-Known Trademarks Protection in Italy, Pakistan and Uzbekistan ________________________________________________________________________________ INTRODUCTION Well-known international trademarks such as Coca-Cola, Microsoft, IBM and Google surpass the boundary of marks known only in single countries. It is now generally accepted that these well-known marks should be given protection against later registration by third parties — although laws to offer this protection are still being developed. The definition and protection of well-known trademarks is still a grey area internationally. Despite general recognition that protection should be given to well-known marks, the national laws implementing the Paris Convention Art 6 Bis at present give variable protection depending upon jurisdiction.1 Well-known trademarks have been a legal concept that requires interpretation by the authorities of the country in which protection is sought. Its protective scope depends on the authorities‘ objective of protection of well-known trademarks. Mass media, telecommunications, travels and advertising promotion make people become familiar with the trademarks in other countries. Especially the extensive, skillful and modern advertising promotion can bring the high reputation to the owners. The effects of well-known trademarks extend to unrelated field in comparison with the original goods or services the trademarks are used. However, the trademark piracy and unfair use affect the owner of well-known trademark to expand their business activities under those marks in other jurisdiction. For the sake of the protection of consumers‘ interests and trademark owner‘s reputation, the enhanced protection of well-known trademarks has become the international trend.2 Some trade marks are so well known that their fame transcends the bounds of normal trademark law.3 A ―strong‖ and famous brand may give unrelated firms incentives to choose a free riding strategy to exploit the full potential of the brand: a small producer of skis might, for example, be interested in using the FERRARI brand for the launch of a new product line. Free riding may, in turn, generate negative spillover effects that may derive from a free riding strategy on a famous trademark. In reality, the defense of the extended protection of ―strong‖ trademarks may be to a great extent based on the likelihood that free riding practices dilute the promotional value of a trademark. The rationale behind the extension of protection to include principles of antidilution and prohibitions against free riding has been clear to both courts and commentators from the very beginning. When a trademark may be perceived as ―strong‖ because it possesses a distinctive character or is ―famous,‖ then its value is endangered by unauthorized uses by a non-related third party; this is true even though consumers may not be misled. Rather than aim 1 Protecting and managing well-known trademarks by Vasheharan Kanesarajah, Thomson Scientific, November 2007 2 Protection of well-known trademarks the comparision of trademark examination standards and trademark law systems between Japan and China, Xia Qing 3 Well-known Marks, Famous Marks and Dilution, Chapter 12 page 398. Saad Nursrullah, Luigi Mastroianni and Djakhagir Aripov 223 ________________________________________________________________________________ merely to protect against confusion as to the origin of goods, these extended protections are intended to avoid dilution of the promotional value of trademarks and the misappropriation of the capital of publicity invested in trademarks. As a result, protections are now afforded to trademarks where they formerly might not have been. The trademark ROLLS-ROYCE can now be protected, for example, in most jurisdictions against its use as sign for a pub even if no consumer would be misled into believing that the trademark owner had branched off into pub franchises or that there is an association with or sponsorship of the pub by the luxury car manufacturer. For a finding of infringement, confusion as to the origin of goods is no longer required. It is sufficient that consumers establish some sort of link between the junior sign and the senior one, and such a link may be established even if the goods are comparatively remote.4 However, even though a trademark has acquired the position of a globally well known trademark it cannot be said that their goods or services are actually supplied to the market in every country and in addition, this also does not mean that these trademarks are registered in every country throughout the world. Therefore, in the case such a trademark happens to be imitated or pirated in a country in which it is not registered or used yet, namely when a trademark identical or similar to such a well-known or famous trademark is applied for registration or begun to be used by an unrelated third party, the Trademark Office or Court of that country is confronted with complex legal issues in order to deal with this situation. Moreover in the case a third party applies for registration of this type of bothersome trademark under his own name or commences to use that trademark in respect of the goods or services that are quite remote from the goods or services on which the well-known or famous trademark is used, the Trademark Office or Court of that country encounters even more complex legal issues5. 4 N. BOTTERO-A. MANGÀNI-M. RICOLFI, The Extended Protection of “Strong” Trademarks, in 11 Marquette Intellectual Property Law Review, 2007, 265 ss 5 Japan Patent Office Asia-Pacific Industrial Property Center, JIII-Protection of Well-Known and Famous Trademarks 224 A Comparative Study of Well-Known Trademarks Protection in Italy, Pakistan and Uzbekistan ________________________________________________________________________________ 1. INTERNATIONAL REGIME FOR THE PROTECTION OF WELLKNOWN TRADEMARKS 1.1. Protection of Well-known Trademarks under the Paris Convention The universal body of law on well-known marks finds its roots in the 1925 addition of Article 6bis to the Paris Convention for the Protection of Industrial Property (hereinafter ―Paris Convention‖). Article 6bis states that participating countries agree to prohibit use of with the mark of someone else and used on identical or similar goods. This Article was introduced into the Convention by the Revision Conference of The Hague in 1925. It was somewhat modified at two subsequent Revision Conferences, held in London in 1934 and in Lisbon in 1958, but it still retains its original number. At the latter Conference, the Article was very thoroughly discussed and its application, which formerly concerned only the refusal or cancellation of the registration of a mark conflicting with a mark which is well known in the country concerned, was then extended to a prohibition of the use of the mark first mentioned. For many years international trade mark law (as opposed to national law) concentrated on the protection that was granted to trade marks through registration. A frequent theme in the discussion of international trade mark law in the first part of the twentieth century was the extent to which rights should be granted, first, to unregistered marks and, secondly, to marks used on dissimilar goods or services. Hence, Article 6bis was originally designed to address the concept that owners of marks which were widely known in the marketplace but not registered needed some measures of protection against later registrations of the same mark by others. This was deemed to be particularly important in jurisdictions where the rights to a trade mark flow principally from registration rather than from mere use. However, the concentration on registration is no longer paramount ad in some legislations the distinction between the rights which derive from registration and those from mere use is blurred, most notably in the Regulation on the European Community Trade Mark, in which registration and user rights are both recognised. As conceived in 1925, Article 6bis protected well-known marks only against the registration of identical or similar marks for identical or similar goods by an unauthorised third party. In 1958, at the Lisbon Revision Conference, when the subject of well-known marks was again very thoroughly discussed, it was agreed that the Article should be extended to protect well-known marks also against the unauthorised use of identical or similar marks. But, unfortunately, there was no agreement on two other proposals that were put forward, namely that the Article should be extended to include a provision for the well-known mark not to have actually been used in the country where the identical or similar mark had been Saad Nursrullah, Luigi Mastroianni and Djakhagir Aripov 225 ________________________________________________________________________________ applied for; and that the Article should be extended both to services as well as to dissimilar goods. As will be seen from the text above, the Article permits the owner of a mark, either in person or through the relevant authority to resist, for a period of five years, the deposit, the registration, or the use, by a third party, for the same or similar goods, of a mark which reproduces, translates, or is an imitation liable to create confusion with his mark if it is well known but not registered. At the 1958 Lisbon Conference, an attempt at clarification was made by including in Article 6bis the statement in sub-paragraph (1) that responsibility for deciding the well-known status of a mark lay with the competent authorities in any country applying its effects. Perhaps our predecessors thought that the meaning of ―well-known‖ was beyond argument, but I cannot think there would be all this discussion, and all that litigation, if the matter was not open to question. But with so many countries now having a provision relating to Article 6bis in their laws, understandably there has been a tendency for the Article to be given different interpretations by the national offices and the courts in different countries6. Since 1925 many of the over 150 countries that are members of the Paris Union have sought to introduce Article 6bis into their trade mark laws, but without explaining precisely what is meant by the phrase ―well-known‖. A typical approach towards Article 6bis is that of the European Community Trade Mark Regulation which provides, in Article 8(2)(c), that one of the earlier rights which may prevent the registration of a Community trademark is any mark which is well-known in one of the Member States of the E.U. ―in the sense in which the words well known are used in Article 6bis‖. Interestingly, the Regulation creates another sort of mark, one which has a reputation, and this can be utilised by its owner to prevent the registration of a later mark also for dissimilar goods or services. Most commentators are agreed that this mark referred to Article 8, and this has now been confirmed by the European Court of Justice in Luxembourg in a case involving the trade mark CHEVY (Case C-375/97 General Motors Corporation v. Yplon S.A.). Article 6bis of the Paris Convention reads as follows: (1) The countries of the Union undertake (a), ex officio if their legislation so permits, or at the request of an interested party, to refuse or to cancel the registration, and to prohibit the use, of a trademark (b) which constitutes a reproduction, an imitation, or a translation, liable to create confusion (c), of a mark (d) considered by the competent authority of the country of registration or use to be well known (e) in that country as being already the mark of a person entitled to the benefits of this Convention (f) and used for identical or similar goods (g). These provisions shall also apply when the 6 DAVID H. TATHAM, WIPO Resolution on Well-known Marks: A Small Step or a Giant Leap?, Sweet & Maxwell Ltd and Contributors, 2000, 130. 226 A Comparative Study of Well-Known Trademarks Protection in Italy, Pakistan and Uzbekistan ________________________________________________________________________________ essential part of the mark constitutes a reproduction of any such well-known mark or an imitation liable to create confusion therewith. (2) A period of at least five years from the date of registration shall be allowed for requesting the cancellation of such a mark (h). The countries of the Union may provide for a period within which the prohibition of use must be requested (i). (3) No time limit shall be fixed for requesting the cancellation or the prohibition of the use of marks registered or used in bad faith (j). (a) One of the questions which arises with respect to this Article is whether it may be considered ―self-executing‖ – in countries which admit such possibility – with the result that interested parties may directly claim its application by the administrative or judicial authorities of the country concerned. This question gives rise to the following observations. On the one hand, in stipulating that ―the countries of the Union undertake...‖, the Article is drafted differently from many other Articles of the Convention, which directly refer to rights or obligations of interested parties (for example, Articles 2, 3, 4, 4ter, 5bis, 5ter, 5quater, 6, 6septies, 8), or directly regulate a situation at issue (for example, Articles 4bis, 5 A(1), (3) to (5), B, C, D, 6quater, 6quinquies, 7). Nor, on the other hand, does Article 6bis refer only to an undertaking by the countries of the Union to legislate on a particular matter, as in the case, for example, with Article 10ter and 11. Therefore, and although the Article leaves certain liberties to national legislations (paragraph (1): ―if their legislation so permits‖; paragraph (2): ―a period of at least five years... shall be allowed...‖; ―The countries of the Union may provide for a period...‖), it cannot be deemed only to oblige the Member States to legislate on the subject concerned, but may be considered to contain an undertaking also on behalf of the administrative and judicial authorities of these States, which – if compatible with their constitutional systems – must then give effect to the provisions of the Article at the request of interested parties. (b) The provision under consideration refers only to trademarks and not to service marks. The Member States are therefore not obliged to apply it to service marks, but are free to do so in analogous situations. (c) The purpose of the provision under consideration is to avoid the registration and use of a trademark, liable to create confusion with another mark already well known in the country of such registration or use, although the latter well-known mark is not, or not yet, protected in that country by a registration which would normally prevent the registration or use of the conflicting mark7. This 7 Cf. STEPHEN P. LADAS, International Protection of Well-Known Trade-Marks, The TradeMark Reporter, 1951, p. 661; TROLLER, La marque de hatue renommée, P.I., 1953, p. 73; BLUM, La marque de hatue renommée, P.I., 1954, p. 110. Saad Nursrullah, Luigi Mastroianni and Djakhagir Aripov 227 ________________________________________________________________________________ exceptional protection of a well-known mark has been deemed to be justified because the registration or use of a confusingly similar mark will in most cases amount to an act of unfair competition8, and may also be considered prejudicial to the interests of those who will be misled9. Whether a trademark will be liable to create confusion with a well-known mark will be determined by the competent authority of the country concerned, and in so doing the said authority will have to consider the question from the viewpoint of the consumers of the goods to which the marks are applied10. The provision specifies that such confusion may occur in cases of reproduction, imitation or translation of the well-known mark, or even if only an essential part of a mark constitutes a reproduction or confusing imitation of the well-known mark. (d) The word ―mark‖ in itself would not exclude the extension of the envisaged protection also to well-known service marks, but the words ―used for identical or similar goods‖ make it clear that only well-known trademarks are covered by the provision. The Member States are; however, free to apply the same rules also to service marks in analogous circumstances. (e) A trademark may be well known in a country before its registration there and, in view of the possible repercussions of publicity in other countries11, even before it is used in such country. Whether a trademark is well known in a country will be determined by its competent administrative or judicial authorities. The Revision Conference of Lisbon in 1958 rejected a proposal according to which use of a well-known mark in the country in which its protection is claimed would not be necessary for such protection12. This means that a Member State is not obliged to protect well-known trademarks which have not been used on its territory, but it will be free to do so13. In view of the vote taken at the Lisbon Conference14, the great majority of the Member States will probably adopt this attitude. (f) A well-known trademark will, naturally, only be protected by the Article under consideration if it belongs to a person entitled to the benefits of the Convention, that is, to a natural or legal person who may claim the application of the Convention according to Articles 2 or 315. The provision under examination, however, goes further than that when it states that, in order to be protected, the mark must be considered well known in the country concerned ―as being already the mark of‖ such person. The history of the provision16 shows, however, that it 8 Actes de La Haye, p. 455. Actes de La Haye, pp. 453-454. 10 Actes de La Haye, pp. 453-454. 11 Actes de Lisbonne, pp. 659, 667. See in Brazil: Supremo Tribunal Federal, 26/04/1963, G.R.U.R. Int., 1964, p. 318. 12 Actes de Lisbonne, pp. 659, 666-667. 13 Actes de Lisbonne, p. 668. 14 The above proposal was rejected at the Lisbon Conference by 2 countries only, while 25 approved it: Actes de Lisbonne, pp. 666-667. 15 Actes de La Haye, pp. 456, 543; Actes de Lisbonne, p. 637. 16 Actes de La Haye, p. 543. 9 228 A Comparative Study of Well-Known Trademarks Protection in Italy, Pakistan and Uzbekistan ________________________________________________________________________________ will be sufficient if the mark concerned is well known in commerce in the country concerned as a mark belonging to a certain enterprise, without its being necessary that it also be known that such enterprise is entitled to the benefits of the Convention. Nor is it necessary – and it is therefore not necessary to prove – that the person who has applied for or obtained a conflicting registration or who uses a conflicting marks possessed such knowledge. (g) The protection of well-known marks, according to the provisions under examination, applies only with respect to other marks filed, registered or used for identical or similar goods. Whether this condition is fulfilled will be determined by the administrative or judicial authorities of the country in which protection is claimed17. (h) In order to give the owner of a well-known trademark sufficient time to react to the registration of a conflicting mark; this provision specifies that he must have a period of at least five years during which he may request the cancellation of such registration. This minimum period was three years until the Revision Conference of Lisbon in 1958. The words ―at least‖ indicate that the fixation of the period is left, on condition that it may not be shorter than five years, to the national legislation or to decisions of the administrative or judicial authorities of the Member States18. (i) The Member States are free also to provide for a period within which the prohibition of use of the conflicting mark must be requested, but no minimum is indicated for this period. (j) The administrative or judicial authorities of the country in which the protection of a well-known mark is requested will determine whether the conflicting mark is registered or used in bad faith, in which case no time limit for action will prevail. Bad faith will normally exist when the person who registers or uses the conflicting mark knew of the well-known mark and presumably intended to profit from the possible confusion between that mark and the one he has registered or used. Thus, many features of the protection provided for and many situations not expressly contemplated in Article 6bis may be noted: 17 Cf. in France: Cour de Riom, 01/04/1957, Ann., 1959, p. 32; Cour de Paris, 08/12/1962, Ann., 1963, p. 147, with note by DUSOLIER. The question whether, at least for a certain category of marks of high renown, protection should not be extended to non-similar goods was discussed at the Revision Conference of Lisbon, but without giving positive results: Actes de Lisbonne, pp. 660-664, 705-724; see also MIOSGA, Internationaler Markenund Herkunftsschutz, pp. 49-50, referring to further literature. 18 Actes de Lisbonne, pp. 665, 758. Saad Nursrullah, Luigi Mastroianni and Djakhagir Aripov 229 ________________________________________________________________________________ 1. Nothing is said in the Convention regarding the protection of service marks, nor about the possibility of relying upon Article 6bis to take action against an unauthorized third party that adopts the well-known trademark in relation to different goods. The protection in Article 6bis extends only to trademarks (marks in respect of goods), and does not extend to service marks (used in respect of services). By virtue of Article 16 of Trademark Law Treaty (TLT, 1994, 25 States), however, the provisions of the Paris Convention relating to trademarks were extended to service marks. 2. The protection extends to registration or use in respect of identical or similar goods (in accordance with the principle, known as the ―principle of speciality‖, under which protection for a trademark extends only to the same or similar goods as are covered by the registration or use of the trademark); It may be said that the provision in Article 6bis addressing the protection of well-known trademarks is a provision of exception to the general rule that conditions trademarks protection for use or registration19. The owner of a trademark which is not used or registered in the country where protection is sought by a third party may still obtain protection for the mark, provided the requirements of Article 6bis (1) are met, namely that the mark is well-known in the country where protection is sought. Practice shows that trademark owners who have failed to register a trademark in a country where protection is granted only by local registration – as is the case in most countries of the world – often try to rely on Article 6bis in an attempt to remedy their failure to register. Clearly this was not the intention of the drafters of the Article. Whether as a provision of exception or as a different source of rights, the fact is that only those well-known but unregistered trademarks in the country where protection is sought have access to the privileged protection afforded by Article 6bis. Again, whether as a provision of exception or a different source of rights, the party that may benefit from the privileged protection afforded to well-known trademarks by Article 6bis may not benefit from all the rights given to registrants under national laws, but only those specifically contemplated in the Convention, namely: the right to have local authorities refuse registration to an unauthorized third party; the right to move for the cancellation of then mark registered by an unauthorized third party; 19 HORACIO RANGEL-ORTIZ, Well-Known Trademarks Under International Treaties, Trademark World, February 1997, 15. 230 A Comparative Study of Well-Known Trademarks Protection in Italy, Pakistan and Uzbekistan ________________________________________________________________________________ the right to move for the prohibition of use of the mark by an unauthorized third party. This is provided, in all cases, that the legal proceedings instituted by the owner of the well-known trademark attack the unauthorized use or registration by a third party in relation to identical or similar goods. The term ―well-known trademark‖ as used in Article 6bis extends to situations involving: a reproduction of the mark liable to create confusion; an imitation of the mark liable to create confusion; a translation of the mark liable to create confusion. The text of Article 6bis makes it clear that the protection afforded by its first paragraph extends to: situations where the essential part of the mark constitutes an unauthorized reproduction ―of any such well-known mark‖ liable to create confusion; situations where the essential part of the mark constitutes an unauthorized imitation ―of any such well-known mark‖ liable to create confusion. Acknowledging that there are reasons favouring the notion that Article 6bis is a provision of exception that should be interpreted in a restrictive way, practise, cases, law and the contributions of legal commentators have consistently shown that there is substantial room for argument, discussion, interpretation and speculation in the text of this provision. 3. Article 6bis is silent on what constitutes a well-known mark. The appreciation of whether a mark is well-known is left to the ―competent authority of the country where the illegitimate registration or use occurs‖. Article 6bis does not define a well-known mark; it only enjoins the Member States of the Paris Union for the Protection of Industrial Property not to grant protection to any mark which the relevant authorities consider to be in conflict with a well-known mark belonging to someone else. Unfortunately, the Article fails to define what exactly one should understand by the term ―well-known‖; it does not extend this protection to services or to goods that are not similar, and it is silent on the question of whether the well-known marks should have been used in the country where protection is being sought. Although the first recognition of the concept of a well-known mark is embodied in Article 6bis, the Paris Convention does not provide any definitions or criteria for establishing which trademarks qualify as well-known marks. Saad Nursrullah, Luigi Mastroianni and Djakhagir Aripov 231 ________________________________________________________________________________ The better view seems to be one that focuses on the universal term provided in Article 6bis of the Paris Convention of a well-known mark: ―mark notoirement connue‖, ―notorisch bekannte Marke‖, ―marchio notoriamente conosciuto‖ o ―marca notoriamente conocida‖. 4. Article 6bis is of major importance for cases where a trademark in a given country does not – or does not yet – enjoy protection on the basis of a registration in that country or on the basis of an international or regional registration having effect in that country. This does not mean that the application of Article 6bis is excluded if the trademark is registered in the country where the protection is sought. However, protection according to Article 6bis does not go beyond what normally is conferred by registration of a trademark, namely, protection against the registration or use of the same or a similar sign for the same or similar goods. Thus, if the trademark is normally registered in the country, there is no need to invoke Article 6bis20. 5. As to the activities that may be attacked by the owner of a well-known trademark, the Conventon is not explicit with respect to situations where an unauthorized third party adopts the well-known mark as a part of a corporate name. In all these situations, case law shows different ways to construe Article 6bis. In some cases, local authorities have interpreted it in strict terms, whilst others have been more flexible, affording protection to owners in circumstances not expressly contemplated in Article 6bis. Case law also provides examples of owners obtaining protection under a combination of Article 6bis and Article 10bis, governing unfair competition, or under the provisions of Article 10bis alone. Finally, Article 6bis does not address the issue of the criteria that should be used in the determination of whether or not a trademark is well-known. It appears that in drafting provisions of new international treaties, legislators did not merely reproduce Article 6bis but have indeed incorporated these situations. It is arguable, therefore, that the text of Article 6bis is due for an update. 6. Article 6bis of the Paris Convention provides protection for marks which are well-known in the country in which protection is sought. Article 6bis is therefore of particular importance in cases where a well-known mark is not registered in a given country, so that protection must be predicated on the fact that the mark is well-known. According to the weight of authority, a mark must be well-known in the country in which protection is sought in order for it to enjoy the benefit of Article 6bis of the Paris Convention. It is not sufficient that the mark be well-known only 20 DENIS CROZE, Protection of Well-Known Marks, Journal of Intellectual Property Rights, Vol. 5, May 2000, 139. 232 A Comparative Study of Well-Known Trademarks Protection in Italy, Pakistan and Uzbekistan ________________________________________________________________________________ in the country of origin or elsewhere; it must in fact also be well-known in the country where the protection is sought. Once a mark has been recognised as being well-known by applying the relevant criteria and parameters, Article 6bis of the Paris Convention provides for protection as follows. The owner of a well-known mark is entitled to request that with respect to a mark which is ―liable to create confusion‖ with the well-known mark, an application be refused or a registration be cancelled (at the registry) or the use be prohibited (by injunctive relief in court). Protection is granted against the ―reproduction‖ or ―imitation‖ of the well-known mark with respect to ―identical or similar goods‖. Many countries have incorporated these protection standards into national law. Accordingly, where applicable, the likelihood-of-confusion-standard will be applicable within the framework of local law in order to determine whether an infringement of a well-known mark is present. 7. Although ―famous‖ is not a word employed in the Paris Convention, it is a term which recurs in discussions relating to the extent of protection which the law should accord to trade marks which are merely known, well known or truly famous. The terminology of ―famous‖ and ―well-known‖ marks is unhelpfully imprecise. Article 6bis of the Paris Convention sought to protect ―well-known‖ marks against the use by others of those marks on identical or similar goods. In contrast, the original dilution doctrine propounded by Frank Schechter sought to protect trade marks against the use by others of those marks on non-related goods. How do the two major pieces of European trade mark law implement Article 6bis of the Paris Convention? Although the final recital to the Preamble of Directive 89/104 confirms that the Directive‘s provisions are ―entirely consistent‖ with the Paris Convention, its English text contains scarcely a mention of the words ―well known‖ in relation to trade marks21. The registration of another‘s ―wellknown‖ mark is a ground, upon which a trade mark application can be refused, or registration invalidated22, but the rights conferred against infringers are egalitarian in their nature and treat all used trade marks in a similar manner, protecting them by virtue of their reputation23 even if they are not well known. 21 Paris Convention, art. 6 bis(1). Council Regulation 89/104, art. 4(2)(d). 23 Council Regulation 89/104, art. 5(2). The Trade Marks Act 1994, s56, gives foreign ―wellknown‖ marks only the level of protection required by the Paris Convention, that is to say, protection against use on identical or similar goods which is likely to cause confusion. 22 Saad Nursrullah, Luigi Mastroianni and Djakhagir Aripov 233 ________________________________________________________________________________ The approach taken by the CTM Regulation corresponds to that adopted by Directive 89/104. The registration of another‘s ―well-known‖ mark is a ground of refusal of a trade mark application24, or registration invalidated25. Once again, the rights conferred against infringers treat all used trade marks in a similar manner, regardless of whether they are well known26. This relatively straightforward analysis has been thrown into small uncertainty by the ECJ in Davidoff v. Gofkid27 when it chose, in the English version of its decision, to refer to the protection granted under Directive 89/10428 to trade marks which have ―a reputation in the Member State‖ as being the protection of ―well-known marks‖. Does this mean that ―marks with a reputation‖ and ―wellknown marks‖ are now synonymous? The ECJ itself in General Motors v. Yplon29 noted that the marks ―having a reputation‖ in the English were ―well-known‖ marks in the French, German, Italian and Spanish versions of Directive 89/104 and considered this no more than a ―nuance which does not entail any great contradiction‖. Regardless of the terminology employed, a trade mark must be known to a particular extent before it is entitled to receive the protection accorded to such a mark. This extent is reached where the mark is known by a significant part of the public concerned with the goods sold under that trade mark. One final point should be mentioned. Directive 89/104 states that, for the purpose of refusing a national trade mark application or invalidating a subsequent grant, the words ―well known‖ mean well known in a Member State, in the sense in which the words ―well-known‖ are used in Article 6bis of the Paris Convention30. In theory, this qualification, which is not found in those provisions in Directive 89/104 that refer to marks being (in English) marks with a reputation and (in French, German, Italian and Spanish) well-known marks, suggest that it is somehow for the Paris Union rather than the ECJ to determine what ―well known‖ means for Article 6bis purposes. In practice, the Paris Union countries have so far failed to come up with a consensus or understanding as to what ―well known‖ means, though they may one day do so, and not all European jurisdictions however take their lead from the Directive. 1.2. Well-Known Trademarks under TRIPS The Agreement on Trade Related Aspects of Intellectual Property Right (TRIPS Agreement), entered into force on January 1, 1995, an annex to the 24 Council Regulation 40/94, art. 8(2)(c). Council Regulation 40/94, art. 52. 26 Council Regulation 40/94, art. 9(1)(c). 27 Davidoff & Cie and Zino Davidoff SA v. Gofkid Ltd, Case C-292/00 (2002) ETMR 1219, (2003) FSR 50 (Advocate General‘s Opinion); (2003) ETMR 534 (ECJ). 28 Council Directive 89/104, arts 4(4)(a) and 5(2). 29 General Motors Corp. v. Yplon SA, Case C-375/97 (1999) ETMR 950. 30 Council Directive 89/104, arts 4(2)(d). 25 234 A Comparative Study of Well-Known Trademarks Protection in Italy, Pakistan and Uzbekistan ________________________________________________________________________________ Marrakesh Agreement that established the World Trade Organization, perhaps is the most important international agreement promoting the harmonization of Intellectual Property Rights in member countries. TRIPS Agreement establishes the basic principles and minimum standards concerning the availability, scope, and use of trade-related international property rights; civil and criminal enforcement obligations including border measures; procedural requirements regarding governing the administrative acquisition and maintenance of intellectual property rights; dispute settlement for the resolution of any disputes between WTO member countries over the implementation of the TRIPS Agreement.31 The TRIPS Agreement requires its member countries to provide protection to well-Known trademarks. Article 2(1) of the TRIPS Agreement32, which enunciates as follows, ―In respect of Parts II, III and IV of this Agreement, Members shall comply with Articles 1 through 12, and Article 19, of the Paris Convention (1967)‖ requires member countries to provide protection to well-known trademarks as per Article 6bis of the Paris Convention under which member countries are required, ex officio or on the request of an interested party, to refuse/cancel registration and prohibit use of a trademark which is a reproduction/imitation/translation of a trademark considered well- known by competent authorities of the country if used for identical/similar goods and is liable to cause confusion. The TRIPS Agreement not only incorporates Article 6bis of the Paris Convention but also has extended the scope of protection of well-known trademarks in the member countries. Article 16 of the TRIPS Agreement enunciates as follows: “2. Article 6bis of the Paris Convention (1967) shall apply, mutatis mutandis, to services. In determining whether a trademark is well-known, Members shall take account of the knowledge of the trademark in the relevant sector of the public, including knowledge in the Member concerned which has been obtained as a result of the promotion of the trademark. 3. Article 6bis of the Paris Convention (1967) shall apply, mutatis mutandis, to goods or services which are not similar to those in respect of which a trademark is registered, provided that use of that trademark in relation to those goods or services would indicate a connection between those goods or services and the owner of the registered trademark and provided that the 31 Protection of well known trademarks the comparison of trademark examination standards and trademark law systems between Japan and China by XIA Qing. 32 Agreement on Trade-Related Aspects of Intellectual Property Rights art. 16, Apr. 15, 1994, Marrakesh Agreement Establishing the World Trade Organization, Annex IC, Legal Instruments— Results of the Uruguay Round, 33 I.L.M. 1125, 1197 [hereinafter TRIPs Agreement]. Saad Nursrullah, Luigi Mastroianni and Djakhagir Aripov 235 ________________________________________________________________________________ interests of the owner of the registered trademark are likely to be damaged by such use”. Article 16(2) of the TRIPS Agreement requires member countries that Article 6bis of the Paris Convention-related to well-known trademarks should apply to services as well in addition to the goods. The TRIPS Agreement does not provide any definition of well-known trademark. Also, only a competent authority of a member country can determine whether a trademark is well known or not in the country. However, Article 16(2) of the TRIPS Agreement requires member countries to take knowledge of the trademark in the relevant sector of the public, even if the knowledge is obtained as a result of the promotion of the trademark, as an important factor in determining whether a trademark is well known or not in the country. Article 16(3) of the TRIPS Agreement extends protection of the well-known trademark for dissimilar goods/services in certain conditions which are as follows: 1. well-known trademark is registered in the member country; 2. use of the trademark may cause likelihood of association with the wellknown trademark; 3. interest of the owner of the registered well known trademark is likely to be damaged by such use. Article 16 of the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPs Agreement), to some extent, generalized anti-dilution prohibitions.33 The concept of trademark dilution is inherently complex. Because [dilution] is largely a theoretical and almost ephemeral concept, the legal theory of ―dilution‖ is exceedingly difficult to explain and understand. Misunderstanding is rampant.34 As one of the most controversial and perhaps most elusive topics in intellectual property law, trademark dilution law has undergone a significant transformation over the past decade. For nearly all of the 20th century, to the extent that trademark dilution was even recognized as a cause of action, it was only recognized as such under state statutory law, and dilution law was seen as protecting the commercial value or ―selling power‖ of a mark by prohibiting uses of a mark that were deemed to dilute the distinctiveness of the mark or to tarnish the associations it evoked.35 A cause of action for dilution was first recognized 33 BOTTERO-A. MANGÀNI-M. RICOLFI, The Extended Protection of “Strong” Trademarks, in 11 Marquette Intellectual Property Law Review, 2007, 265 ss. 34 J.Thomas McCarthy, McCarthy on Trademarks and Unfair Competition 24:67, at 24-166-24167(4th ed. 2008) 35 Restatement (Third) of Unfair Competition s 25(1995), cmt. A, at 265. 236 A Comparative Study of Well-Known Trademarks Protection in Italy, Pakistan and Uzbekistan ________________________________________________________________________________ under US statutory law in the FTDA36 which was later fine tuned with the adoption of the TDRA.37 For dilution to occur, the relevant public must make some connection or association between the mark and both parties. But that connection or association is not the kind of mental link between the parties that triggers the classic likelihood of confusion test. Rather, the assumption is that the relevant public sees the junior user‘s use, and intuitively knows, because of the context of the junior user‘s use, that there is no connection between the owners of the respective marks.38 According to the doctrine of trademark dilution, famous trademarks should be granted protection even in the absence of direct competition between the senior and the junior users and in the absence of a risk of confusion as to the origin of the marked goods.39 A mark may be diluted either by "tarnishment" or "blurring." Tarnishment occurs when someone uses a mark on inferior or unwholesome goods or services . Tarnishment involves a newcomer‘s use of a mark in acontext that risks consumer aversion to the famous brand.40 A classic example of tarnishment under FDTA case law involved the use of CANDYLAND.COM for a sexually explicit website, which understandably evoked negative associations with the famous CNDYLAND brand of children‘s board games.41 ―Blurring‖ involves a risk of ―clutter‖ in the minds of consumer on account of the newcomer‘s use of a mark that is similar to a famous brand.42 Dilution by blurring consists of a single mark identified by consumers with two different sources. One mark: two sources.43 One example of blurring under the FTDA case law involved the use of HERBROZAC as a mark for a natural alternative to the PROZAC brand pharmaceutical.44 Though the TRIPS Agreement provides minimum standards for the protection of well-known trademarks which each member country is required to provide in its relevant national legislation, however, member countries are free to provide higher standards of protection in their legislation if they wish. TRIPS Agreement neither provides any definition of a well-known trademark nor any criteria for determining whether a trademark is well-known or not in a member country and it has been left for the member states to determine. 36 Federal Trademark Dilution Act, P.L. 104-98 (H.R. 1295, S. 1513), 109 Stat. 505 (1995) enacted January 16, 1996. 37 Trademark Dilution Revision Act of 2006, Pub. L. No. 109-312, 120 Stat. 1730 (2006), enacted October 6, 2006 38 McCarthy, 24:72 at 24-176. 39 Frank I. Schechter, The Rational Basis of Trademark Protection, 40 HARV. L. REV. 825-30 (1927). 40 Scot A. Duvall, The Trademark Dilution Revision Act of 2006: Balanced protection for famous Brands, 97 TMR 1253. 41 Hasbro, Inc. v. Internet Entm‘t Group Ltd., 40 U.S.P.Z. 2d 1479(W.D. Wash. 1996). 42 Scot A. Duvall, The Trademark Dilution Revision Act of 2006: Balanced protection for famous Brands, 97 TMR 1252, 1254. 43 44 McCarthy, 24:67 at 24-169. Eli Lilly & Co. v. Natural Answers, Inc. 233 F.3d 456(7 th Cir. 2000). Saad Nursrullah, Luigi Mastroianni and Djakhagir Aripov 237 ________________________________________________________________________________ 1.3. WIPO Joint Recommendation Concerning Provisions on the Protection of Well-Known Marks Despite the fact that the TRIPS agreement has introduced some new elements as well as clarity into the notion and regime of protection of well-known trademarks45, there still have been a lot of unanswered questions left as to the criteria of recognition and scope of protection of well-known marks46. As a reply to this demand in 1995 World Intellectual Property Organization (WIPO) started working on what is now known as Joint Recommendation Concerning Provisions on the Protection of Well-Known Marks 47. The Preface to this document clearly states that the ―Recommendation is the first implementation of WIPO‘s policy to adapt to the pace of change in the field of industrial property by considering new options for accelerating the development of international harmonized common principles‖. Joint Recommendation is not legally binding, and therefore is a flexible instrument of international harmonization in the field of trademark law. It has a profound significance for countries, which seek to comply with their international obligations and are on the stage of development of their national legislation concerning protection of wellknown marks. But for the countries that already have an elaborated legislation and judicial practice in this field, the Joint Recommendation may at times be seen as controversial48. The Joint Recommendation addresses the issues that have stayed unclear since the introduction of the Article 6bis of the Paris Convention, namely i) the determination of a well-known mark in a Member State49, by offering guidelines for assessment of a mark for being well-known; ii) the scope of protection of wellknown marks, by defining marks, business identifiers and domain names50 conflicting with a mark deemed well-known. Article 2(1)(b) of the Joint Recommendation proposes the following nonexhaustive list of types of information that must be taken into account by 45 For a brief analysis see David H.Tatham, WIPO Resolution on Well-Known Marks: A Small Step or a giant Leap?, I.P.Q. No.2, Sweet & Maxwell Ltd and Contributors, 2000, at 131-132 46 See David H.Tatham, supra note 1, at 132-133 47 Adopted by the Assembly of the Paris Union for the Protection of Industrial Property and the General Assembly of the WIPO at the Thirty-Fourth Series of Meetings of the Assemblies of the Member States of WIPO, September 20 to 29, 1999; available at http://www.wipo.int/aboutip/en/development_iplaw/pdf/pub833.pdf [hereinafter Joint Recommendation]. 48 See e.g. Maxim Grinberg, The WIPO Joint Recommendation Protecting Well-Known Marks And The Forgotten Goodwill, Chicago-Kent Journal of Intellectual Property, 2005 49 a State member of the Paris Union for the Protection of Industrial Property and/or of the WIPO [see Art.1 of Joint Recommendation] 6 the extension of protection of well-known marks to conflicting business identifiers and domain names is a distinctive feature of the Joint Recommendation, as these matters have never been included in an international document before; see David H.Tatham, supra note 1, at 133-134 238 A Comparative Study of Well-Known Trademarks Protection in Italy, Pakistan and Uzbekistan ________________________________________________________________________________ competent authority when determining whether a mark is well-known in a Member State: (1) the degree of knowledge or recognition of the mark in a relevant sector of the public; (2) the duration, extent and geographical area of any use of the mark; (3) the duration, extent and geographical area of any promotion of the mark, including advertising or publicity and the presentation, at fairs or exhibitions, of the goods and/or services to which the mark applies; (4) the duration and the geographical area of any registrations, and/ or any applications of the mark, to the extent that they reflect use or recognition of the mark; (5) the record of successful enforcement of rights in the mark, in particular, the extent to which the mark was recognized as well known by competent authorities; (6) the value associated with the mark. The approach of true flexibility in application of Joint Recommendation is reflected in Art. 2(1)(c), which states that ―the determination in each case will depend upon the particular circumstances of that case. In some cases all of the factors may be relevant. In other cases some of the factors may be relevant. In still other cases none of the factors may be relevant, and the decision may be based on additional factors that are not listed in subparagraph (b), above. Such additional factors may be relevant, alone, or in combination with one or more of the factors listed in subparagraph (b)‖. Art. 2(3) also provides for the list of ―non-requirements‖ for well-known marks. It is not required: (i) that the mark has been used in, or that the mark has been registered or that an application for registration of the mark has been filed in or in respect of, the Member State; (ii) that the mark is well known in, or that the mark has been registered or that an application for registration of the mark has been filed in or in respect of, any jurisdiction other than the Member State; or (iii) that the mark is well known by the public at large in the Member State. Saad Nursrullah, Luigi Mastroianni and Djakhagir Aripov 239 ________________________________________________________________________________ Thus, according to this article, the mark only needs to have a reputation in ―the relevant sector of the public”51 and not the public at large. Also, use and/or registration cannot be a requirement for protection. As to the question of the scope of protection for a well-known mark against conflicting marks, business identifiers and domain names, the Joint Recommendation establishes that it shall be at least from the time when the mark becomes well known in the Member State52, and that bad faith should be considered in balancing the interests of the parties involved when assessing possible infringement of well-known marks53. It also stipulates the conditions under which a mark is deemed to be in conflict with a well-known mark in respect of identical or similar goods and/or services. The provisions also cover conflicts with regard to dissimilar goods and services. However, in these cases, knowledge of the public at large can be required. In conclusion, it must be said that although the Joint Recommendation is a ―soft‖ law document, and has some controversial provisions, it is a document reflecting a very high level of international consensus on harmonization of the national substantive law on protection of well-known marks, and is widely recognized and supported as one of the basic documents in this field54. 2. PROTECTION OF WELL-KNOWN TRADEMARKS IN ITALY Article 12(1)(b) and (g) of the Italian Industrial Property Code (D.Lgs. February 10, 2005, n. 30) incorporate Article 6bis of the Paris Convention, as interpreted and expanded in its scope of application by Articles 16(2) and (3) of the TRIPS Agreement. Under Article 12(1)(b) and (f), a mark is not new and, therefore, inelegible for registration, if it is identical with or similar to a mark that is ―well-known within the meaning of Article 6bis of the Paris Convention‖ (in accordance with Article 16(2) of the TRIPS Agreement), in the following cases: (i) when the later mark is registered for identical or similar goods or services, if ―by virtue of the identity or similarity of the signs and the identity or similarity of the goods or services, a risk of confusion may arise on the part 51 as defined in Art. 2(2)(a) of the Joint Recommendation. It must be said that this notion clearly takes its roots from the TRIPS Agreement‘s Art. 16.2, and is an attempt to clarify the definition in question. 52 Art 3(1) of the Joint Recommendation 53 Art 3(2) of the Joint Recommendation 54 See e.g. position of the International Trademark Association on this issue at http://www.inta.org/index.php?option=com_content&task=view&id=133&Itemid=143&getcontent =3 240 A Comparative Study of Well-Known Trademarks Protection in Italy, Pakistan and Uzbekistan ________________________________________________________________________________ of the public, which may also consist of a risk of association of the two signs‖; and (ii) when the later mark is registered for dissimilar goods or services, irrespective of whether a risk of confusion or association may arise on the part of the public, on condition that use of the later mark ―without due cause‖ is likely to take unfair advantage of, or be detrimental to, the distinctive character or the repute of the well-known mark. To qualify as ―well-known wihthin the meaning of Article 6bis‖ a mark needs to be well-known in Italy where its reputation will come as a result of its use or promotion in international trade55. Similarly, under Article 17(1)(f), a registered mark that ―enjoys a reputation‖ in Italy constitutes a bar to the valid registration of identical or similar marks when use of the mark ―without due case‖ is likely to take unfair advantage of, or be detrimental to, the distinctive character or the repute of the mark. The only provision of the Italian Industrial Property Code that deals with the protection of marks enjoying a reputation is Article 20(1)(c), under which the owner of a registered mark that enjoys a reputation is entitled to prevent unauthorized third parties from using identical or similar signs with respect to dissimilar goods or services, provided that use of the mark ―without due case‖ is likely to take unfair advantage of, or be detrimental to, the distintive character or the repute of the mark. It is noteworthy that the Italian Industrial Property Code affords to both marks that are well-known within the meaning of Article 6bis of the Paris Convention and registered marks that enjoy a reputation the power to cancel the registration of identical or similar marks for dissimilar goods or services, while it affords only the latter protection against the unauthorized use of identical or similar marks with respect to dissimilar goods or services. In other words, the Italian Industrial Property Code does not contain any provision that expressly affords protection to unregistered well-known marks within the meaning of Article 6bis of the Paris Convention against the unauthorized use of conflicting signs by third parties as provided by Articles 16(2) and 16(3) of the TRIPS Agreement. This is simply because, when dealing with the issue of protection, the Italian Industrial Property Code applies only to registered marks. In practical terms, to prevent the unauthorized use of the conflicting mark, the owner of a well-known mark within the meaning of Article 6bis of the Paris Convention will have only the very light burden of filing an application in Italy before taking action. 55 See ADRIANO VANZETTI – VINCENZO DI CATALDO, Manuale di diritto industriale, 6^ edizione, Giuffré Editore, 2009, 181. Saad Nursrullah, Luigi Mastroianni and Djakhagir Aripov 241 ________________________________________________________________________________ Hypothetically speaking, if the owner of a well-known mark within the meaning of Article 6bis does not intend to file an application, protection against the unauthorized use of a conflicting mark could be alternatively sought under Article 21(3) of the Italian Industrial Property Code. Under this provision, no one may use a registered trademark after its registration has been declared invalid, when the reason for invalidity involves the unlawfulness of the use of the trademark. According to the most convincing scholarly interpretation of this provision56, the above prohibition not only applies with respect to absolute grounds of invalidity, but also when there is a violation of Article 14(1)(c) of the Italian Industrial Property Code (in relation with Article 21(2) of the Italian Industrial Property Code), which prohibits the registration as trademarks of signs when their use would infringe someone else‘s copyright, industrial property right, or any other exclusive right. In any event, it should be remembered that Article 6bis of the Paris Convention and, consequently, Articles 16(2) and 16(3) of he TRIPS Agreement, are automatically applicable in countries that are signatories to these agreements absent a specific, more favourable national provision57. Two additional provisions of interest for the protection of famous trademarks are Articles 8(3) and 19(2) of the Italian Industrial Property Code. Article 8(3) prescribes that, if well-known, personal names, signs used in artistic, literary, scientific, political or sports fields, denominations and acronyms of exhibitions and events, and non-profit bodies and associations, as well as the characteristic emblems thereof, may be registered as trademarks only by those entitled to them, or with their consent. This provision aims at preserving the possibility of exploiting the evocative power of famous names or signs that have not yet been used or registered as trademarks to those who have established their fame58. As in the case of marks that are well known within the meaning of Article 6bis of the Paris Convention, Article 8(3) grants only the possibility of invalidating marks illegitimately registered. To prevent also the unauthorized use of a conflicting sign, those who have built the fame of these signs will have the burden of registering them as trademarks59. 56 See ADRIANO VANZETTI – VINCENZO DI CATALDO, Manuale di diritto industriale, 6^ edizione, Giuffré Editore, 2009, 278-279. 57 See, among others, PEROT-MOREL, Les difficultés d‟application de l‟Article 6bis de la Convention d‟Union de Paris relatif à la protection internationale des marques notoires, Riv. dir. ind., 1981, I, 34, 49: ―On s‘accorde... à admettre qu‘en absence d‘une disposition spécifique de la loi nationale (de pays unionistes), l‘Article 6bis doit pouvoir etre invoqué directement, en tout état de cause, par les intéressés‖. 58 See, e.g., Twentieth Century Fox Film Corporation v. Giammar S.n.c., Court of Rome, January 9, 2001, unpublished. 59 However, in FIFA v. Panini S.r.l., June 26, 1994, Giur, ann. dir. ind., 1994, No. 3133, the Court of Modena stated that ―even though Article 21(3) of the Italian Trademark Act – now Article 21(3) 242 A Comparative Study of Well-Known Trademarks Protection in Italy, Pakistan and Uzbekistan ________________________________________________________________________________ Article 19(2) prohibits the registration of a mark filed in bad faith. An important area in which this provision can be invoked is that of marks that are famous abroad but not yet known to Italian consumers. Under these circumstances, in which it is not possible to resort to the protection afforded to marks that are wellknown within the meaning of Article 6bis of the Paris Convention, the fact that the mark was well-known in other jurisdictions could play an important role in determining whether the adoption of an identical or similar mark in Italy by a third party was in bad faith and, specifically, was done with the intent of taking unfair advantage of the reputation that would eventually reach our country60. Often, the element of bad faith can be inferred by the conduct of the registrant following registration. Finally, it has been noted by commentators that European trade mark law makes very little specific provision for the protection of famous trade marks as a separate category of subject matter of legal protection61. With the implementation of the European Trademark Harmonization Directive62 a ―new‖ trademark was born in Italy: a trademark is no longer merely an indicator of source; it is also a means of communication, a message bearer, a carrier of goodwill, functions that better reflect the role of trademarks in today‘s market reality. Well-known trademarks – or better yet, trademarks enjoying a reputation in the words of the Directive – are now recognized as having an intrinsic value, stretching beyond the information they provide to the public with respect to the entrepreneurial origin of the goods and services they distinguish. Although the indication of origin remains the fundamental and primary function of all trademarks, the existence of this additional function has become legally relevant. Thus, trademarks are protected also with respect to this intrinsic value and for which the concept of likelihood of confusion cannot provide appropriate protection63. Under the former Italian Trademark Act, which, as mentioned previously, did not expressly provide for any special protection of famous marks, courts, especially of the Italian Industrial Property Code – recognizes to those who have contributed to the notority of a sign the right to register it as a trademark, a parallel prohibition is to be recognized as to the unathorized use of the sign, being otherwise defeated the scope of the provision, which is that of avoiding parasitism by protecting the evocative value of the sign‖. 60 See ADRIANO VANZETTI, La nuova legge marchi, Milano, 1993, 106; MARCO RICOLFI, I segni distintivi dello sport, AIDA, 1993, 123 ss.. 61 See PIER LUIGI RONCAGLIA, Should We Use Guns and Missiles to Protect Famous Trademarks, in Europea (1998) 88 TMR 551. 62 First Council Directive of 21 December 1988, to Approximate the Laws of the Member States relating to Trade Marks (Directive 89/104/EEC). 63 See PIER LUIGI RONCAGLIA, Italy, in FREDERICK W. MOSTERT, Famous and WellKnown Marks. An International Analysis, 2nd Edition, International Trademark Association, 2004, 4-221. Saad Nursrullah, Luigi Mastroianni and Djakhagir Aripov 243 ________________________________________________________________________________ from the late 1970s, tended to hold that the achievement by a mark of a general reputation enabled the broadening of its scope of protection so as to extend also to goods and services not strictly related. ―Famous‖ or ―well-known‖ were only those marks known to the public at large, generally identified as those that: (i) enjoyed a high degree of recognition: survey evidence, if accurate and trustworthy, was often admissible to prove such recognition64; (ii) were associated with products that were widely distributed and enjoyed great consumer recognition: documentation attesting a significant volume of sales in Italy was generally of great assistance in proving fame; (iii) had been on the market for a long time; (iv) were the subject of intense and effective advertising: evidence of extensive advertising, especially on television and/or in national or foreign pubblications circulating in Italy65, was always of paramount importance. In determining whether a mark was famous or well-known, Italian courts generally adopted a case-by-case approach, considering the overall commercial impression emerging from the totally of the evidence produced. The Italian Industrial Property Code currently in force does provide special protection for marks enjoying a reputation. However, it still does not contain any definitions or guidelines to determine when a mark is well known within the Article 6bis of the Paris Convention or enjoys a reputation. In particular, debate arose among Italian scholars as to whether the concept of marks ―which enjoy a reputation‖ set out in Article 1(1)(c) of the last Trademark Act – now Article 20(1)(c) of the Italian Industrial Property Code – is equivalent to that of wellknown marks. Some authors assumed that the two categories were coincident66. Others maintained that the definition ―mark which enjoys a reputation‖ encompasses not only famous marks, i.e., marks that are known by a very high percentage of the public at large, but also marks that are simply known in the interested circles of trade or industry67. This latter interpretation is now the prevailing one68 as a result of the European Court of Justice‘s decision in the 64 In Jean Patou Parfumer SA v. Priority Srl, 23 May 1991, in Giur. ann. dir. ind., 1991, No. 2671, the Court of Milan considered hardly relevant a survey conducted among 500 consumers ―picked in only one commercial area, that ―of highest level‖, of only one Italian city, Turin‖. 65 In Standard Oil Co. of California v. Ditta Santa Rita Mercantile Co. and Chevron Oil Italiana SpA Intervenor, Court of Catania, 25 January 1977, in Riv. dir. ind., 1977, II, 396, 426-428, it was held that the advertising of the plaintiff‘s mark in foreign magazines circulating in Italy amounted to legally relevant use of the mark. 66 See FLORIDIA, La nuova legge marchi. Il commento, in Corr. Giur., 1993, 268 et seq.; FAZZINI, Prime impressioni sulla riforma della disciplina dei marchi, in Riv. dir. ind. 1993, I, 159 et seq. 67 See ADRIANO VANZETTI – VINCENZO DI CATALDO, Manuale di diritto industriale, 6^ edizione, Giuffré Editore, 2009, 207 et seq.; SENA, Il nuovo diritto dei marchi, 3^ edizione, Milano, 2001, 87-88. 68 In Altavista Company v. Alta Vista Srl, 9 November 2000, in Giur. ann. dir. ind., 2001, No. 4249, the Court of Vicenza stated that ―a famous trademark is a mark known within a considerable sector of the public interested in the products or services covered by the mark‖ (applying such principle, 244 A Comparative Study of Well-Known Trademarks Protection in Italy, Pakistan and Uzbekistan ________________________________________________________________________________ General Motors Corporation v. Yplon case69. According to the Court‘s ruling, a trademark is famous pursuant to Article 5(2) of the Directive and, therefore, is entitled to the broader protection set forth in such provision, when it ―enjoys a reputation within the relevant sector of the public for which the particular goods or services it distinguishes are destined‖. In its decision, the Court of Justice also stated that ―the higher the distinctiveness and reputation of the trademark, the easier the ability to demonstrate the existence of an injury to the interest of the owner‖. The above decision is particularly important because it clearly indicates that the function of carriers of goodwill or message bearers is not performed only by exceptionally famous trademarks. Every trademark, as long as it has acquired some consumer recognition in the relevant field of trade or industry, is entitled to be protected against the unathorized use of an identical or similar mark, pursuant to Article 20(1)(c), even in the absence of a likelihood of confusion, when use of the later mark is likely to take unfair advantage of, or be detrimental to, the distinctive character or the repute of the prior mark. 3. PROTECTION OF WELL-KNOWN TRADEMARKS IN PAKISTAN Pakistan became a member of WTO, hence signatory to the Agreement on Trade Related Aspects of Intellectual Property Right (TRIPS Agreement), in 199570. TRIPS Agreement created an obligation on Pakistan to amend its intellectual property laws and to provide in its national legislation minimum standards of intellectual property rights protection provided in the TRIPS Agreement. Therefore, in order to comply with the TRIPS Pakistan promulgated its new Trademark Law in the year 200171(hereinafter referred to as Ordinance). Article 16(2) and 16(3) of the TRIPS Agreement which deal with the protection of well known trademarks were duly incorporated into the Ordinance, 2001. Section 86(1) of the Ordinance provides that a Trade Mark which is entitled to protection as a well known trademark shall be a mark which is so entitled under the Paris Convention and which is well known in Pakistan as being the mark of a person who: 1. is a national of a Convention Country- a country, other than Pakistan, which is a party to the Paris Convention; or the trademark ―Alta Vista‖ has been considered famous with regard to the specific service offered by the plaintiff on the Internet). 69 Case C-375/97 General Motors Corporation v. Yplon SA, decision of 14 September 1999, in Giur. ann. dir. ind., 1999, No. 4047. 70 http://www.wto.org/english/thewto_e/whatis_e/tif_e/org6_e.htm 71 Pakistan Trade Marks Ordinance, 2001http://ipo.gov.pk/Trademark/Downloads/TradeMark_Ordinance.pdf Saad Nursrullah, Luigi Mastroianni and Djakhagir Aripov 245 ________________________________________________________________________________ 2. is domiciled in, or has a real and effective industrial or commercial establishment in, a Convention Country. It is not necessary that person carries on business, or has a good will, in Pakistan. 1. The Criteria: When is a Mark Well Known? The Ordinance also set forth criteria for tribunal- ―the Registrar or, as the case may be, the High Court or a District Court before which the proceedings concerned are pending‖72 to distinguish well known trademarks from other marks. Subsection 2 of Section 86 provides that the tribunal shall take into account the following factors as relevant criteria in deciding whether or not a Trade Mark is well known: 1. the amount of Pakistan or worldwide recognition of the Trade Mark; 2. the degree of inherent or acquired distinctiveness of the Trade Mark; 2. the Pakistan or worldwide duration of the use and advertising of the Trade Mark; 4. the Pakistan or worldwide commercial value attributed to the Trade Mark; 5. the Pakistan or worldwide geographical scope of the use and advertising of the Trade Mark; 6. the Pakistan or worldwide quality and image that the Trade Mark has acquired; and 7. the Pakistan or worldwide exclusivity of use and registration attained by the Trade Mark and the presence or absence of identical or deceptively similar third party Trade Marks validly registered or used in relation to identical or similar goods and services. What is more significant is that the section 86(2) of the Ordinance provides that the following should not be required by the tribunal while determining a trademark is well known: 1. registration of the trademark is in Pakistan; 2. actual use in the form of sales of goods/services under the trademark in Pakistan. However, in addition to the list of factors mentioned above the tribunal may consider any other factor as relevant while determining a trademark is well known or not among relevant public in Pakistan. Section 86(3) of the Ordinance provides that the owner of a well known trademark is entitled to restrain, by injunction, the use in Pakistan of a trademark which or essential part of which is identical/deceptively similar to the well known trademark: 72 Section 2 (li) of the Pakistan Trademarks Ordinance, 2001 246 A Comparative Study of Well-Known Trademarks Protection in Italy, Pakistan and Uzbekistan ________________________________________________________________________________ 1. in relation to identical/similar goods or services where such use is likely to cause confusion; or 2. where such use causes dilution73 of the distinctive quality of the well known trademark. 2. Well-Known Trademarks and Non-Competing Goods The most important aspect of well known trademarks is that the protection extends beyond the class of goods/services. The Ordinance provides for this as a special right for well known marks in Section 17 which deals with the ―relative grounds of refusal‖ of a trademark74. Section 17(3) of the Ordinance reads: ―A trade mark which- (a) is identical with or similar to an earlier trade mark; and (b) is to be registered for goods or services which are not similar to those for which the earlier trade mark is registered. shall not be registered if, or to the extent that, the earlier trade mark has a reputation in Pakistan and the use of the later mark without due cause would take unfair advantage of, or be detrimental to , the distinctive character or the repute of the earlier trade mark‖. Section 18(1)( c) of the Ordinance provides that an earlier trademark means a trademark which was entitled to protection under the Paris Convention as a well known trademark. Section 40 (4) of the Ordinance provides that a person shall infringe a registered trade mark if the person uses in the course of trade mark which- (a) is identical with or deceptively similar to the trade mark; and (b) is used in relation to goods or services which are not similar to those for which the trade mark is registered. Where the trade mark is a well known trade mark, or has a reputation in Pakistan, and the use of the mark being without due cause, takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark. 73 Section 2(xiii) of the Ordinance provides that "dilution" means the lessening of the capacity of a well known trade mark to identify and distinguish the goods or services, regardless of the presence or absence of competition between owner of the well know trade mark or other parties. or likelihood of confusion or deception 74 The Trademarks Ordinance, 2001 provides for two types of grounds of refusal to register a trademark. The first one is an ―absolute‖ ground of refusal to register based on the inherent characteristics of the impugned mark only and the second one is the ―relative‖ grounds of refusal that are contingent on the existence of another mark. Saad Nursrullah, Luigi Mastroianni and Djakhagir Aripov 247 ________________________________________________________________________________ 3. Protection of Unregistered Well-Known Trademarks under the Law of Passing Off Passing off is a common law tort which can be used to enforce unregistered trademark rights. The tort of passing off protects the goodwill of a trader from a misrepresentation that causes damage to goodwill. In passing off, the plaintiff is required to meet certain well entrenched qualifications in order to succeed. These test evolved as a result of successive court dicta, takes various forms ranging from the most basic ones calling for meeting of only the bare essential to more elaborate mandating the proof of supplementary conditions. The three essential constituents, viz., goodwill, misrepresentation and the damage are the primary elements, a successful claimant must prove, and are collectively referred to as the ‗classical trinity‘ of passing off75. Pakistani courts have been applying the common law action of passing off for the protection of well known trademarks in Pakistan for years. Keeping in mind the development in the protection of unregistered well known trademarks through passing off actions, the Ordinance under Section 17(4)(a) provides: ―A trade mark shall not be registered if, or to the extent that, its use in Pakistan is liable to be prevented(a) by virtue of any law, in particular, the law of passing off, protecting an unregistered trade mark or other mark used in the course of trade”. Section 46 (3) of the Ordinance provides that nothing in the Ordinance shall be deemed to affect rights of action against any person for passing off goods as the goods of another person or services as services provided by another person, or the remedies in respect thereof. Also, Subsection 3 of Section 39 states that without prejudice to the right of the proprietor of a registered Trade Mark to obtain any relief under any other law for the time being in force, the proprietor shall also have the right to obtain relief under this Ordinance if the Trade Mark is infringed. 75 Narayanan P, supra note 11, at 685 248 A Comparative Study of Well-Known Trademarks Protection in Italy, Pakistan and Uzbekistan ________________________________________________________________________________ 4. Protection of Well Known Trademarks under Unfair Competition The Trademarks Ordinance, 2001 also provide protection to the well known trademarks under the law of unfair competition. Section 67 of the Ordinance provides that any act of competition contrary to honest business practices in industrial or commercial matters such as fraudulently registering or applying for registration of a trade mark is an act of unfair competition. And an action against unfair competition may be brought before a District Court of competent jurisdiction. Section 14(4) of the Ordinance, which deals with the absolute grounds for refusal of registration, provides that a trade mark shall not be registered if or to the extent that the application is made in bad faith. However, subsection 4 of Section 86 of the Ordinance provides that the continuation of any bona fide use of a trademark begun before the commencement of the Ordinance shall not be effected by the provisions of this Ordinance. 5. Opposition to Registration of a Trademark by Proprietor of a Well-Known Trademark Pakistan Trademark Ordinance, 2001 provides an opportunity to the proprietor of a well known trademark to oppose an application for registration of trademark which is identical/deceptively similar to the well known trademark in Pakistan and the use of which is likely to cause dilution/confusion. Section 29 of the Ordinance provides grounds on the basis of which registration of a trademark may be opposed. Section 29(4) reads as follows: ―The registration of trade mark in respect of particular goods or services may be opposed on the grounds that- (a) it is substantially identical with, or deceptively similar to, a well known trade mark to a trade mark that, before the priority date for the registration of the first-mentioned trade mark in respect of those goods or services, had acquired a reputation in Pakistan; and (b) because of the reputation of that other trade mark, the use of the firstmentioned trade mark would cause dilution or would be likely to deceive or cause confusion‖. 6. Approach of the National Courts The Pakistani courts have long acknowledged the importance of protecting the rights of IP owners and have extended protection to well-known foreign Saad Nursrullah, Luigi Mastroianni and Djakhagir Aripov 249 ________________________________________________________________________________ trademarks far beyond the traditional scope of such protection. Their approach when dealing with issues relating to IP rights has been forward looking76. The first key judgment in this area was given in 1979 by the Sindh High Court in Societé De Fabrication v Deputy Registrar of Trademarks77. In protecting an international trademark the court observed: ―The conduct of the respondent in appropriating trademarks of foreign owners is not proper… It is common knowledge that trade in French perfumery is of international character. With the revival of international trade and international publicity, the rights of owners of foreign trademarks ought to receive some safeguard unless it is clear from the evidence that the foreign owners have abandoned their intention of marketing their products under the mark in this country.‖ This trend was confirmed in Alpha Sewing Machine v Registrar of Trademarks78, in which the Supreme Court of Pakistan approved the following observations of the Lahore High Court: ―With the proliferation of the means of communication media the names and products of major world-renowned companies are getting the attention of the public at large in all civilized countries of the world and Pakistan is no exception. Extensive travelling abroad in the recent past has made it possible for the people of Pakistan to have knowledge of internationally renowned companies and their products.‖ This judicial trend was explained by the Sindh High Court in Morphy Richards Ltd v Registrar of Trademarks79 as follows: ―An enactment on trademarks is essentially an international statute, catering to national and international sensibilities… We are living in an information age where the world has become a veritable global village.‖ Globalisation thrives on the honesty of business practices. The judgments delivered by the Pakistani courts on IP rights (particularly in relation to the adoption and use of marks, the marketing of novel products and the use of copyrighted matter) show that the consideration of honest intentions has been pivotal to such judgments. Thus, in Cooper‟s Incorporated v Pakistan General Stores 80 the Supreme Court of Pakistan held that: ―although the appellant has not been selling its products in Pakistan because of import restrictions, this does not entitle the respondent to copy the appellant‘s trademark because by doing so it is deceiving the public into thinking that its products are the products of the appellant.‖ In the same case the Supreme Court also approved the following findings by the High Court: ―Clearly, if the adoption of a trademark by an appellant is proved to be dishonest, no amount of use of the trademark by it can justify registration.‖ In Kabushiki Kaisha Toshiba v Ch Muhammad Altaf81 the Supreme Court, while refusing a Pakistani applicant‘s registration of the trademark TOSHIBA, held that: ―The respondent has shown no reason tenable at law to pick up an invented word of a foreign firm enjoying both inside and outside the country 76 Pakistan Globalization and protection of foreign trademarks- Building and enforcing intellectual property value 2007 p 285-287. 77 (PLD 1979 Kar83) 78 (PLD 1990 SC 1074) 79 (1992 MLD 2506) 80 (1981 SCMR 1039) 81 (PLD 1991 Supreme Court 27) 250 A Comparative Study of Well-Known Trademarks Protection in Italy, Pakistan and Uzbekistan ________________________________________________________________________________ a reputation for electrical goods of various descriptions. It is registered in this country as such. Against this background, the adoption of the same trademark phonetically in respect of electric fans is bound to create a likelihood of confusion and deception to the consumers of such goods. Hence, it is against the public interest to register such a trademark.‖ In another landmark judgment of the Sindh High Court in National Detergents Ltd v Nirma Chemicals Works82, in which the foreign company‘s trademark NIRMA was not being used in Pakistan, it was held that: ―The appellants have not alleged that the first respondents had abandoned any intention to use their foreign trademark in Pakistan for the goods and such inference cannot also be drawn in this case as the respondents have themselves filed an application for registration of their mark and have expressed their intention to use it in Pakistan. The use of the word ‗Nirma‘ is clearly not bona fide. No appreciable reason has been shown by the appellants or their counsel except with the intention to cause confusion. The conduct of the appellants in appropriating the trademark of foreign owners is not proper.‖ In Mars Incorporated v Pakistan Mineral Water Bottling Plant (Private) Limited83the defendants launched their beverages under the trademark MARS, which is famous worldwide for confectionery. The Sindh High Court at Karachi granted an interim injunction in favor of Mars even though the plaintiff‘s goods (confectionery products) were different from the defendant‘s goods, and recognized MARS as a well known international mark. 4. PROTECTION OF WELL-KNOWN MARKS IN UZBEKISTAN Since 1991, when Uzbekistan had to jump from socialist to market economy, there has been a great amount of work done in the field of legislative reforms in all of the branches of law, including intellectual property. As a member of the Paris Union and WIPO, and a country willing to become a member of World Trade Organization (WTO), Uzbekistan nowadays needs to build a mechanism for efficient protection of intellectual property, including the protection of well-known marks. The national legislation concerning protection of well-known marks in Uzbekistan at the moment consists only of three documents. They are: 1. Law of the Republic of Uzbekistan ―On Trademarks, Service Marks and Appellations of Origin‖, 2001 (hereinafter ―The Law‖); 2. Rules of filing and examination of appeals and applications in the Board of Appeal of the State Patent Office of the Republic of Uzbekistan, reg.# 1889 of 24.01.2009 (hereinafter ―The Rules‖); 3. Recommendations on the conduction of surveys among consumers on the issue of recognition of a trademark to be well-known in Uzbekistan (hereinafter ―The Recommendations‖). 82 83 (1992 MLD 2357) (2001 MLD 39) Saad Nursrullah, Luigi Mastroianni and Djakhagir Aripov 251 ________________________________________________________________________________ The Law The current edition of the Law of the Republic of Uzbekistan ―On Trademarks, Service Marks and Appellations of Origin‖ was adopted in 2001 and was amended twice since that time: in 2002 and 2007. The last time it was amended there were added two articles, the significance of which for the purpose of this chapter is enormous. Those two articles, namely 321 (―A Well-Known Trade Mark‖) and 322 (―Legal Protection of a Well-Known Trade Mark‖), in strive of implementing of the Art. 6bis of the Paris Convention, directly deal with the issues of recognition of well-known marks in Uzbekistan. Article 321 of the Law stipulates the following: ―A trademark84 protected in the territory of the Republic of Uzbekistan on the basis of its registration, a trademark, protected in the territory of the Republic of Uzbekistan without registration in accordance with the international treaty of the Republic of Uzbekistan, as well as a sign used as a trademark, but having no legal protection in the Republic of Uzbekistan, may be recognized as well-known in the Republic of Uzbekistan on the basis of the application of a legal or a natural person, if such trademarks or signs have on the date specified in the application become widely known among relevant consumers in respect of the goods of that person, as a result of their [trademarks and signs] intensive use. Well-known trademark is granted the same legal protection as provided by this Act for a trademark‖. As we can see, the article provides us with basic concept of a Well-Known Mark in Uzbekistan, namely it establishes the following requirements: 1) The mark claimed to be well-known must be one of the following 3 types of marks are eligible for protection: a) registered trademarks; unregistered trademarks protected under international treaties85; b) unregistered signs used as trademarks. 2) The mark is widely known among relevant consumers in respect of the goods of the claimant. 3) 84 There must be intensive use of the mark86. Under the Art. 3 of the Law, the term ―trademark‖ also applies to service marks, therefore protection for a well-known service mark may also be sought under the same conditions. This is of specific importance in the context of compliance with Art. 16.2 of the TRIPS Agreement 85 at the moment the only treaty under which protection is granted to trademarks without registration in Uzbekistan is a Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (1989) (Madrid Protocol), in force for Uzbekistan since December, 2007 252 A Comparative Study of Well-Known Trademarks Protection in Italy, Pakistan and Uzbekistan ________________________________________________________________________________ The procedure of recognition can be started only upon the request (application) of an interested person, and not ex officio. Article 322 of the Law deals with the bases of procedure for granting protection to well-known marks: designation of a ―Competent Authority‖87, inclusion of recognized well-known mark into the special List, publication and issuance of a certificate. According to this article, legal protection of a well-known trademark once granted is valid indefinitely. As to the issue of protection from dilution the following must be stated. According to the Art. 10 of the, Law existence of a well-known trademark is an absolute ground for refusal of registration of another identical of confusingly similar trademark in respect of any types of goods [or services]. This looks like an attempt to comply with the requirements of the Art. 16.3 of the TRIPS Agreement, although rather awkward and vague, because it does not say that the well-known mark must be registered first, as well as that the requirements i) of a threat of ―connection‖ or association with the well-known mark owner, and ii) possible damage to the interests of the latter, must be met. Therefore, this provision may, and certainly will88, give birth to a lot of complications in practice. The Rules The document is compulsory to be followed by all legal and physical persons in Uzbekistan. The part relating to the procedure of recognition of a mark as wellknown in Uzbekistan mainly deals with the following issues: 1) requirements to application on recognition of a well-known mark, and materials complementary to it; 2) procedural issues: registration of applications, duration of proceedings, rules of proceedings, and issuance of a decision by the BoA. The core part of the Rules (for the purpose of this paper) is the requirements to application on recognition of a well-known mark, as it describes what type of information and supporting documents to be presented to the BoA for consideration. Article 7 of the Rules reads: 86 as we can see form the analysis of WIPO Joint Recommendations in Chapter 1.3 above, the criterion of intensive use of the trademark is contradicting to the Art.2(3) of the Joint Recommendation. 87 According to the Law, the Board of Appeal of the State Patent Office of Uzbekistan (hereinafter ―BoA‖) is the only competent governmental body to decide on the issue if recognition of wellknown marks. Courts have absolutely no authority over this issue. 88 up to the moment there has been issued not a single decision on the recognition of well-known marks in Uzbekistan Saad Nursrullah, Luigi Mastroianni and Djakhagir Aripov 253 ________________________________________________________________________________ ―Application […], and the accompanying materials must contain the actual data confirming that the trademark is well-known. These materials may be documents containing: information about intensive use of the trademark on the territory of the Republic of Uzbekistan; list of geographic locations where the goods (in respect of which the trademark is used) have been sold; information about the amount of sales of these goods; information about the way of use of the trademark, including advertising and presentation at fairs or exhibitions of products and/or services for which the mark is applied; information about annual average number of consumers of the goods; information about the countries in which the trademark has become wellknown; the surveys of consumers of goods, provided by specialized independent organization, in accordance with the recommendations set out by the Patent Office. The duration, continuity, intensity and volume of use of a trademark may be demonstrated by presenting of: conclusions of product quality control bodies, trade organizations, and societies for the protection of consumer rights; declarations, quality certificates, and other documents. The application must indicate the date from which the use of the trademark has begun, and the date from which the claimant considers his trademark as well-known in the territory of the Republic of Uzbekistan‖. This is an obvious attempt to implement WIPO Joint Recommendation Concerning Provisions on the Protection of Well-Known Marks89, but with its specific features. Although optional (as well as the Joint Recommendation itself), the list above focuses more on the criterion of intensive use of the trademark in Uzbekistan, as implying that use is a decisive factor (and it actually is according to the Article 321 of the Law) in recognition of a well-known mark, which is inconsistent with the Art.2(3) of the Joint Recommendation. In fact the Rules (as well as the Law) do not contain any ―non-criteria‖, i.e. criteria which cannot be demanded by the BoA to be met by the claimant, which leaves a room for abuse by the BoA of its powers to grant protection to a well-known mark. The Recommendations The Recommendations are not obligatory provisions to be taken into account when conducting a survey on whether the mark is well-known or not in Uzbekistan. According to the Rules mentioned above, surveys or polls are not compulsory to be presented to the Board of Appeal for the latter to decide on the issue of recognition of a mark to be well-known in Uzbekistan. But it is encouraged to present them anyway (although they can turn out to be very costly) because they 89 See Chapter 1 above 254 A Comparative Study of Well-Known Trademarks Protection in Italy, Pakistan and Uzbekistan ________________________________________________________________________________ give a clear picture of the issue, i.e. the actual numbers and figures on how wellknown a mark is in a certain relevant sector of the public, or in other words, by an ―average consumer‖ of goods and/or services in Uzbekistan. Mainly the Recommendations contain guidelines for conducting a survey specifically designed to help specialized organizations present information necessary to identify if a trademark has or has not become well-know in Uzbekistan. Saad Nursrullah, Luigi Mastroianni and Djakhagir Aripov 255 ________________________________________________________________________________________________________________________________________ 5. A COMPARATIVE ANALYSIS No. 1 2 Name of legal element of well-known marks protection regime Legal system International obligations 3 Who can claim protection and how it can be claimed? 4 Grounds (criteria) for protection 5 Competent authorities 6 Exception from the principle of territoriality Italy Civil law TRIPS, Paris Convention An interested legal or a natural person can file an application with the Competent Authority, not ex officio The Italian Industrial Property Code affords to both marks that are wellknown within the meaning of Article 6bis of the Paris Convention and registered marks that enjoy a reputation the power to cancel the registration of identical or similar marks for dissimilar goods or services, while it affords only the latter protection against the unauthorized use of identical or similar marks with respect to dissimilar goods or services. Tribunal IP Specialized Sections Present Pakistan Common law TRIPS, Paris Convention Owner of a well known TM can file an application with the competent authority. Any ground competent authority consider relevant especially mentioned in Sec. 86(2) of the TM Ordinance, 2001. Trademark Tribunal, Court of law Present Uzbekistan Notes Civil law Paris Convention An interested legal or a natural person can file an application with the competent authority, not ex officio 1. The mark is widely known among relevant consumers in respect of the goods of the claimant 2. There must be intensive use of the mark Board of Appeal of the State Patent Office of Uzbekistan Present Uzbekistan: the criterion of intensive use of the trademark is contradicting to the Art.2(3) of the WIPO Joint Recommendation Uzbekistan: protection may be granted to unregistered signs used as trademarks and service marks A Comparative Study of Well-Known Trademarks Protection in Italy, Pakistan and Uzbekistan 256 _____________________________________________________________________________________________________________________________ ________________ Uzbekistan: too broad – existence of a WKTM is an absolute ground for cancellation of any identical or confusingly similar existing mark or refusal to future identical or confusingly similar mark for any types of goods or services 7 Exception from the principle of specificity Present Present Present 8 9 Protection from dilution by blurring Protection from dilution by tarnishment Scope of protection if mark is registered Yes Yes Yes Yes See notes to point 7 above See notes to point 7 above Registration does not influence the scope of protection Registration does not influence the scope of protection Uzbekistan: See notes to point 5 11 Scope of protection if mark is unregistered Bad faith consideration Registration does not influence the scope of protection Not present Uzbekistan: See notes to point 5 12 Registration does not influence the scope of protection Article 19(2) prohibits the registration of a mark filed in bad faith. For protection of wellknown mark registration is not mandatory Protection is provided for unregistered well known marks Usually considered especially for passing off actions 13 Retroactive protection of wellknown mark or possibility of coexistence of two similar or identical marks (for similar or identical products in case of unregistered WKTMs) Yes, Depending upon the merits of a case. See notes to point 7 above 10 See point 4 above Uzbekistan: This must be definitely included into legislation of Uzbekistan along with the basics of doctrine of passing off from common Law tradition 257 A Comparative Study of Well-Known Trademarks Protection in Italy, Pakistan and Uzbekistan ________________________________________________________________________________ CONCLUSIONS Trademarks/service marks are used by persons or companies to identify their goods/services. Marks exist to protect consumers from confusion as to the source of a product/service. Principle of territoriality and specificity are very important part of any trademark law. However, an exception to these principles is the well known marks doctrine. Statutory evolution and recent cases show that the protection afforded to ―Well Known‖ trademarks is increasing. Even in the absence of any likelihood of confusion as to the origin of products, the protection of a trademark aimed at providing its owner with a return for promotional and advertising investment is clear. In this paper we have reviewed the concepts of the well known and famous marks. We have examined Trademark Laws of Italy, Pakistan and Uzbekistan for approaches to well known trademarks and have found that, in general, well known and famous trademarks are well protected by trademark law in Italy, Pakistan and Uzbekistan even though the means of achieving protection is sometimes is unclear in its path or uncertain in its objectives. 258 A Comparative Study of Well-Known Trademarks Protection in Italy, Pakistan and Uzbekistan ________________________________________________________________________________ BIBLIOGRAPHY International Disciplines and Relevant Literature FREDERICK M. ABBOTT – THOMAS COTTIER – FRANCIS GURRY, International intellectual property in an integrated world economy, Aspen Publishers, 2007 BARTON BEEBE, A Defense of the New Federal Trademark Antidilution Law, in 16 Fordham Intell. Prop. Media & Ent. L.J. 2006, 1142 ff. W. CORNISH- D. LLWELYN, Intellectual Property: Patents, Copyrights, Trademarks and Allied Rights, Sweet & Maxwell, London, 2007 TASHIA A. BUNCH, Well-known Marks Doctrine: Where do we go from here?, Journal of the Patent Trademark Office Society, March 2008, Thomson Reuters, 2009 S. P. CHEETHAM, Protection of Intellectual Property Rights in luxury goods, M.A. Cohen-A.E. Ban-S.J. Mitchell (eds.), Chinese Intellectual Property law and practice, Kluwer Law International, The Hague, 2000. J. THOMAS MCCARTHY, Dilution of a trade mark: European and United States law compared, in Vaver D., Bently L. (edited by), Intellectual property in the new millennium, Essays in honour of William R. Cornish, Cambridge University Press, Cambridge, 2004, F. MOSTERT, The protection of famous trademark on non competing goods, in Vol. I Intellectual Property Studies, 1996. B. W. PATTISHALL–D. C. HILLIARD–J. N. WELCH II, Trademarks and competition desk book, Matthew Bender, New York, 2001. The protection of well known marks in Asia-pacific, Latin America and Africa, issued by the International Trademark Assoication, Oct. 2004. MCCARTHY, On Trademarks and Unfair Competition, West Group, 2002. T.J. MCCARTHY & F. MOSTER, Famous and Well-Known Marks - An International Analysis, 2nd Edition, International Trademark Association, New York, 2004. A.KUR, TRIPS and TRADEMARK LAW, in ―From GATTS to TRIPS‖, WEINHEIM, 1996. Saad Nursrullah, Luigi Mastroianni and Djakhagir Aripov 259 ________________________________________________________________________________ M. GRINBERG, The WIPO Joint Recommendation Protecting Well Known Marks and the Forgotten Good Will, Chicago- KENT Intellectual Property Law Society Journal of Intellectual Property, 2005. MICHAEL BLAKENEY, The Protection of Well-Known Trademarks, Lecture prepared for WIPO National Seminar On Intellectual Property organized by the World Intellectual Property Organization (WIPO) in cooperation with the Cairo University, Arab Republic of Egypt (Cairo, February 17 to 19, 2003) STEPHEN P. LADAS, International Protection of Well-Known TradeMarks, The Trade-Mark Reporter, 1951 FREDERICK W. MOSTERT, Well-Known and Famous Marks: Is harmony possible in the global village?, The Trademark Reporter, 1996 HORACIO RANGEL-ORTIZ, Well-Known Trademarks Under International Treaties, Trademark World, February 1997 DAVID H. TATHAM, WIPO Resolution on Well-known Marks: A Small Step or a Giant Leap?, Sweet & Maxwell Ltd and Contributors, 2000 Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS), signed in Marrakesh, Morocco, on 15 Apr 1994. Joint Recommendations Concerning Provisions on the Protection of WellKnown Marks, adopted in 1999 by the World Intellectual Property Organization. Paris Convention for the Protection of Industrial Property, as amended in 1979. National (or Domestic) Disciplines of Italy, Uzbekistan and Pakistan and Relevant Literature ADRIANO VANZETTI – VINCENZO DI CATALDO, Manuale di diritto industriale, 6^ edizione, Giuffré Editore, 2009 JASMINE KARIMI, Avoiding Dilution of Well-known Marks in the US, EU and Asia, http://www.asialaw.com/Article/1971062/Avoiding-Dilution-ofWellknown-Marks-in-the-US-EU-and-Asia.html, April 2007 C. HEATH & K. LIU, The protection of well-known marks in Asia, Kluwer, The Hague, 2000 K. FAULKNER, Branding in South East Asia, in Brands and Branding, The Economist Series, Bloomberg press, Princeton, New Jersey, 2004. 260 A Comparative Study of Well-Known Trademarks Protection in Italy, Pakistan and Uzbekistan ________________________________________________________________________________ S. YOOK, Trademark Dilution in European Union, North Western School of Law, LEWIS & CLARK COLLEGE, 2001. Commentaries PIERGAETANO MARCHETTI – LUIGI CARLO UBERTAZZI, Commentario breve alle leggi su proprietà intellettuale e concorrenza, 4 edizione, Cedam, 2007 Cases (Chronological Order) Corte di Giustizia 6 ottobre 2009, causa C-301/07, Pago International GmbH c. Tirolmilch Genossenschaft mbH, caso «Pago» Opinion of the Advocate General Poiares Maduro of 22 September 2009, in Cases C-236-238/08, Google France e Google Inc. c. Lousi Vuitton Mallettier, Google France c. Viaticum Luteciel e Google France Bruno Raboin, Tiger SARL c. CNRHH, Pierre Alexis Thonet, case ―Google-Ad-Words‖ Trib. primo grado CE 15 settembre 2009, causa T-308/08, Parfums Christian Dior c. UAMI e Consolidated Artists BV, caso «MANGO adorably» Corte di Giustizia 18 giugno 2009, causa C-487/07, L‘Oréal SA, Lancôme parfums et beauté & Cie, Laboratoires Garnier & Ci. c. Bellure NV, Malaika Investments Ltd. e Starion International Ltd., caso «L‘Oréal» Conclusioni dell‘Avvocato generale Paolo Mengozzi del 10 febbraio 2009, causa C-487/07, L‘Oréal SA, Lancôme parfums et beauté & Cie, Laboratoires Garnier & Ci. c. Bellure NV, Malaika Investments Ltd. e Starion International Ltd., caso «L‘Oréal» Corte di Giustizia 18 dicembre 2008, causa C-16/06 P, Les Editions Albert René c. UAMI, caso «Mobilix» Corte di Giustizia 11 dicembre 2008, causa C-57/08 P., Gateway, Inc. c. UAMI e Fujitsu Siemens Computers, caso «Activy Media Gateway» Corte di Giustizia 27 novembre 2008, causa C-252/07, Intel Corporation c. CPM UK Ltd., caso «Intel» Conclusioni dell‘Avvocato generale Sharpston del 26 giugno 2008, causa 252/07, Intel c. CPM UK Ltd., caso «Intel» Trib. primo grado CE 19 giugno 2008, causa T-93/06, Mühlens GmbH & Ko. KG c. UAMI e Spa Monopole, compagnie fermière de Spa SA/NV, caso «Mineral spa» Saad Nursrullah, Luigi Mastroianni and Djakhagir Aripov 261 ________________________________________________________________________________ Corte di Giustizia 12 giugno 2008, causa C-533/06, O2 Holding Ltd., 02 (UK) Ltd. c. Hutchinson 3G UK Ltd., in Racc. 2008, I, 4231 ss., caso «O2» Trib. primo grado CE 16 aprile 2008, causa T-181/05, Citigroup Inc. e Citibank NA c. UAMI e Citi SL, in Racc. 2008, II, 669, caso «Citi/Citibank» Conclusioni dell‘Avvocato generale Paolo Mengozzi del 31 gennaio 2008, causa C-533/06, O2 Holding Ltd., 02 (UK) Ltd. c. Hutchinson 3G UK Ltd., caso «O2» Trib. primo grado CE 30 gennaio 2008, causa T-128/06, Japan Tobacco, Inc. c. UAMI e Torrefação Camelo Lda, caso «Camelo» Conclusioni dell‘Avvocato Generale Trstenjak del 29 novembre 2007, causa C-16/06 P, Les Editions Albert René c. UAMI, caso «Mobilix» Trib. primo grado CE 27 novembre 2007, causa T-434/05, Gateway Inc. c. UAMI e Fujitsu Siemens Computers GmbH, caso «Activy Media Gateway» Corte di Giustizia 22 novembre 2007, causa C-328/06, Alfredo Nieto Nuño c. Leonci Monlleó Franquet, caso «Fincas Tarragona» Conclusioni dell‘Avvocato generale Paolo Mengozzi del 13 settembre 2007, causa C-328/06, Alfredo Nieto Nuño c. Leonci Monlleò Franquet, caso «Fincas Tarragona» Trib. primo grado CE 11 luglio 2007, causa T-150/04, Mühlens GmbH & Co. KG c. UAMI e Minoronzoni s.r.l., in Racc. 2007, II, 2353 ss., caso «Tosca Blu» Trib. primo grado CE 11 luglio 2007, causa T-263/03, Mühlens GmbH & Co. KG c. UAMI e Conceria Toska s.r.l., caso «Toska» Trib. primo grado CE 16 maggio 2007, causa T-137/05, Gruppo La Perla c. UAMI e Worldgem Brands – Gestão e Investimentos Lda, caso «La Perla» Court of First Instance 10 May 2007, in case T-47/06, Antartica s.r.l. c. UAMI e Nasdaq, case «Nasdaq» CFI 22 March 2007, in Case T-215/03, Sigla SA v. OHIM and Elleni Holding BV, case «VIPS» CFI 6 February 2007, case T-477/04, Aktieselkabet af 21.november 2001 v. OHIM and TDK Kabuiki Kaisha (TDK Corp.), case «TDK» Corte di Giustizia 25 gennaio 2007, causa C-48/05, Adam Opel c. Autec, in Racc. 2007, I, 1017 ss.; in Foro It. 2007, 137 ss. con nota di CASABURI e in Il dir. ind. 2007, 423 ss. con nota di M. BOGNI, Il marchio automobilistico dei modellini, 262 A Comparative Study of Well-Known Trademarks Protection in Italy, Pakistan and Uzbekistan ________________________________________________________________________________ caso «modellini in miniatura» Trib. primo grado CE 27 ottobre 2005, causa T-336/03, Les Editions Albert René c. UAMI e nei confronti di Orange A/S, in Racc. 2005, II, 4667 ss., caso «Mobilix» Trib. primo grado CE 25 maggio 2005, causa T-67/04, Spa Monopole, compagnie fermière de SPA SA/NV c. UAMI e Spa-Finders Travel Arrangements, in Racc. 2005, II, 1825 ss., caso «Spa-Finders» Trib. di primo grado 13 dicembre 2004, in causa T-8/03, El Corte Inglés SA c. UAMI e Emilio Pucci, in Racc. 2004, II, 4297 ss., caso ―Emilio Pucci‖ Corte di Giustizia 23 ottobre 2003, causa C-408/01, Adidas-Salomon AG e Adidas Benelux BV c. Fitnessworld Trading Ltd., in Racc. I, 389 ss., Giur. ann. dir. ind. 4608; in Il dir. ind., 2004, 31 ss. con Commento di R. S. DE MARCO e in Giur. comm. 2004, II, 363 ss. con nota di N. BOTTERO, Marchi notori, beni affini e usi atipici nella giurisprudenza comunitaria, caso «Adidas-Fitnessworld» Corte di Giustizia 9 gennaio 2003, causa C-292/00, Davidoff & Cie SA e Zino Davidoff SA c. Gofkid SA, in Racc. 2003 I, 389 ss., in Giur. it. 2003, 283 s. con mia nota La tutela dei marchi che godono di rinomanza nei confronti della registrazione ed utilizzazione per beni affini nella giurisprudenza della Corte di Giustizia e in Giur. comm. 2003, II, 574-584 con mia nota Marchi che godono di rinomanza e beni affini nella giurisprudenza comunitaria,, caso «Davidoff» Corte di Giustizia 14 settembre 1999, causa C-375/97, General Motors Corp. c. Yplon, in Racc. 1999, I, 5421 ss., caso «General Motors/Yplon» Boards of Appeal, Yearly overview of decisions 2007, http://oami.europa.eu/search/LegalDocs/la/en_BoA_index.cfm National Laws and Regulations Pakistan Trademark Ordinance, 2001. Pakistan Trademark Rules, 2003. Law of the Republic of Uzbekistan on Trademarks & Appellations of Origin of Goods, 2001 Rules of filing and examination of appeals and applications in the Board of Appeal of the State Patent Office of the Republic of Uzbekistan, reg.# 1889 of 24.01.2009. COLOR AND COMBINATION OF COLORS AS TRADEMARK by Chiara Gaido Giselda Metaliaj TABLE OF CONTENTS 1. INTRODUCTION 1.1. Non-Traditional Trademarks 1.2. Where is the Distinctiveness? 2. REGISTRABILITY OF COLORS AND COMBINATION OF COLORS AS TRADEMARK 2.1. The European Situation 2.2. The Registrability of Color per se 2.3. Is there a Different Approach for what concerns the Combination of Colors? 3. THE CASES 3.1. The Libertel Case 3.2. The Heidelberger Case and the Subsequent Decisions 4. THE US SITUATION 5. A CASE STUDY: THE PHARMACEUTICAL INDUSTRY 6. IS THERE ANY FUTURE FOR THESE TRADEMARKS? BIBLIOGRAPHY 264 Color and Combination of Colors as Trademarks ________________________________________________________________________________ 1. INTRODUCTION The scope and functions of the modern trademark have expanded, as civilization continues to evolve into a modern technological era. For many years, it has been impossible to protect colors as trademarks and also even if still there is a large amount of uncertainty1 about the protection of colors as a trademark, it‘s now undeniable that, in the most recent jurisprudence of European Court of Justice (ECJ), something new is now appearing on the scene bringing the European statements closer to the US approach. In this paper we will deal with colors per se and with combinations of colors as one of the most important category of non-conventional trademarks. In the light of the leading cases from US Supreme Court and from ECJ, considering the evolved applicable law in these countries, we will try to draw a picture of the present situation and to consider what are the possible future scenarios for this category of marks. While the combination of colors is quite more unified area, the destiny of colors per se is related to the national legislations, where different countries have chosen to specifically permit or exclude the registrability of color per se as trademark. We have chosen to inscribe a case study focused on the pharmaceutical industry, as it is a very interesting field where colors trademark are getting used more and more by companies to identify their products. The aim of this paragraph is to analyze the existing relationship between consumers and pharmaceutical trademarks, especially from the point of view of their perception of the signs and the relevant public that has to be taken into account in the case of likelihood of confusion. 1.1. Non-Traditional Trademarks Among the world of trademarks the so called non-conventional or nontraditional trademarks have recently created a new group that is getting more and more attention from the market, lawyers, and by consequence, from the Courts2. Due to the lack of clearness, exhaustive explanations and strictness of the Legislator in the approach to the non-traditional trademarks, then the last word belongs to the Courts. Before analyzing the different features and issues of non-traditional trademarks, it is compulsory to explain what can constitute a trademark in the light of the main international treaties. 1 P. A. Dubois, Color trademark-the US and European approaches converge, IAM magazine, 2005, at 30 2 P. Torremans, Intellectual Property Law, Fifth edition, Oxford University Press, 2008 ; M. Schwarz, Registration of colours as trademarks, case comment, EIPR; L. Bently, B Sherman, Intellectual Property Law, Third Edition Oxford University Press, November 2008 265 ________________________________________________________________________________ Chiara Gaido and Giselda Metaliaji Article 6ter of the Paris Convention for the Protection of Industrial Property, signed on the 20th march 1883 (and following amendments) has only defined what can not be used as a mark, not giving any further explanation on which signs can be validly used. In particular, this article expressly excludes from the registration ―...State Emblems, Official Hallmarks, and Emblems of Intergovernmental Organizations”3. Can the famous statement ―what is not prohibited is allowed‖ take place in this case? TRIPs agreement tried to fill this gap by dealing with the protectable subject matter for trademarks. The TRIPS Agreement was adopted at Marrakesh on April 15, 1994 as annex C of the final act embodying the results of Uruguay Round of Multilateral Trade Negotiations from 1986 to 1994. The Agreement came into force on January 1995 and introduced global minimum standards for protecting and enforcing all forms of intellectual property rights. For what concerns trademarks, articles 15-21 lay down the rules for their protection. Article 15 (1) gives a broad definition of a trademark as it includes “any sign, or any combination of signs, capable of distinguishing the goods or services of one undertaking from those of other undertakings”. The second sentence continues by listing some of the signs that can be a valid trademark, such as “...in particular words including personal names, letters, numerals, figurative elements and combinations of colors as well as combinations of such signs...”. The words “such as” lead us to the conclusion that this is an indicative list, not an exhaustive one. Therefore, other signs can be eligible for trademark. Nontraditional trademarks belongs to this group, even if they are not specifically mentioned by article 15 and they comprise shapes, sounds, colors, smells or tastes. If the purpose of a trademark is to distinguish the goods or services of one undertaking and non-traditional trademarks are able to do that, why than their registration is so perplex and controversial from State to State? A lot of factors play an important role, like the difficulty of these marks to be presented graphically, to be visually perceptible4 and the lack of inherent distinctiveness. The most frequent reason for refusal to register non-traditional trademarks, such as color and shape marks, is lack of distinctiveness. In order to harmonize this area and to reach some unified standards AIPPI5 in 2004 has came up with a resolution for the Conditions 3 Paris convention for the Protection of Industrial Property signed on the 20th march 1883 [hereinafter Paris Convention], revised Iin the following years and amended in 1979, it counts today 173 contracting countries. 4 Agreement on Trade-Related Aspects of Intellectual Property Rights, Apr. 15, 1994, Marrakesh Agreement Establishing the World Trade Organization, Annex 1C, Legal Instruments—Results of the Uruguay Round, 33 I.L.M. 1125, 1197 (1994) [hereinafter TRIPs Agreement], art. 15(1) 5 AIPPI resolution, Q.181. Conditions for registration and scope of protection of non conventional trademarks, in www.aippi.org 266 Color and Combination of Colors as Trademarks ________________________________________________________________________________ for registration and scope of protection of non-conventional trademarks6 aiming to influence the international regulation of this field. In any case, a mark not having a prima facie distinctive character, can nonetheless be protected if, following intense use over certain time period by a company, it assumes, in the eyes of the public, an individualizing capacity it lacked originally towards the goods and services of that company (the so called secondary meaning). In relation to this aspect, article 15 (1) of the TRIPs agreement states that “...Where signs are not inherently capable of distinguishing the relevant goods or services, Members may make registrability depend on distinctiveness acquired through use. Members may require, as a condition of registration, that signs be visually perceptible”. In other words, the secondary meaning is acquired when, in the mind of the public, the primary meaning of sign serves to identify the origin of a product and not the product itself. As we will see further, the registration of colors trademarks have been accepted, in many cases, only on the basis of their proved secondary meaning. In fact the inherent disctinctiviness of these signs still remains a ground of refusal difficult to overcome. 1.2. Where is the Distinctiveness? According to the statistics of 2008 of OAMI7 color is the second mark, after shape, most registered in EU belonging to the group of non-traditional trademarks. The color‘s power in the identification of the brand has been understood from the marketers and effectively used by them because color is first perceived by the sense of sight8, the first element that attract our attention. Considering the power of advertisement in this consuming society, companies are willing to be more attractive and to present their products or services in such a manner that would be appealing to the consumer‘s aesthetic sense9. Furthermore, color can be the identifier of the company‘s image10, despite the different types of products it may offer. Today, in a world market, colors are most likely to overcome the linguistic and cultural barriers, being perceived in the same way throughout the world. But, maybe because of these facts there is the need to let colors free and not give monopolist rights over their use. 6 R. Sieckmann, Welcome to the non-traditional trademark archive, in www.copat.de OHIM Report, Statistics of Community Trade Marks 2008, in www.oami.europa.eu 8 S. Sandri- S. Rizzo, Non-conventional trademarks and community law , Marques, 2003, at 70 9 N. Mishra, Registration of Non-traditional trademarks, JIPR, January 2008, 43 ff 10 S. Sandri- S. Rizzo, Non-conventional trademarks and community law , supra note 6, at 70 7 267 ________________________________________________________________________________ Chiara Gaido and Giselda Metaliaji The color mark is either composed of a color per se or of a combination of colors. A color combination is a collection of more than a single color on products and services for the purpose of distinctiveness and of indicating their commercial or service origin. One of the first and most important conditions for a mark to be eligible for registration is the requirement of distinctiveness. A mark has to be distinctive in order to get registered. When it comes to colors this requirement is probably the most difficult barrier to overcome. In fact it is still controversial if a color can be considered inherently distinctive from the beginning. It seems that ―the distinctiveness‖ requirement in the case of colors is more rigid and strict comparing with signs or words because of the competitors‘ interest to keep the colors free to use11. In the Light Green case12, Board of Appeal of OHIM (BOA) affirmed that a color per se in many cases lacks the distinctiveness. Exception to this rule may be only found if a very peculiar color shade is used and it regards very specific goods (for instance, black color use for detergents). The Board also affirmed that if a monopoly right on the use of light green for chewing gum were allowed, it would prohibit competitors from using similar shades for similar products with regard to which confusion could arise, bringing as consequence, problems on the competition. Another position has been held by the ECJ in the case KWS Saat AG13. With this decision, the Court has established that a decisive factor to decide whether the color is distinctive or not, it is the public itself to whom the goods/services are targeted. The relevant public of a particular sector is knowledgeable and attentive; therefore it can distinguish if the color used really acts as badge of the commercial origin of the product without misunderstanding any substantive value of the product itself. On the other hand, we have to consider that, for a lot of colors there is a conventional meaning as e.g green means natural products, white has a connection with cleanliness and purity, as well as blue with freshness. These associations are regularly used in marketing and advertising to promote a product through the use of positive associations14. In the mind of consumers there is a strong link between these colors and characteristics of the products. From this point of view, the use of the color per se can be considered non distinctive and can put at in a disadvantage position the competitors. 11 C. Schulze, Registering Color trade mark in European Union, in EIPR, 2003 at 55 Board of Appeal of OHIM December 3, 1998, Light Green R-122/2998-3 13 European Court of Justice October 21, 2004, case C-447/02 , KWS Saat AG v. OHIM 14 M. Green, Color in Trademark and Trade Dress disputes, in www.visualexpert.com, 2007 12 268 Color and Combination of Colors as Trademarks ________________________________________________________________________________ 2. REGISTRABILITY OF COLORS AND COMBINATION OF COLORS AS TRADEMARK A trademark to be validly registered has to consist in a ―sign‖; no statutory definitions of this term are expressed neither in the European legislation, neither in the American one, furthermore, the ECJ has held that the concept of sign is not limited to visually perceptible matter15 and for this reason, sounds, smells and colors have been held to fall within the notion of sign. The essential function of a trademark is to guarantee the identity of the origin of the marked goods or service to the consumer or end-user by enabling him, without any possibility of confusion, to distinguish the product or service from others which have another origin. In other words, the primary purpose of a trademark is to act as a badge of origin. When a color can be considered as a sign identifying a specific good or service? In the light of the Qualitex and Libertel decisions, we have to consider that trademark rights are monopolistic and have no limitation on the duration of their subsistence; and for this reason once a sign has been accepted for registration, the rights of the proprietor are very strong, subject to a few minor exceptions and limitations16. The main problems concerning the registration of colors as trademarks are two: the first issue regards the greater monopoly that could be granted to the proprietor of a single color mark with a reputation. In this case, in fact, the protection could be extended to different shades of that color and to non similar goods, bringing by consequence, dangerous effects on competition. The second problem instead is connected to the balance that has to be found between the interest of companies, which want to achieve more and more competitiveness on the market, and the public interest of their competitors, to not be restricted on the availability of signs to distinguish their products or services (the so called requirement of availability)17. 2.1. The European Situation The European Community enacted the First Council Directive on trademark law of 21 December 1988 (Regulation n. 104/89), which was aimed in 15 European Court of Justice December 12, 2002, case C-273/00, Ralf Sieckmann v. Deutsches Patent-und Markenant , parag. 43-44 16 D. I. Bainbridge, Smelll, Sound, Colour and Shape trade marks: an unhappy flirtation?, in JBL, 2004, at 223 17 European Court of Justice February 12, 2002, case C-363/99 Koninklijke KPN Nederland NV and Benelux Merkenbureau, parag. 32 Conclusion; S. Sandri, La giursprudenza comunitaria in tema di marchi non convenzionali, in Dir. Ind. 2004, at 216 269 ________________________________________________________________________________ Chiara Gaido and Giselda Metaliaji approximating the trademark laws of the Member States, in order to promote the internal market and remove disparities that may impede competition. In order to open up unrestricted economic activity, in 1993 the European Council promulgated the Community Trademark Regulation n. 40/94. The Regulation uniformed the identification of products and services throughout the EU and settled out the provisions governing the filing of an application for a community trademark, the conditions associated with the entitlement of the proprietor and the possibility for third parties to make written observations to OHIM and to oppose the registration of a trademark18. In particular, the Regulation established the ―searching‖ system designed to identify any conflict with other earlier rights. The Regulation was later amended into the European Council Regulation No. 3288/94 in order to implement the TRIPs agreement. In 2004, the European Regulation No. 422/04 made a number of significant amendments to the community trademark system, with a view to increase its efficiency and to improve its operation. In particular, it simplifies the application of the ―searching system‖ in relation of existing rights. Because of many amendments introduced by the European Legislator to the Community Trademark System, in 2009 the European Council decided to codify it in the Regulation n. 207/200919, without making any substantive changes. The Community trademark regime is an autonomous system with its own set of objective sand rules peculiar to it; it is self-sufficient and applies independently of any national system. Consequently the registrability of a sign as a Community mark must be assessed by reference only to relevant Community rules. Accordingly, the Examination Office and, if appropriate, the Community judicature are not bound by a decision given in a Member State, or indeed a third country, that the sign is registrable as a national mark. According to article 2 of Council Directive n. 104/89 and to article 4 of Council Regulation No. 40/94 (now article 4 of the Council Regulation No. 207/2009): “A community trade mark may consist of any signs capable of being represented graphically, particularly words, including personal names, designs, letters, numerals, the shape of goods or of their packaging provided such signs are capable of distinguishing the goods or services of one undertaking from those of other undertakings.”. This article sets out the main features that a sign has to possess to be validly registered as trademark. 18 19 G. Rusen, ―Registrability of colors and smells as trademark”, in IJPM 2008, at 76 European Council Regulation No. 207/2009 on the Community Trade Mark 270 Color and Combination of Colors as Trademarks ________________________________________________________________________________ In particular, the sign must be capable of being graphically represented and it must be able to distinguish the related goods or services from those of the other companies18. Failure to comply with these requirements determines the denial of the registration as they are included in the absolute grounds for refusal provided by article 7 (1) (a) and (b), of the Council Regulation No. 207/2009. For what regards the graphical representation, in the case C-273/00 Ralf Sieckmann v. Deustches Patentund Markenant, the ECJ stated that the requirement of a graphical representation must ―enable the sign to be represented visually, particularly by means of images, lines or characters, so it can be properly identified... It must be clear, precise, self-contained, easily accessible, intelligible, durable and objective‖20. It is clear that this requirement is fundamental to grant legal certainty. In fact the trademark and the nature and scope of the rights associated with it can only be determined if the representation is precise and complete on its face. A graphical representation bearing the characteristics and qualities, settled out in the ECJ decision above mentioned, and the description of the goods or services for which the trademark is to be used, fully defines the true extent of the monopoly granted to the proprietor. In this way, on one side, other companies will be in the position to determine with a high degree of predictability what they can and cannot do. On the other side the proprietor of an earlier trademark will be able to see the precise nature of a trademark application so that he can assess whether or not it impinges upon his rights such that opposition proceeding should be initiated21. Instead, for what concerns the requirement of the distinctiveness, the focus is therefore on how the trademark would be perceived by the relevant public, which consists of average consumers of the goods or services in question. The Tribunal of First Instance of the European Court of Justice (TFI) has established that a sign, to be validly registered, it has to be capable to put the average consumer in the condition of repeating his choices in purchasing a specific good or service any time he will meet that particular sign22. Although the consumer is assumed to be reasonably observant, his level of attentiveness varies from sector to sector: the general consumer‘s level is lower in relation to everyday goods and it is higher for expensive goods23. For instance, for 20 European Court of Justice December 12, 2002, case C-273/00, Ralf Sieckmann v. Deutsches Patent-und Markenant, parag.46 and 55 21 D. I. Bainbridge, Smelll, Sound, Colour and Shape trade marks: an unhappy flirtation?, in JBL, 2004, at 223 22 European Court of First Instance February 7, 2002, case T-88/00, Mag Instrument Inc v. OHIM; S. Sandri, La Giurisprudenza comunitaria in tema di marchi non convenzionali, supra at note 14, at 218 23 L. Bently-B. Sherman, Intellectual Property Law, 3d ed., Oxford Press, at 819 271 ________________________________________________________________________________ Chiara Gaido and Giselda Metaliaji what concerns the pharmaceuticals, the jurisprudence of the ECJ has stated in many cases (recently in the case T-95/07, Aventis Pharma SA v. OHIM, parag. 25), that the level of attentiveness of consumers is particularly hight when it comes to medicines. 2.2. The Registrability of a Color per se The European trademark legislation does not contain any provisions limiting or barring the registration of colors or combination of colors as a trademark, provided they conform to the legal requirements of registration. The most important benchmark is whether the color performs the basic function of a trademark, which is to be distinctive of the proprietor‘s goods or services. Also the OHIM Examination Guidelines 24 explicitly contemplate the possibility of registering a color mark. Before analyzing the problems connected to the registrability of colors per se, it is necessary to focus our attention on the terms of signs and marks. A. Although the concept of sign is broad, it is not without limits. The terms of ―sign‖ and ―trademark‖ are not interchangeable, and there is a distinction between them. A sign can be a symbol, a device or an indicator (for example, an indication of quality or character). Trademarks are included within the meaning of signs but are sub species of them: they are graphical representations indicating origin25 of the related goods or services. In the leading case Libertel, the ECJ stated that “…that a color per se cannot be presumed to constitute a sign. Normally a color is a simple property of things. Yet it may constitute a sign. That depends on the context in which the color is used. None the less, a color per se is capable, in relation to a product or service, of constituting a sign”26 . B. Furthermore, the Court has held that a graphical representation it is necessary to enable the sign to be represented visually so that it can be precisely identified. In order to fulfill its function, the graphical representation must be “…clear, precise, self-contained, easily accessible, intelligible, durable and objective.”27 24 OHIM Examination Guidelines, parag. 3.7 in www.oami.europa.eu D. I. Bainbridge, Intellectual Property, 7th Edition, Pearson Longman, at 639 26 European Court of Justice May 6, 2003, case C-104/01, Libertel Groep BV v. Benelux Merkenbureau, parag. 28-29 27 European Court of Justice December 12, 2002, case C-273/00, Ralf Sieckmann v. Deutsches Patent-und Markenant, ut supra note 11 and 16, parag. 55 25 272 Color and Combination of Colors as Trademarks ________________________________________________________________________________ In the Libertel case, the Court also specified that to fulfill this requirement, it is not sufficient the deposition of a single sample of color while a verbal description could suffice under certain circumstances. The main purpose of this requirement is to enable the sign to be represented visually, granting in this way legal certainty. The importance of the graphical representation it is clear, in fact: 1) the precise subject of the protection afforded by registration can be determined; 2) competent authorities will be able to identify the sign with clarity and precision, so that they can fulfill their obligations (e.g. examinations, publications, maintaining the register, etc...) and 3) economic operators will be able, by consulting the register, to find out registrations and applications made by current or potential competitors and to receive informations about the rights of third parties. C. One of the aims of the trademark is to preserve consumers from confusion. To achieve this, a trademark has to be distinctive, it has to elude distraction or depletion and it has to make trademarks different from each others. When it comes to color marks, to prove their distinctiveness becomes more complicated and arduous as colors can also refer and belong to public domain. A mark's distinctiveness must be assessed, firstly, by reference to the related goods and services and, secondly, by reference to the way in which the mark is perceived by a targeted public, which is constituted by the consumers of the products. The mark must enable the public targeted to distinguish the goods or services from those of other undertakings, and to believe that all the goods or services identified by it are manufactured or provided under the control of the trademark owner, who can be held responsible for their quality. Only in this way will a consumer, who purchases the goods or services identified by the mark, be in a position on a subsequent purchase to make the same choice, if his experience is a positive one, or to choose differently if it is not.28 The ECJ in the Libertel case stated that “a color per se is not normally inherently capable of distinguishing the goods of a particular undertaking”27. The Court also recognized that there is a strong public interest in favor of keeping colors free because the number of colors actually available is limited and for this reason, a small number of trademark registrations could exhaust the entire range of colors available. It is clear that, in the case of a color per se, “distinctiveness without any prior use is unconceivable save in exceptional circumstances, and particularly where the number of goods or services for which the mark is claimed is very restricted and the relevant market is very specific‖29. 28 European Court of First Instance February 7, 2002, case T-88/00 Mag Instrument Inc. v OHIM, ut supra note 20, parag. 31 29 European Court of Justice Justice May 6, 2003, case C-104/01, Libertel Groep BV v. Benelux Merkenbureau, parag. 66 273 ________________________________________________________________________________ Chiara Gaido and Giselda Metaliaji Simple colors are likely to be treated as devoid of distinctive character because in many cases the color it has been considered part of ―the look of the goods‖ and consumers were not in the habit of assuming the origin of goods merely from the color of packaging30. In order to decide whether or not a sign is perceived as a trademark, it is compulsory to consider the average consumers‘ perspective of it. The relevant consumer has been construed as a reasonably well-informed and reasonably observant and circumspect. For what regards colors trademark, the consumer‘s perception is different from the perception related to traditional trademarks29, because it varies remarkably due to external conditions, to different culture, language, etc. In any case, if the sign can not be considered inherently distinctive, the distinctiveness can be acquired through use. If a sign is recognizable for the consumers and capable of distinguishing the related goods or services from the others products, this means that it acquired the so called secondary meaning. In relation to this aspect, article 7(3) of the Council Regulation No. 207/2009 states that “Paragraph 1 (b), (c) and (d) shall not apply if the trade mark has become distinctive in relation to the goods or services for which registration is requested in consequence of the use which has been made of it‖. On the basis of its established use in trade, OHIM has accepted the registration of lilac/purple color as a community trademark for Milka chocolate31. In the case Audi AG32, the CFI held that, to satisfy the requirement of acquired distinctiveness to overcome the absolute grounds for refusal under art. 7(1) (b)-(d) of the Regulation No. 207/09, the trademark must be seen by a significant proportion of relevant public as identifying the origin of goods or services in respect of which the trademark is used and that distinctive character must be shown to exist in the substantial part of the Community where it was devoid of any distinctive character. Factors to be taken into account include market share, intensity, geographical scope, duration of use and the amount of promotion of the mark33. 30 L. Bently – B. Sherman, Intellectual property law, ut supra note 19 , 823 ff OHIM registration n. 31336; UKPTO registration n. 2042556A 32 European Court of First Instance December 3, 2003, case T-16/02, Audi AG v. OHIM 33 European Court of Justice 30 June, 2005, case C-286/04P, Eurocermex SA v.OHIM 31 274 Color and Combination of Colors as Trademarks ________________________________________________________________________________ 2.3. Is there a Different Approach for what concerns the Combination of Colors? In respect of a single color trademark, combinations of colors should present fewer problems because they can be considered as expression per se of a minimum effort of creativity. The requirements needed for the registrability of these kinds of signs as trademarks are exactly the same than those required for the registration of a color per se. This means that a combination of colors, to be considered a valid trademark, it has to fulfill, first of all, the distinctiveness requirement and then the graphical representation. This principle has been confirmed by the CFI in the case VikingUmwelttechnik GmbH34. With this decision the CFI stated that colors or color combinations per se are capable of constituting Community trademarks in so far as they are capable of distinguishing the goods or services of one undertaking from those of another. The Court also focused its attention on the fact that the perception of the relevant section of the public is not necessarily the same in the case of a sign composed of a color or color combination per se as it is in the case of a word or figurative mark composed of a sign that bears no relation to the appearance of the goods that it identifies. While the public is accustomed to perceive words or figurative marks as instantly identifying the commercial origin of the goods, the same is not necessarily true where the sign forms part of the look of the goods in respect of which registration is sought. In the Viking case, the application was denied because of the imprecise and abstract graphical representation and because the combination of colors was not arranged in a particular format. In this case, the Court considered the juxtaposition of the colors just as characteristics of the goods themselves. Displaying colors on the products in a non-ordered way means that there will be a variety of possible different formats, which will not enable consumers to remember a particular colors combination and they could not repeat the purchase directly and with certainty. In conclusion, for what concerns the registrability of these non-traditional trademarks, we should underline that, it is not relevant the distinction between a color per se and a colors combination. The only important factor to be considered is weather the color in question, because of the arbitrariness of the choice or, for example for the constant use in time of it, can concretely function with a distinctive capacity for the products it characterizes. 34 European Court of First Instance 25 September, 2002, case T-316/00, Viking-Umwelttechnik GmbH v. OHIM, parag. 23-27 275 ________________________________________________________________________________ Chiara Gaido and Giselda Metaliaji 3. THE CASES 3.1. The Libertel Case Qualitex case has influenced the European approach. Although sympathy has been emanating towards the registration of color trademarks, the preponderance of cases rejected the distinctive character of color per se, and it has been accepted only if the color has gained the secondary meaning. OHIM remarked that, to be registered as a community trademark on the basis of the acquired distinctiveness, at first the trademark has to be used in the community as a whole or, at least, in a substantial part of it and, secondly, substantial part of the consumers have to recognize the sign as a distinctive trademark at the time the application is submitted. Before the leading case Libertel, BOA has dealt with various cases of color marks. The first case the Board dealt with, Orange I35, was concerned with formal requirements for the registration of a color mark rather than the issue of registrability as such. The applicant, in this case, had neither submitted a reproduction of the specific color shade claimed, nor referred to a widely known color reference system. The application was denied and also its subsequent appeal was dismissed because of lack of a clear graphical representation of the mark. The Libertel case 36 is the leading case for what concerns the registrability of a color per se in the European Union. In this case an application was made to register the single color orange in the telecommunications‘ field and the representation was submitted in the form of a rectangle of color with no other indication such as references to a color coding system. In this case, the ECJ stated that “a color per se may be found to possess distinctive character within the meaning of Article 3(1) (b) and Article 3 (3) of Directive 89/104, provided that, as regards the perception of the relevant public, the mark is capable of identifying the product or service for which registration is sought as originating from a particular undertaking and distinguishing the product or service from those of others undertakings”. This means that a color must have acquired distinctive character before it can be registered. The Court also confirmed that the condition required for the acceptance of the application for registration of a color mark is that this application must include 35 Board of Appeal of OHIM February 12, 1998, case R-7/1997-3, Orange, in. www.oami.europa.eu 36 European Court of Justice May 6, 2003, case C-104/01, Libertel Groep BV v. Benelux Merkenbureau, supra note 22 and 25 276 Color and Combination of Colors as Trademarks ________________________________________________________________________________ a written, clear, precise, self contained, easily accessible, intelligible and objective description. Merely reproducing the color in question on paper does not satisfy these requirements, whereas using an internationally recognized color code does. The deposition of a single sample of color it is not sufficient to grant the required protection. The Court also recognized the existence of an international color identification code (e.g. the Pantome Code), which is a commercial system that designates specific shades numerically and categorizes over thousands of shades by unique code37. This putted to an end the arguments that colors or combination of colors cannot be graphically represented. 3.2. The Heidelberger Case and the Following Decisions Libertel has been further confirmed by the Heidelberger case38 where the ECJ established, once again, its reticence regarding the registration of signs consisting of combination of colors. In this case the issue was focused on the requirement of the graphical representation, in particular the Court was asked to consider if a sample made of two stripes (one blue, the other one, yellow) could fulfill the requirement of a precise graphical representation. The trademark applied for were the applicant‘s corporate colors which were used in every conceivable form, in particular on packaging and labels. The ECJ ruled the abstract registrability of colors or combination of colors. Furthermore the Court stated that the protection could be granted only if: 1) the color or combination of colors used do not appear as characteristics of the marked goods or services; 2) the color can be represented graphically with lines, images, etc…and through an internationally recognized color coding system such as the Pantome Code to identify with certainty the scope of the protection sought and 3) the color have to be able to act as badge of origin of the marked goods or services. In conclusion, under current ECJ case law, color per se registrations, which might have been granted without a showing of acquired distinctiveness, are strongly suspect and most likely invalid. The KWS case39: this case regards the registration sought by KWS Saat AG as a community trademark of the single color orange for seeds treatment installations and for other agricultural products. KWS Saat submitted that the 37 INTA, Non-Traditional Trademarks in Europe-Shape Colour Trademarks-Commons Isuses with obtaining, Exploiting and Enforcinfg Rights ,2005 38 European Court of Justice June 24, 2004, case C-49/02 Heidelberger Bauchemie GmbH v. OHIM 39 European Court of Justice October 21, 2004, case C-447/02 , KWS Saat AG v. OHIM, supra note 11 277 ________________________________________________________________________________ Chiara Gaido and Giselda Metaliaji distinctive character of trademarks consisting of one color must be assessed according to the same standards as the distinctive character of other marks, particularly word and figurative marks. The company argued that the CFI had applied more stringent criteria for color marks than for other types of marks. This case confirms a long line of ECJ decisions that have established that colors will be registrable as trademarks only once distinctiveness through use has been proved. It endorses the possibility of registering colors as trademarks but restrains that protection with a high distinctiveness requirement. Such decision sends out a clear message: companies can acquire the trademark protection only if, over time through public familiarity generated by extensive promotions and advertising, they can give evidence to the fact that their used color on the product can be immediately associated to their brand. 4. THE US SITUATION In the United States the trademark field is covered by the Lanham Act, passed in 1946 but it was updated several times, the last of it was in 2005. According to this act the definition40 of what is a trademark is quite broad, stating that ―The term trademark includes any word, name, symbol, or device, or any combination thereof--to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown”. The standard used to define the trademark is in persistence with the article of TRIPS and it is not too different with the EU directive on trademark. Colors or combination of colors are not mention specifically in this Act. What can be considered different from the EU approach is the fact that the ―graphical presentation‖ is not a prerequisite for the registration as a trademark. The final word in the US system belongs to the Court, especially to the Supreme Court. The American jurisprudence on trademark when it comes to the ―color issue‖ has without doubt created the basic for the acceptance of the registration of colors as trademarks. The issue of protecting color as a trademark was raised in the U.S.A. over twenty years ago when the U.S. judiciary, in the Owens-Corning Fiberglass corp., 774 Fed. 1116, 1120 (Fed. cir. 1985), granted protection to the purple color used by Owens-Corning to distinguish its products. This decision, however, did not put an end to the discussion, on whether a color per se may serve as a trademark, due to the several difficulties that were pointed out and developed by some legal authors supported by a number of U.S. Court decisions. It is the US jurisprudence that has created and developed several important theories applying in order to determine if a color is eligible for registration, like the theory of depletion of colors, theory of shade confusion and theory of functionality. 40 Lanham Act, 15 USC 1127 278 Color and Combination of Colors as Trademarks ________________________________________________________________________________ All these theories together try to justify the opposition to the registration of the color per se as trademark. The theory of depletion was developed early in 1949, in the case Campell Soup co41 and according to the Court the registering a single color as a trademark will limit the choice of the manufactures. By giving monopolistic rights over specific colors the list of available colors will be narrowed, especially when it comes to the most usual and appealing colors. In the same line with the theory of depletion was developed the theory of shade confusion according to which by giving the rights over one color in practice all the relative shades of that color will not be valid for use anymore by other companies, because the consumers are not so attentive to the exact shade of one particular color. Often it may be confusing and not easy to immediately notice the differences. According to the theory of functionality if a feature of the product is functional, meaning that it is essential to the use or purpose or it affects the cost or quality of the product it cannot be registered as a trademark because in that way it would harm the competition. The three above mentioned theories have been mentioned again in the case Qualitex, in 1995 by the Supreme Court. We can say that Qualitex is the leading case for the color registration, not only in US but it clearly had a very strong influence on the European approach to this issue. Qualitex Company has for years colored the dry cleaning press pads it manufactured with a special shade of greengold. After respondent Jacobson Products (a Qualitex rival) began to use a similar shade on its own press pads, Qualitex registered its color as a trademark and added a trademark infringement count to the suit it had previously filed challenging Jacobson's use of the green-gold color. The Supreme Court held that color alone can meet the basic legal requirements for use as a trademark, and this is demonstrated both by the language of the Act and by the underlying principles of trademark law, including the requirements that the mark "identify and distinguish (the seller's) goods . . . from those manufactured or sold by others and to indicate (their) source. In Qualitex it was clearly stated that a color can be registered as a trademark with the condition that it has to have acquired a secondary meaning. This secondary meaning constitutes the necessary distinctiveness that can be acquired through the use of the color prior to the application. The Court raised a very interesting question, by saying that if trademark law permits a descriptive word with a secondary meaning to act as a mark, why would it not permit a color, under similar circumstances to do the same? 41 S. Sandri, S. Rizzo, Non-conventional trademarks and community law, supra note 6 and 8, at 70 279 ________________________________________________________________________________ Chiara Gaido and Giselda Metaliaji The Court tried to criticize the theory of depletion and the shade confusion, and the theory of functionality. The color sometime plays an important role in making product more desirable and sometimes it does not effect neither, cost nor quality of the product. Considering so, the Court stated that the doctrine of functionality does not create an absolute bar to the use of color alone as a trademark. In a recent case in US, Smack Apparel 200842, the Court of Appeal seems to reaffirm strongly the registration of a single color as a trademark. The Fifth Circuit upheld the district Court‘s finding that Smack Apparel, a company that makes tshirt who used school color schemes in combination with specific facts and indicia about the school infringed on the schools‘ trademark rights in those color schemes, even if neither the school logo nor other marks appeared on the t-shirt. The Court determined that the color schemes had developed a secondary meaning and for the first time a Court has analyzed the trademark rights of a color scheme separate and apart from an accompanying word mark or logo. But what if the color scheme would have been used without the specific facts and indicia about the school? Would Court go so far to give protection to specifically the color scheme? It might have been an audacious decision. If courts will go that far in the future, this is something to be seen in the future decisions. 5. A CASE STUDY: THE PHARMACEUTICAL INDUSTRY Trademarks, as a vital aspect of building and expanding an IP monopoly in many fields, are largely used in pharmaceuticals. The use of non traditional trademarks it is starting to be frequent also for what concerns pharmaceutical goods. Companies in fact understood that these non-conventional signs can become important and powerful tools to create brand identification. For example for what concerns the U.S. system, on 14 June 2006 the USPTO Trademark and Appeal Board handed down its decision in In re N.V. Organon concerning trademark application for ―an orange flavor‖ for antidepressants tablets and pills (the product concerned was Mirtazapine marketed as RemeronSoltab)43. In order to gain a competitive advantage in this market, pharmaceutical companies strive to increase consumers‘ recognition through name of the brand, color, shape, taste or aroma. All these features of pills can be registered and gain protection as a trademark if they comply with the legal requirements, mostly if they are distinctive and non-functional. But, differently from other colors trademarks when it comes to the drug industry there are a lot of factors who play an important role. Sometime a colored pill becomes so well-known and finishes by serving to identify the kind of medication in addition to its source. In this situation the Courts‘ 42 5th Circ.Federal Court November 25, 2008, Board of Supervisors v. Smack Apparel No. 0730580 43 RemeronSoltab Application n. 76467774, in www.uspto.gov 280 Color and Combination of Colors as Trademarks ________________________________________________________________________________ decisions in US has written that competitors might be free to copy the color of a medical pill where that color serves to identify the kind of medication in addition to its source44. The main obstacles a color has to deal with in order to gain protection through trademark are distinctiveness and functionality. In the case Wal-Mart Stores v Samara Bros.45 the Supreme Court of US pronounced that because product design serves purposes other than source identification, there is no consumer predisposition to equate the feature with the source, and it can therefore never be inherently distinctive. But even if a color trademark is registered in the pharmaceutical industry it is weak and there are decisions that affirm that the applicant has the burden of proof in order to register the color and shape of its wares as a trademark46. Future Applicants, especially in the pharmaceutical industry, should be weary of the fact that, although the color and shape of their wares may be different from those of others, color and shape should not automatically be construed as distinctive, thus warranting trademark registration.42 As for other color marks, even in pharmaceutical industry it is necessary that color has gained a secondary meaning. As we mentioned above, some patients rely on the color of the pill to differentiate one from another or a particular feature of a product is deemed by a Court to have a psychological impact on patients, this may be considered functional. Drug color cases “has more to do with public health policy” regarding generic drug substitution “than with trademark law”47 and the possibility of confusion of the consumers are the reasons why competition is left in a second place. Nevertheless, it should be considered, case by case, the possibility of confusions of the relevant public or consumer before taking that decision. It is necessary to establish what constitutes ―the relevant public‖, and to see if the risk of confusion is a real option. As it is wide known, when it comes to the pharmaceutical industry the consumers tend to be highly attentive. This fact leads to the conclusion that the higher level of attention, the lower the risk of confusion. In the recent Prazol case48 the CFI reaffirmed this principle also for what concerns the over-the-counter products (products which are accessible to consumers without the need of a prescription by the doctor), leaving definitely the previous opinion which was focused on a case by case analysis of the type of product sold to determine the level of consumers‘ attention . The relevant public mostly is composed not only of end users, but also of professionals, that are, doctors who prescribe the medicines and pharmacists who sell that prescribed product (confirmed by the European jurisprudence: case T-146/06 ATURION/URION parag. 23; case C-412/05 TRAVATAN/TRIVASTAN parag. 49; case T-483/04 44 Supreme Court of US March 28, 1995, Qualitex Co. v Jacobson Products Co. 514 US, 149 Supreme Court of US, Case No.99-150 March 22, 2000 Wal Mart Stores Inc. v. Samara Brothers Inc. 46 A. Steele, The colour and shape of a pharmaceutical tablet deemed not distinctive enough to warrant trade-mark registration, federal court rules, WIPR, Leger Robic Richard, 2002 47 Supreme Court of US March 28, 1995, Qualitex Co. v Jacobson Products Co. 514 US, 149 48 European Court of First Instance October 21, 2008, case T-95/07, Aventis Pharma SA v. OHIM and Nycomed GmbH 45 281 ________________________________________________________________________________ Chiara Gaido and Giselda Metaliaji GALZIN parag. 66 and in the case T-154/03 ALREX, parag.4649). For what concerns the so called over-the-counter drugs, the possibility of confusion is higher in this case. Because colors are attractive and can be easily stick in your mind, consumers may identify the drug through the color. It is left to the Courts that in the basis of a case by case analysis, will define the relevant public, and the possibility of confusion. The situation of pharmaceutical colors trademarks is not that different from trademarks in other fields, the two basic requirements needs to be fulfill: the color should not be functional and it should be distinctive, meaning it should have acquired a secondary meaning. 6. IS THERE ANY FUTURE FOR THESE TRADEMARKS? Although the Courts‘ decision in US and in EU made it clear that there is no absolute bar against color per se serving as a trademark, it is not clear whether a color per se can be registered as a trademark without having first acquired a secondary meaning. There exists the possibility to register a color as a trademark if the color chosen is unusual in relation to the products. But even if a color can be registered we think that the trademark will be weak if it has not acquired a secondary meaning. In order to build up a strong trademark it is necessary to select an unusual shade of color and then to prove the secondary meaning for that color. The secondary meaning can be acquired through use, but not only. There is a list of fact and factors that serve to establish if there is a secondary meaning for the mark. The type and amount of evidence necessary to establish secondary meaning varies by case, but rarely is it created by happenstance. Rather, appropriate evidence typically results from an artfully executed marketing effort, meaning strong advertisements are needed. Surveys, market research and consumers‘ reaction studies, as well as intentional, direct copying by a competitor can support the finding of acquired distinctiveness, as it is said "one only copies something of value‖. In the pharmaceutical field the Courts tends to become increasingly open to allow protection and ‗value-added‘ through the use of distinguishing elements other than traditional words and designs as color, shape or flavor. But, the risks in this field are greater than in the others because of the consumers‘ wealth. It would be maybe too dangerous to rely on the pharmaceuticals brands identification only on the color used, especially for what concerns the over-the-counter products. 49 European Court of First Instance October 17, 2006, case T-483/04, Armour Pharmaceutical Co. v. OHIM andTeva Pharmaceutical Industries Ltd; European Court of First Instance November 17, 2005, case T-154/03, Biofarma SA v. OHIM and Bausch & Lomb Pharmaceuticals Inc. 282 Color and Combination of Colors as Trademarks ________________________________________________________________________________ In conclusion, color is powerful tool and over time, customers may come to treat a particular color on a product or its packaging as signifying a brand; but these marks have been generally recognised by Courts as weak marks if they do not show an acquired secondary meaning. The inherent disctinctive character of these signs is still difficult to prove. 283 ________________________________________________________________________________ Chiara Gaido and Giselda Metaliaji BIBLIOGRAPHY Doctrine and Articles AIPPI resolution, Q.181. Conditions for registration and scope of protection of non conventional trademarks, in www.aippi.org D. I. BAINBRIDGE, Intellectual Property, 7th Edition, Pearson Longman D. I. BAINBRIDGE, Smelll, Sound, Colour and Shape trade marks: an unhappy flirtation L. BENTLY, B SHERMAN, Intellectual Property Law, Third Edition Oxford University Press, November 2008 CERINA, I marchi solo di colore negli Stati Uniti, Il Dir. Ind., 1995 P.A. DUBOIS, Colour trademarks- the US and European approaches converge, in www.iam-magazine.com M. 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SIECKMANN, Welcome to the non-traditional trademark archive, in www.copat.de 284 Color and Combination of Colors as Trademarks ________________________________________________________________________________ M. S. SOMMERS, Owning your own colour, Trademark World 1995, No. 77 A. STEELE, The colour and shape of a pharmaceutical tablet deemed not disctinctive enough to warrant trade-mark registration, federal court rules, WIPR, Leger Robic Richard, 2002 P. TAYLOR, Pharmaceuticals trademarks – public health issues, in www.worldtrademarkreview.com P. TORREMANS, Intellectual Property Law, Fifth edition, Oxford University Press, 2008 Laws Agreement on Trade-Related Aspects of Intellectual Property Rights, Apr. 15, 1994, Marrakesh Agreement Establishing the World Trade Organization, Annex 1C, Legal Instruments—Results of the Uruguay Round, 33 I.L.M. 1125, 1197 (1994) European Council Regulation No. 207/2009 on the Community Trade Mark First Council Directive 89/104/EEC of December 21, 1988 to approximate the laws of the Member States relating to Trade Marks, 1989 OJ (L 40) Lanham Act (art. 15 United States Code) Paris Convention For the protection of Industrial Property of 20, March 1883 and following amendments. Cases Board of Appeal of OHIM, February 12, 1998, case R-7/1997-3, Orange Board of Appeal of OHIM December 3, 1998, Light Green R-122/2998-3 European Court of Justice February 27, 2002, case T- 106/00, Streamserve Inc. V. OHIM European Court of Justice February 12, 2002, case C-363/99 Koninklijke KPN Nederland NV and Benelux Merkenbureau European Court of First Instance September 25, 2002, case T-316/00, Viking-Umwelttechnik GmbH v. OHIM European Court of Justice December 12, 2002, case C-273/00, Ralf Sieckmann v. Deutsches Patent-und Markenant 285 ________________________________________________________________________________ Chiara Gaido and Giselda Metaliaji European Court of Justice May 6, 2003, case C-104/01, Libertel Groep BV and Benelux-Merkenbureau European Court of First Instance December 3, 2003, case T-16/02, Audi AG v. OHIM European Court of Justice June 24, 2004, C-49/02, Heidelberger Bauchemie GmbH European Court of Justice October 21, 2004, C-447/02, KWS Saat AG v. OHIM European Court of Justice June 30, 2005, case C-286/04P, Eurocermex SA v.OHIM European Court of First Instance October 17, 2006, case T-483/04, Armour Pharmaceutical Co. v. OHIM and Teva Pharmaceutical Industries Ltd European Court of First Instance November 17, 2005, case T-154/03, Biofarma SA v. OHIM and Bausch & Lomb Pharmaceuticals Inc. European Court of Justice April 26, 2007, case C-412/05, Alcon Inc. v. OHIM European Court of First Instance October 21, 2008, case T-95/07, Aventis Pharma SA v. OHIM and Nycomed GmbH 5th Circ.Federal Court of US, November 25, 2008, Board of Supervisors v. Smack Apparel, No. 07-30580 Kraft Foods Schweiz Holding GmbH registration n. 31336 on www.oami.europa.eu; Kraft Foods Schweiz Holding GmbH registration n. 2042556A on www.ipo.gov.uk RemeronSoltab Application n. 76467774, in www.uspto.gov Supreme Court of US March 28, 1995, Qualitex Co. v Jacobson Products Co. 514 US, 149 Supreme Court of US, Case No.99-150 March 22, 2000 Wal Mart Stores Inc. v. Samara Brothers Inc. CAN THE OWNER OF A MARK REGISTERED FOR TOY CARS PROHIBIT THE MANUFACTURE AND SALE OF TOY CARS WHICH CONSTITUTE NATURALISTIC REPRODUCTIONS OF REAL CARS ON WHICH THE OWNER’S MARK APPEARS? University Network Research Session Office for Harmonization in the Internal Market Alicante, Spain May 3 – 5, 2010 by John Graziadei and Angela Saltarelli 1. INTRODUCTION 2. TRADEMARK BACKGROUND a. Overview b. The Essential Function: ―Use as a Trademark‖ c. Descriptive Use and Embellishment i. Descriptive / Referential Use ii.Embellishment 3. INFRINGEMENT ANALYSIS a. Trademark Use Requirement b. Likelihood of Confusion 4. ANALYSIS 5. CONCLUSION 6. FINAL THOUGHTS BIBILIOGRAPHY 288 Can the Owner of a Mark Registered for Toy Cars Prohibit the Manufacture and Sale of Toy Cars which constitute Naturalistic Reproductions of Real Cars on which the Owner‟s Mark appears? ________________________________________________________________________________ 1. INTRODUCTION Can the owner of a trademark registered for toy cars (hereinafter ―model cars‖) prohibit the manufacture and sale of model cars which constitute naturalistic reproductions of real cars (hereinafter ―automobiles‖) on which the owner‘s mark appears? We conclude that the manufacturers of model cars should be free to make and sell naturalistic reproductions of automobiles and to which they have affixed relevant automobile trademarks even though the mark may be owned by another entity seeking to prevent such use. This is true where the trademark is affixed to the model‘s visible exterior as a descriptive element of the automobile‘s design (hereinafter the ―Detail Trademark‖) as opposed to the underside of the model car to guarantee source of origin (hereinafter the ―Origin Trademark‖). Moreover, finding that the descriptive use of the Detail Trademark is non-infringing is on such solid theoretical ground that European Community Law should provide the certainty, consistency, and predictability necessary to prevent automobile manufacturers, who generally own the rights to their automobile trademarks in the ―Scale Models of Motor Cars‖ class from dominating the model car industry through an unjustified expansion of the their rights.1 European Community law, however, currently provides that the owner of a trademark registered for model cars could potentially prohibit the manufacture and sale of model cars displaying the owner‘s mark as a Detail Trademark depending on the jurisdiction and the perceptions of consumers in local markets.2 The body of law comprising the European Court of Justice‘s jurisprudence on this issue is therefore far from clear and decisive. Indeed, although the ECJ could have provided a more definitive solution to this conundrum in deciding the 2007 case Opel v. Autec by finding that decorative applications of trademarks are beyond the scope of Article 5(1), ultimately the Court declined to employ a trademark use requirement in favor of protracted, costly, and unpredictable factual assessments of local markets by national courts. In so doing, the Court left the matter essentially unresolved and invited inconsistent results concerning what types of uses are infringing.3 Answering the question posed requires an analysis of legal issues at the very heart of trademark theory such as what constitutes trademark use and whether descriptive, decorative, or referential use may also be considered infringing. Of fundamental concern is the appropriate balance between the trademark owner‘s interests and those of competitors, third-party businesses, and the marketplace. A heated debate has been entertaining trademark law practitioners and academics for 1 Nice Classification System, Class No. 28. Or the automobiles on which they are based, although this is beyond the scope of the question posed. 3 European Court of Justice January 25, 2007, Case C-48/05, Adam Opel v. Autec (2007) ECR I1017 ff., case ―Autec‖. 2 289 ________________________________________________________________________________ John Graziadei and Angela Saltarelli the last few years and the tension between the two sides is manifest in both European and American discourse and jurisprudence.4 While some scholars submit that trademarks should be protected from a broad array of unauthorized uses by third parties, and that the optimal way to accomplish this is for the courts to conduct comprehensive analyses of the impact each use has on consumer confusion, others assert that trademarks are registered for certain limited purposes – to distinguish goods and services – and should therefore remain generally available to third parties for other uses as a matter of law.5 For purposes of infringement analysis, certain courts, such as those influenced by the Chicago School, support the application of a ―trademark use requirement.‖6 Generally, this approach requires plaintiffs in trademark infringement cases to demonstrate that a defendant made a ―trademark use‖ of its validly registered mark as a threshold requirement prior to factual discovery concerning markets and consumer perceptions. Advocates submit that this approach provides a straightforward, objective, and, most importantly, efficient, means of determining whether consumers are likely to look to the defendant‘s use of a symbol for information about the source of origin – whether consumers are likely to be confused or deceived. As we shall see, applying a trademark use requirement raises corresponding concerns about the value of registering an automobile trademark in the model car class for what is, in practice, use primarily as a Detail Trademark. Applied more frequently by courts in trademark infringement litigation is a test focused squarely on the likelihood of consumer confusion caused by a particular use. This approach moves the analysis beyond the purely legal question of whether a trademark use has been made by a defendant to the assumption that any use can be infringing so long as the trademark owner can demonstrate that it raised the level of confusion in the marketplace, thereby diminishing the ability of the trademark to perform its essential function. 4 See generally M. BARRET, Internet Trademark Suits and the Demise of “Trademark Use, 39 U.C. Davis. L. Rev. 371 (2006); S. L. DOGAN & M. LEMLEY, Trademark and Consumer Search Costs on the Internet, 41 Hous. L. Rev. 777 (2004); U. WIDMAIER, Use, Liability, and the Structure of Trademark Law, 33 Hofstra L. Rev. 603 (2004); see also Mark P. MCKENNA, The Normative Foundations of Trademark Law, 82 Notre Dame L. Rev., 1839, 1892 (noting the ―traditional requirement that, in order to infringe, the defendant [must] use a term as a sourcedesignator (as a ―trademark‖)). 5 W. M. LANDES, R. POSNER, The Economic Structure of Intellectual Property Law, The Belknap Press of Harvard University Press, Cambridge, Mass., 2003; see also M. RICOLFI, Strategic Branding (Opel/Autec, Eventmarke), Max Planck Institute paper, 2009 (citing A. KUR, Strategic Branding: Does Trade Mark Law Provide for Sufficient Self Help and Self Healing Forces? in I. Govaere, H. Ullrich (eds.), Intellectual Property, Market Power and the Public Interest, College of Europe Series, Bruxelles, P. I. E. Lang, 2008, 191-217; M. S. SPOLIDORO, La capacità distintiva dei marchi c.d. «deboli», in Il dir. ind. 2007, 39 ff.; J. DAVIS, European Trade Marks Law and the Enclosure of the Commons, in I.P.Q. 2002, 343 ff.); G. B. DINWOODIE, M. D. JANIS, Confusion Over Use: Contextualism in Trademark Law, in Iowa L. Rev. 2007, 1597 ff. 6 W. M. LANDES, R. POSNER, The Economic Structure of Intellectual Property Law, supra at note 5. Can the Owner of a Mark Registered for Toy Cars Prohibit the Manufacture and Sale of Toy Cars which constitute Naturalistic Reproductions of Real Cars on which the Owner‟s Mark appears? ___________________________________________________________________ 290 Although the interests of a well-functioning trademark system, and society as a whole, would be better served by consistent application of one or the other approach in infringement litigation across jurisdictions, choosing a winner is unnecessary here and, indeed, beyond the scope of our analysis. For our purposes, the answer to the question posed is the same under either approach. Nevertheless, as we shall see, had the ECJ resolved the legal questions raised in Opel v. Autec by focusing on the actual use of the mark, or by applying a strict trademark use test, the result would have been increased efficiency in the marketplace, albeit at the expense of a marginally higher degree of confusion in the minds of consumers until market forces had an opportunity to react. 2. TRADEMARK BACKGROUND a. Overview Trademarks are signs or symbols used to distinguish the goods or services of one enterprise from those of other enterprises in commerce.7 Other related or corresponding functions generally attributed to trademarks including the tendency they have to reinforce consistent levels of product quality, to represent businesses goodwill, and to function as tools for advertising products by fostering thoughts or emotions in the minds of consumers. From the Chicago School, however, we understand that the fundamental value of trademarks is their ability to reduce consumer search costs which, in turn, promotes efficiency in the marketplace.8 Trademarks facilitate consistent and lasting associations in the minds of consumers between brands and quality, providing consumers with valuable information concerning goods and services. Trusting a reliable trademark is, of course, less costly and time consuming for the consumer than conducting research and assuming associated risks while relying primarily on asymmetric information at the point of each purchase decision. Informed consumers will generally make better decisions as a result and this will, in turn, increase the overall utility of the products purchased while simultaneously pushing producers to develop higher quality goods and services – or at least to maintain appropriate price-quality relationships.9 The public therefore benefits 7 F. ABBOTT, T. COTTIER, F. GURRY, International intellectual property in an Integrated World Economy, Aspen Publishers, New York, 2008, 259; M. BARRETT, Internet Trademark Suits and the Demise of ―Trademark Use,‖ 39 in U.C. Davis L. Rev. 2006, 388. 8 W. M. LANDES, R. POSNER, The Economic Structure of Intellectual Property Law, supra at note 5, 169. 9 In the words of United States Supreme Court Justice Frankfurter: ―The protection of trade-marks is the law‘s recognition of the psychological function of symbols.... A trade-mark is a merchandising short-cut which induces a purchaser to select what he wants, or what he has been led to believe he wants. The owner of a mark exploits this human propensity by making every effort to impregnate the atmosphere of the market with the drawing power of a congenial symbol. Whatever the means 291 ________________________________________________________________________________ John Graziadei and Angela Saltarelli from the trademark system insofar as the establishment and maintenance of a mark facilitates the flow of reliable of information, encourages higher and more consistent product quality, and reduces social waste and consumer deception. The trademark system‘s effectiveness in performing these functions makes it extremely valuable to the marketplace. While, for obvious reasons, trademark owners view the objective of the trademark system to be the protection of the investment in their company‘s goodwill, in fact the guiding principle the trademark system must be continued reduction of consumer search costs. Trademark doctrine must therefore always consider first the costs and benefits that accrue to the marketplace as a whole and not only the interests of trademark holders. The scope of the rights protected by trademark law must therefore be narrower and more context-specific than in the case of patents, trade secrets, and copyrights. Indeed, other intellectual property rights are generally understood to bestow far-broader, although time-limited, protection from unauthorized use than trademarks in order to achieve their policy objectives. Illustrative of the theoretical difference between trademarks and other IPRs is the fact that trademark owners are not granted property rights in their trademarks.10 As a result, owners are not permitted to sell or otherwise transfer their trademarks in gross, or separate them from their business goodwill.11 To fully realize the benefits of trademarks, it is imperative that the legal system provide clear rules and strong protection since the cost of misappropriating a trademark is undoubtedly less than the potential profit to a concern from confusion with another firm‘s superior reputation. Clarity in enforcement increases the entire system‘s effectiveness by strengthening the message trademarks carry and reinforcing their trustworthiness. Whether by protecting established trademarks from potentially confusing appropriation by third parties or by streamlining the litigation process through application of a trademark use requirement, the law must facilitate an honest, open, inexpensive, and consistent dialogue between producers and consumers. From a clear and reliable system both sellers and buyers benefit: producers can invest in their brand‘s goodwill with the confidence that trademark infringement will be prevented while consumers can be confident that they are receiving what they expect in the marketplace. In the absence of clear and reliable enforcement, excessive free-riding would inevitably corrupt the information capital embodied in a trademark; even more destructive, the employed, the aim is the same – to convey through the mark, in the minds of potential customers, the desirability of the commodity upon which it appears. Once this is attained, the trade-mark owner has something of value.‖ Mishawaka Rubber & Woolen Mfg. Co. v. S.S. Kresge Co., 316 US 203 (1942). 10 M. BARRETT, Internet Trademark Suits and the Demise of “Trademark Use”, supra at note 7, 377. 11 L. J. OSWALD, Tarnishment and Blurring under the Federal Trademark Dilution Act of 1995, in American Business Law Journal, 1999, 255 ff. Can the Owner of a Mark Registered for Toy Cars Prohibit the Manufacture and Sale of Toy Cars which constitute Naturalistic Reproductions of Real Cars on which the Owner‟s Mark appears? ___________________________________________________________________ 292 threat of an intolerable amount of free-riding could reduce the incentive for companies to invest in their goodwill in first place.12 Chief among the concerns when answering the question posed is sound competition policy. For example, stretching the right to prevent third-party use of a word or symbol in additional contexts – even those not signalling origin – would inadvertently bestow unjustified legal power to trademark proprietors over ―downstream‖ markets thereby conferring unwarranted competitive advantages over neighboring markets for goods and services.13 While the tension between trademarks and free competition is less alarming than in other fields of intellectual property law where the rights granted could be, if too broad or impenetrable, severely antagonistic to healthy competition, trademarks can also have a negative impact on competition if not properly understood or respected. Rather than accruing to their owner a monopoly over a certain product, creation, invention, good, or service, trademarks protect information about goods and services and should therefore facilitate consumer access to the goods or services with which they are associated. A properly functioning trademark system therefore assists, rather than inhibits, competition and trademark law represents an affirmation of, rather than a departure from, the competitive model. The danger, however, is clear: unenlightened and poorly calibrated trademark law, as in other fields of intellectual property, would have an anticompetitive influence on the public‘s access to goods, services, and markets.14 It is axiomatic that, absent extraordinary circumstances, competition is beneficial to the marketplace and deserves careful consideration when resolving disputes between rights owners and third parties.15 While it is has been argued that the ECJ does not sufficiently consider preserving, let alone fostering, competition in its interpretation of Community Law (except with respect to the anticompetitiveness inherent in granting protection to overly-descriptive marks), failure to do so could lead to unintended results that contradict the very purpose of granting control over the use of signs and marks in the first place and actually 12 W. M. LANDES, R. POSNER, The Economic Structure of Intellectual Property Law, supra at note 5, 169. 13 M. RICOLFI, Strategic Branding (Opel/Autec, Eventmarke), supra at note 5; see also A. KUR, Strategic Branding: Does Trade mark law Provide for Sufficient Self Help and Self Healing Forces?, supra at note 5, 191-217; see A. SRAFFA, Monopoli di segni distintivi o monopoli di fabbricazione, in Riv. dir. comm. 1930, II, 1 ff. (arguing that trademark protection should always ensure that exclusivity over signs does not translate into monopolies over markets for goods and services); T. ASCARELLI, Teoria della concorrenza e dei beni immateriali. Lezioni di diritto industriale, Giuffrè, Milano, 1960 (arguing that trademark exclusivity should never enable control of linguistic or semantic entities). 14 A. KUR, Strategic Branding: Does Trade Mark Law Provide for Sufficient Self Help and Self Healing Forces?, supra at note 5, 191-217, 216. 15 Ibid, at 195. 293 ________________________________________________________________________________ John Graziadei and Angela Saltarelli enable their use as swords rather than signals in the battle to dominate additional markets and goods.16 b. The Essential Function: “Use as a Trademark” The point has been correctly made that if trademark law were properly calibrated, it would enable rights owners to prevent use by third parties in more limited contexts than other IPRs and with respect to specific types of uses only.17 This approach is supported by the argument that, in principle, trademark protection aims to confer exclusivity over symbols rather than over goods, services, or markets and that the cost of overly broad protection is an anticompetitive restriction on the flow of information through the marketplace, even preventing would-be participants from accessing markets entirely. As we will see, however, courts occasionally venture beyond the core principles of trademark law to bestow what may be regarded as anticompetitive or even monopolistic power unjustified by trademark theory.18 In order to ensure trademark law stays true to its mission, it is therefore necessary to consider the essential function for which the right to exclude is granted – the so-called ―use as a trademark.‖19 16 M. RICOLFI, Strategic Branding (Opel/Autec, Eventmarke), supra at note 5 (Contrast the Opinion of the Advocate General, Ruiz-Jarabo Colomer of June 13, 2002, Case C-206/01, Arsenal Football Club plc v. Matthew Reed, (2002) ECR I-3422 ff., case ―Arsenal‖, para 43, acknowledging the importance of competition policy in European trademark law but failing to draw from the statement a corollary either way with the Opinion of the Advocate General Poiares Maduro, September 22, 2009, in Cases C-236-238/08, Google France and Google Inc. v. Louis Vuitton Mallettier, Google France v. Viaticum Luteciel and Google France Bruno Raboin, Tiger SARL v. CNRHH, Pierre Alexis Thonet, case “Google-Ad-Words”, paras 102-103 and 105-106 where the balancing between the ―protection afforded to innovation and investment‖ (para 102) by means of trademarks and the requirements ―of competition and open access to ideas, words and signs‖ (para 103) is determinative of the outcome reached (or, rather, in this case, suggested)). 17 A. KUR, Strategic Branding: Does Trade Mark Law Provide for Sufficient Self Help and Self Healing Forces?, supra at note 5, 191-217, 216; M. RICOLFI, Strategic Branding (Opel/Autec, Eventmarke), supra at note 5. 18 A. KUR, Fundamental Concerns in Harmonization of (European) Trademark Law, in G. B. DINWOODIE, M. D. JANIS, Trade Mark Law and Theory, a Handbook of Contemporary Research, Edward Elgar, Cheltenham UK, Northampton MA USA, 2008, 151-176, 165. 19 M. BARRETT, Internet Trademark Suits and the Demise of “Trademark Use”, supra at note 7, 392. The author clarifies that the rationale of trademark use ―is consistent with the limited purpose of trademark protection. We protect trademarks to ensure that they will effectively communicate the source of goods or services to consumers, thus lowering consumer search costs and promoting a more efficient marketplace. If the defendant does not refer to the plaintiff‘s mark or if consumers are not exposed to the defendant‘s reference, then finding infringement would not serve trademark‘s purpose: consumers would not likely rely on the mark to identify the source of the defendant‘s goods or services, there would be no interference with the source indicating function of the plaintiff‘s mark, and, thus, there would be none of the harm that trademark and dilution laws are meant to prevent. Trademark laws were never meant to prevent all forms of free riding on a plaintiff‘s business goodwill. Indeed, we have long recognized that, in many instances, free riding may be pro-competitive.‖; see G. B. DINWOODIE, M. D. JANIS, Lessons from the Trademark Use Debate, in Iowa L. Rev. 2007, 1713; M. BARRETT, Finding Trademark Use: The Historical Foundation for Limiting Infringement Liability to Uses „In the Manner of a Mar‟, in Wake Forest Law Review, 2008, 895. Can the Owner of a Mark Registered for Toy Cars Prohibit the Manufacture and Sale of Toy Cars which constitute Naturalistic Reproductions of Real Cars on which the Owner‟s Mark appears? ___________________________________________________________________ 294 Strangely, the Trademark Directive fails to define ―trademark use.‖ Scholars have observed that it is ironic that ―such an essential criterion in the hierarchy of criteria necessary to establish an infringement was paid such little attention during the drafting process.‖20 Indeed, if this one criterion is not satisfied, a dispute should not – although sometimes does – fall within the web of European trademark law.21 Although the term ―trademark use‖ is not explicit in the Directive, the concept flows from Article 5 where infringement is defined as the use of marks ―in the course of trade‖ in a manner that conflicts with the essential functions of the trademark.22 The legal protection of marks must be connected to a mark‘s ability to distinguish a good or service; the importance of this criterion is justifiably recognized as the conceptual foundation of trademark theory. The determination of whether a sign was used as a mark at all is therefore an obvious and indispensable step in assessing whether a use was infringing.23 The ECJ first addressed the question of trademark use in the case of BMW v. Deenik where it considered whether the use of the BMW trademark by a third-party automotive service center to identify a characteristic of its own service infringed the registered mark. In defining trademark use as a ―use for the purpose of distinguishing and identifying goods or services as originating from a particular undertaking,‖ the Court found that it did.24 The Court defined trademark use under the Directive as use which caused consumers to infer the existence of a material link in the course of trade between a concern and its goods or services.25 Indeed, in deciding BMW, the ECJ properly required a trademark use to find infringement, but did so in the broadest sense: the Court found that the mark must be used to indicate the origin of either of the parties‘ goods or services – not necessarily those of the alleged infringer. Thus, in BMW, the Court concluded that conduct now generally described as ―referential use‖ was trademark use in violation of Article 5 even though we may safely conclude that consumers were not confused about the origin of the goods or services and that the flow of useful information to the consumer was likely facilitated, not corrupted, by the defendant‘s use.26 The BMW Court found, however, that the actual confusion engendered by use of a registered 20 A. KUR, Small cars, Big Problems? An Analysis of the ECJ‟s Opel/Autec Decision and its Consequences, in Engelbrekt-Bakaedjieva et al. (eds.), Writings in Honor of Marianne Levin, Norsteds, 2008, 335. 21 Ibid, at 335. 22 Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 to approximate the laws of the Member States relating to trade marks. 23 A. KUR, Fundamental Concerns in Harmonization of (European) Trademark Law, in G. B. DINWOODIE, M. D. JANIS, Trade Mark Law and Theory, a Handbook of Contemporary Research, supra at note 19, 151-176, 166. 24 European Court of Justice February 23, 1999, case C-63/97, BMW v. DEENIK, (1999) ECR I905 ff., case ―BMW‖, para 38. 25 Ibid, para. 53. 26 European Court of Justice February 23, 1999, case C-63/97, BMW v. DEENIK, (1999) ECR I905 ff., case ―BMW‖. 295 ________________________________________________________________________________ John Graziadei and Angela Saltarelli trademark by a third party is secondary and that the only questions to be answered are whether there was a use to describe an essential characteristic of the goods or services offered and, if so, whether the use was authorized.27 c. Descriptive Use and Embellishment Straightforward trademark infringement cases typically involve the unauthorized use of a trademark by a third party seeking to confuse consumers as to the origin of goods or services offered for sale – to blur in the minds of consumers the third-party‘s products with those of the trademark proprietor, presumably to exploit the owner‘s superior reputation. In such cases, infringement must be found to prevent third-party users from deceiving the public and diluting the power of the trademark to convey essential information about the relevant good or service. There are many trademarks uses other than those identifying and distinguishing goods and services, however, and each presents challenges for courts, trademark owners, and third parties seeking to use trademarks not to confuse or deceive, but rather to convey information in good faith.28 Two common uses relevant to our analysis are frequently referred to as descriptive, or referential, use and embellishment. i. Descriptive / Referential Use In an effort to strike the appropriate balance between the power granted to trademark owners and the public‘s interest in a healthy public domain, courts must establish the appropriate scope of the right to prevent use by third parties for purposes other than identifying or distinguishing goods. One category of such uses are so-called descriptive, or referential, uses which include, for example, affixing a trademark to an article of clothing not to indicate origin, but rather to enable the 27 Ibid, para 65. The comparative advertising conundrum is frequently debated in the context of the so called ―trade mark use debate‖ (citing R. KNAAK, Markenmäßiger Gebrauch als Grenzlinie des harmonisierten Markenschutzes, in GRUR Int. 2008, 91 ff.; A. KUR, Confusion over Use? – Die Benutzung “als Marke” im Lichte der EuGH Rechtsprechung, in GRUR Int. 2008, 1 ff.; B. TRIMMER, An Increasingly Uneasy Relationship: The European Courts and the European Court of Justice in Trade Mark Disputes, in E.I.P.R. 2008, 87 ff.; CH. RUTZ, After Arsenal and Electrocoin: Can the Opinions on Trade Mark Use be Reconciled?, in 36 IIC 2005, 682 ff. but also, in connection with the increasingly crucial issue of the lawfulness of the use of trademarks as sold ―ad-words‖, N. SHEMTOV, Searching for the Right Balance: Google, Keywords Advertising and Trade Mark Use, in EIPR 2008, 470 ff. For the U.S. see among the many U.S. cases Government Employees Insurance Co. v. Google, Inc., 330 F.Supp.2d 700 (E.D. Va. Aug. 25, 2004) and Google Inc. v. American Blind & Wallpaper Factory, 74 U.S.P.Q.2d 1385 (N.D. Cal. March 30, 2005) and in the literature G. DINWOODIE - M. D. JANIS, Lessons from the Trademark Use Debate, in 92 Iowa L.R. 2007, 1703 ff. and S. L. DOGAN, M. A. LEMLEY, Grouding Trademark Law Through Trademark Use, 92 Iowa L.R. 2007, 1669 ff., in both of which the link with the ad-words issue is palpable. 28 Can the Owner of a Mark Registered for Toy Cars Prohibit the Manufacture and Sale of Toy Cars which constitute Naturalistic Reproductions of Real Cars on which the Owner‟s Mark appears? ___________________________________________________________________ 296 wearer to display appreciation or loyalty for the brand associated with the mark.29 Frequently, trademark owners seek to prevent such uses by third parties, whether to protect their brand‘s image or to capture the economic benefits represented by the use. Defendants typically respond by arguing that descriptive use is not infringing. The ECJ has been asked to consider these questions but has responded with a somewhat inconsistent body of jurisprudence. After BMW, the ECJ revisited the question of trademark use in Arsenal v. Reed, in which the Court opined on whether the unlicensed use of the famous English football club‘s trademark by a third party on sports merchandise constituted infringement.30 The English Court referred to the ECJ the question of whether a valid defense to allegations of infringement existed where the use does not indicate trade origin but rather satisfies some other purpose.31 While plaintiff alleged that defendant infringed its rights by appropriating its trademark for use on goods identical to those it produced, defendant argued that its use of the mark was not a ―trademark use‖ and that consumers would not interpret the mark as signifying the origin of the goods but rather recognize it as a ―badge of support, loyalty or affiliation.‖32 Defendant argued that such descriptive uses are beyond the scope of Article 5 and should be permitted. In rejecting defendant‘s argument, the ECJ concluded simply that ―where a third party uses in the course of trade a sign which is identical to a validly registered trade mark on goods which are identical to those for which it is registered, the trade mark proprietor of the mark is entitled . . . to rely on [Article (5)(1)(a) of the TMD] to prevent that use.‖33 The Court found that ―[i]t is immaterial that, in the context of that use, the sign is perceived as a badge of support for or loyalty or affiliation to the trade mark proprietor.‖34 The ECJ thus found that it was of little significance whether there was another use implied by the defendant‘s appropriation of the mark, in this case a descriptive use; it was sufficient only that an identical mark was affixed to identical goods.35 Although the question referred by the English court was whether use as a trademark was necessary to find infringement, the ECJ did not answer this question directly but instead focused its attention on the likelihood of confusion in the marketplace, finding that the use was infringing because ―[t]he use of a sign which 29 European Court of Justice June 13, 2002, case C-206/01, Arsenal Football Club plc v. Matthew Reed, (2002) ECR I-10273 ff., case ―Arsenal‖. 30 European Court of Justice February 23, 1999, case C-63/97, BMW v. DEENIK, (1999) ECR I905 ff., case ―BMW‖. 31 European Court of Justice June 13, 2002, case C-206/01, Arsenal Football Club plc v. Matthew Reed, (2002) ECR I-10273 ff., case ―Arsenal‖, para. 27. 32 Ibid, para 63. 33 Ibid, para 34. 34 Ibid, para 63. 35 Ibid. 297 ________________________________________________________________________________ John Graziadei and Angela Saltarelli is identical to the trade mark at issue in the main proceedings is liable to jeopardise the guarantee of origin which constitutes the essential function of the mark.... It is consequently a use which the trade mark proprietor may prevent in accordance with Article 5(1) of the Directive.‖36 Importantly, although such questions are clearly matters of fact that should be referred to national courts, the ECJ also found that the average consumer in the relevant local market perceived that goods bearing the football club‘s marks had an economic link of some sort with the trademark owner.37 In so holding, the ECJ rejected the non-trademark use defence in support of a test based more broadly on the likelihood of, or potential for, consumer confusion. In elevating the potential for consumer confusion over liberal competition in the marketplace on the list of priorities, the Court rejected a strict trademark use test in cases arising under Article 5(1). Indeed the ECJ found that the analysis of whether the defendant was making a descriptive, or non-trademark, use of the mark wasn‘t definitive. Rather, the appropriate test is whether a particular third-party use of a mark has a damaging effect on the mark‘s ability to function as a trademark for its owners‘ goods or services. The ECJ cared less about whether the actual use itself implicated the ―essential function‖ of the trademark (i.e., distinguishing the origin of the goods) than about whether, as a result of the defendant‘s use, the owner‘s mark was subsequently less able to distinguish the goods and services due to increased confusion in the minds of consumers. In sum, the ECJ didn‘t look at the character of the use by the third party but rather at the impact of the use on the trademark itself. According to the Court‘s decision, the Directive does not require use as a trademark to find infringement but rather only that the third-party use ―creates the impression that there is a material link in trade between the third party‘s goods and the undertaking from which those goods originate.‖38 Arsenal thus provides that uses other than distinctive trademark uses can cause confusion impairing a trademark‘s ability to guarantee source of origin, and that such impairment is more harmful to the marketplace than other implied costs such as protracted litigation by trademark owners and the chilling effect the threat of litigation can have.39 As a practical matter, however, if consumers do not perceive the defendant‘s mark as distinguishing goods or services, there should be no basis on which to find the existence of increased confusion. In questioning the concept of descriptive use, some critics have asked whether a fundamental difference truly exists between descriptive use and trademark use that distinguishes descriptive use from unauthorized copying and infringement. For example, critics have pondered the difference between real and counterfeit handbags and why the trademark located on the fake bag can‘t also be 36 Ibid, para 55. Ibid, para 63. 38 Ibid, para 56. 39 Ibid, para 54. 37 Can the Owner of a Mark Registered for Toy Cars Prohibit the Manufacture and Sale of Toy Cars which constitute Naturalistic Reproductions of Real Cars on which the Owner‟s Mark appears? ___________________________________________________________________ 298 also considered ―descriptive use.‖40 The answer is likely found in the relationship between the goods themselves. Counterfeit handbags are substitutes for the authentic bags on which they are based and, while consumers are not typically confused between the two given the often dramatically different price points and markets in which they are sold, nevertheless the class is the same and the ―descriptive‖ use of the trademark is clearly motivated by the desire to deceive. Indeed, there is no benign or good faith justification for making and selling counterfeit Louis Vuitton handbags other than a desire exploit the reputation of Louis Vuitton. For our purposes, model cars certainly perform a function independent from automobiles so a fundamental distinction exists.41 ii. Embellishment The use of a mark as an embellishment is another type of trademark use relevant to our analysis. The question of whether embellishing uses of trademarks violate Article 5 was addressed by the ECJ in Adidas Salomon v. Fitnessworld Trading LTD, in which the Court considered the proper scope of European dilution protections. Specifically, the Court considered the impact on infringement analysis when ―consumers see a sign purely as an embellishment.‖ 42 In interpreting the Directive, the Court opined that, where a later use of a mark is viewed purely as an embellishment, it cannot have any link with a registered mark with the result that one of the conditions of protection conferred by Article 5(2) of the Directive would not be satisfied.43 In evaluating the practical impact of the case, it has been argued that the ECJ effectively introduced a trademark use requirement.44 The ECJ did not define the term embellishment in Adidas, although the Advocate General appears to use the term synonymously with decorative use.45 The AG opined that Article 5(5) was intended to redress provisions of national law in areas other than trademark regulation, such as unfair competition and comparative advertising.46 It follows from that provision, he concluded, ―that the regulation of non-trade mark use of a sign which without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of a trade 40 A. KUR, Small Cars, Big Broblems? An Analysis of the ECJ‟s Opel/Autec Decision and its Consequences, supra at note 22, 344. 41 A. KUR, Small Cars, Big Problems? An Analysis of the ECJ‟s Opel/Autec Decision and its Consequences, supra at note 22, 344. 42 European Court of Justice October 23, 2003, C-408/01, Adidas Salomon v. Fitnessworld Trading LTD, (2003), ECR I-4881 ff., case ―Adidas‖. 43 European Court of Justice October 23, 2003, C-408/01, Adidas Salomon v. Fitnessworld Trading LTD, (2003) ECR I-4881 ff., case ―Adidas‖, para 40. 44 I. SIMON, Embellishment: Trade Mark Use Triumph or Decorative Disaster?, in E.I.P.R 2006, 321 ff. 45 Opinion of the Advocate General Jacobs July 10, 2003, C-408/01, Adidas Salomon v. Fitnessworld Trading LTD, (2003), ECR I-3711 ff., case ―Adidas‖. 46 Ibid, para 57. 299 ________________________________________________________________________________ John Graziadei and Angela Saltarelli mark is not governed by the Directive. Such use cannot therefore fall within Article 5(2).‖47 The Advocate General further opined that: The question therefore is whether a sign may be correctly regarded as ―used for the purpose of distinguishing goods or services‖ where it is viewed purely as a decoration by the relevant section of the public. It seems to me that that question must be answered in the negative. If the relevant section of the public perceives a given sign as doing no more than embellishing goods, and in no way as identifying their origin, that sign cannot be regarded as used for the purpose of distinguishing those goods.48 Purely decorative use would therefore not be viewed as a trademark since the fact that consumers only viewed the mark as decorative meant that they did not see it as as an indication of source.49 The ECJ, however, elaborated on the issue, stating that the fact that a sign is viewed as an embellishment by the relevant section of the public is not, in itself, an obstacle to the protection conferred by Article 5(2) of the Directive where the degree of similarity is none the less such that the relevant section of the public establishes a link between the sign and the mark.50 Under what circumstances consumers would or would not make this connection is left unanswered by the Court. The embellishing use of a trademark has also been addressed in United States case law. In Interactive Products Corp. v. A2 Z Mobile Office Solutions, for example, the 6th Circuit found that use of a registered trademark on a book cover is a non-trademark use if the mark is merely descriptive of the book‘s subject matter and the actual source of the book is clearly indicated.51 Thus, under U.S. law, if a defendant uses a trademark in a ―non-trademark way,‖ the laws of infringement and false designation are also not implicated. Other examples of descriptive or referential use or embellishment with potentially infringing characteristics can be found in contemporary art. Indeed, with its focus on the topic of consumerism, American Pop Art after 1945 is rife with potential trademark infringement. Andy Warhol‘s 1962 Campbell Soup Cans, 47 Ibid. Ibid, para 60. 49 Ibid, paras 52-61. 50 European Court of Justice October 23, 2003, C-408/01, Adidas Salomon v. Fitnessworld Trading LTD, (2003), ECR I-4881 ff., case ―Adidas‖, para 41. 51 Interactive Products Corporation v. A2 Z Mobile Office Solutions, Inc, 326 F.3d 687, 695 (6th Cir. 2003). 48 Can the Owner of a Mark Registered for Toy Cars Prohibit the Manufacture and Sale of Toy Cars which constitute Naturalistic Reproductions of Real Cars on which the Owner‟s Mark appears? ___________________________________________________________________ 300 for example, provide little information to the viewer other than reproducing images of the food company‘s products and trademarks. Moreover, Warhol‘s purpose was undoubtedly commercial, at least in part. Nevertheless, Warhol was neither competing with Campbell nor was he confusing consumers as to the origin of his or Campbell‘s products. It is likely that such uses, if challenged, would be considered non-trademark and non-infringing use, if not fair use.52 3. INFRINGEMENT ANALYSIS a. Trademark Use Requirement Realizing the trademark system‘s full potential is not an easy task and the evolution of trademark law reflects a perpetual recalibration in an effort to maximize the informational value of marks while avoiding their propensity to facilitate anticompetitive conduct.53 To effectively perform a trademark‘s primary function of lowering search costs for consumers, trademark use by third parties should be prevented only when the use causes significant confusion over origin.54 One way to ensure this is for courts to apply a strict ―trademark use‖ test, providing that a plaintiff must demonstrate as a preliminary matter that an alleged infringing use involved the misappropriation of their mark for use as a trademark and not in another, non-origin signaling way. Supporters of the so-called trademark use requirement believe that limiting the court‘s analysis at the outset to a preliminary assessment of trademark use, so that any use aside from a trademark use shall be presumptively permissible, provides crucial legal certainty. A requirement that plaintiffs demonstrate use as a trademark by a third party would thus serve as a preliminary threshold, limiting litigation of trademark rights to those cases in which potential consumer confusion is likely to be material and substantially detrimental. Proponents argue that the trademark use requirement tailors infringement causes of action to ensure that enforcement serves its purpose without interfering unnecessarily with the flow of otherwise useful market information. The requirement also shelters certain unauthorized but beneficial uses of marks without necessitating a factual inquiry into the issue of consumer confusion.55 In practice the theory subjugates broad protection for trademark 52 Indeed Campbell appears to have been savvy enough to appreciate the free advertising. In 1965 the company provided Warhol with actual soup can labels to be used as invitations for an exhibit and, in 1985, commissioned the artist to paint a series of their dry soup mixes. They recognized the brand enhancement his paintings provided. 53 S. L. DOGAN, M. A. LEMLEY, A Search-cost Theory of Imitating Doctrines in Trademark Law, in G. B. DINWOODIE, M. D. JANIS, Trade Mark Law and Theory, a Handbook of Contemporary Research, Edward Elgar, Cheltenham UK, Northampton MA USA, 2008, 65-94. 54 W. M. LANDES, R. POSNER, The Economic Structure of Intellectual Property Law, supra at note 5, 169. 55 M. BARRETT, Internet Trademark Suits and the Demise of “Trademark Use”, supra at note 7, 379; Cf., G. B. DINWOODIE, M. D. JANIS, Lessons from the Trademark Use Debate, in Iowa L. 301 ________________________________________________________________________________ John Graziadei and Angela Saltarelli owners and the value to them in reducing confusion in favor of more information, greater legal certainty, reduced enforcement costs ex ante, and less anticompetitive conduct by trademark owners seeking to expand their control over their goods and services or neighboring industries. Trademark doctrine must, of course, always justify an owner‘s right to exclude other entities from using a particular sign. The system must therefore be guided by an effort to increase its value to the marketplace and to the public rather than on merely bestowing rewards or benefits to complaining firms. Proponents argue that trademark use theory accomplishes numerous related objectives. First, pursuant to trademark use theory, courts are charged with the responsibility of establishing the existence of trademark use as a matter of law, rather than of consumer perception as a matter of fact, in order to identify and dispose of cases in which the degree of consumer confusion at issue fails to justify the potential for anticompetitive conduct, the increased unpredictability of enforcement, and the chilling effects of protracted litigation. Although the market may be forced to adjust to some greater degree of confusion, it would simultaneously benefit from additional activity by market participants seeking to make socially beneficial uses of marks in good faith. Jurisdictions vary concerning their willingness to apply a trademark use requirement to infringement litigation. English courts are more amenable to the theory than other European courts, often determining early in infringement litigation whether conduct has been infringing as a matter of law in order to avoid factual analysis of consumer confusion in a relevant market.56 As we shall see, had the ECJ opted to avail itself of the efficiencies of the trademark use requirement system, model car manufacturers in need of access to Detail Trademarks would not be liable for infringement, nor would they be intimidated ex ante by the devastating impact of trademark enforcement litigation. Without it, however, they could eventually lose the market entirely to large concerns willing to battle over infringement alleged on the basis of descriptive uses of their trademarks. Indeed, according to trademark use theorists, without the ―use as a trademark‖ requirement for finding infringement, trademark owners could accrue through aggressive litigation an unjustified monopoly over their marks and, in turn, over goods and markets.57 b. Likelihood of Confusion Rev. 2007, 1714 (opining that ―[t]he trademark use doctrine is simply not an effective surgical tool for defining the normative boundaries within which the likelihood of confusion doctrine can operate, but is instead a clumsy stratagem for rendering a priori judgments without the benefit of a contextual inquiry‖). 56 See, for example, Court of Appeal (Civil division) on Appeal from Chancery division, Mr. Justice Laddie, May 21, 2003, WCA Civ. 96 Case No: A2/2003/007, Arsenal Football Club v. Matthew Reed, case ―Arsenal‖. 57 I. SIMON, Embellishment: Trade Mark Use Triumph or Decorative Disaster?, supra at note 46, 321-328. Can the Owner of a Mark Registered for Toy Cars Prohibit the Manufacture and Sale of Toy Cars which constitute Naturalistic Reproductions of Real Cars on which the Owner‟s Mark appears? ___________________________________________________________________ 302 As we have discussed, trademarks are not property rights but limited entitlements to protect owners against uses that diminish the informative value of their marks.58 Trademark law historically limited itself to preventing uses of marks that ―defraud[ed] the public‖ by confusing people into believing that an infringer‘s goods were produced or sponsored by the trademark holder.59 Likelihood of confusion does not necessarily ensue from every instance of third-party appropriation of a registered trademark; rather, it turns on a long and complicated analysis of many factors such as competitive proximity, relevant consumer sophistication, and other factors that explore to what degree, if any, a use will create a false association in the minds of consumers thereby distorting the information in the marketplace. Certainly, when the average relevant consumer is confused, the ability of a trademark to function has been impaired. Many courts and scholars maintain that such impairment must be prevented notwithstanding the increased costs so disliked by trademark use theory. The ECJ‘s 2007 decision in Opel v. Autec appears to move ECJ further away from trademark use theory.60 In Opel, plaintiff automobile manufacturer sued remote-control model car manufacturer Autec in German District Court for trademark infringement alleging that it had wrongfully manufactured and sold a 1:24 scale model based on an Opel to which it had affixed the Opel ―Blitz‖ figurative trademark in the same place where it is found on the automobiles, i.e., as a Detail Trademark. In its defence, Autec argued that the use of the Blitz logo on its remote-controlled cars was not ―use as a mark‖ and that it therefore could not be held to have infringed Opel‘s trademark under the German trademark statute. The defendant‘s own trademark, together with its trade name and addresses, were 58 S. L. DOGAN, M. A. LEMLEY, A Search-Cost Theory of Imitating Doctrines in Trademark Law, in G. B. DINWOODIE, M. D. JANIS, Trade Mark Law and Theory, a Handbook of Contemporary Research, supra at note 53, 65-94, 70; See Beanstalk Group, Inc v AM Gen. Corp., 283 F.3d 856, 861 (7th Cir. 2002) (stating that ― a trademark is an identifier, not a free standing piece of intellectual property; hence the rule that a trademark cannot be sold in gross, that is, without the assets that create the product that it identifies‖); Marshak v. Green, 746 F.2d 927, 929 (2d Cir.1984) (invoking the rule against assignments of trademarks in gross, which states that ― (a) trade name or mark is merely a symbol of goodwill; it has no independent significance apart from the goodwill it symbolizes‖); see generally ETW Corp. v. Jireh Publ‟g, Inc., 332 F.3d 915, 922 (6th Cir. 2003) (differentiating between trademarks and patents because the latter confer a property right in gross rather than a limited interest). Professor Landes and Judge Posner explain the rule against the transfer of trademarks in gross is important to prevent consumer deception during a ―last-period‖ game in which the company is going out of business and wishes to spend its goodwill; the longterm effect of permitting confusion of consumers in this way would be to increase aggregate search costs, W. M. LANDES, R.A. POSNER, The economic structure of Intellectual Property Law, supra at note 5, 185-186. 59 S. L. DOGAN, M. A. LEMLEY, A Search-Cost Theory of Imitating Doctrines in Trademark Law, in G. B. DINWOODIE, M. D. JANIS, Trade Mark Law and Theory, a Handbook of Contemporary Research, supra at note 53, 65-94, 71; see Taylor v. Carpenter, 23 Fed. Cas. 742, 744 (CCD Mass. 1844). 60 European Court of Justice January 25, 2007, case C-48/05, Adam Opel v. Autec, (2007), ECR I1017 ff., case ―Autec‖. 303 ________________________________________________________________________________ John Graziadei and Angela Saltarelli displayed on the remote control device for the cars as well as on the packaging and user instructions. Indeed, Autec was correct that such descriptive use was not, in fact, use as a trademark and, in a system incorporating trademark use theory, the litigation would likely have ended in the preliminary stages as a matter of law. Seeking guidance from the ECJ, the German district court referred the question of whether the use of the Opel sign constituted ―use as a mark‖ and, if not, whether such use was preventable.61 In his opinion, Advocate General Ruiz Jarabo Colomer found that ―use for toys of a registered sign does not constitute use as a trade mark within the meaning of Article 5 of [the Trademark Directive], where the manufacturer of a toy car copies a real car in a reduced scale, including the proprietor‘s trade mark and markets it since the activity of creating models consists basically in making an accurate and detailed copy of reality.‖ 62 ―According to the case-law,‖ the AG explained, ―references made to trade marks for purely descriptive purposes do not constitute use as a trade mark since, in such situations, there is no infringement of any of the interests which Article 5(1) is intended to protect.‖63 The Advocate General referring to, inter alia, the decision in Hölterhoff v. Ulrich Freiesleben, in which the ECJ adopted Advocate General Jacob‘s conclusions that [w]here a sign identical or similar to a registered trade mark is used by a competitor for a purpose other than [the] essential function [of identifying goods and services] it is much more difficult to see why the proprietor should be entitled to prevent such use. And, as has been pointed out in the observations to the Court, both the wording of Article 5(5) of the Trade Marks Directive and the judgment in BMW support the view that the use which may be prevented under Article 5(1) or (2) is confined to use for the purposes of distinguishing goods or services. Perhaps even more cogently, the Commission drew attention at the hearing to the existence of situations in which it would clearly be inequitable to allow the trade mark proprietor to prevent use by third parties yet where the Trade Marks Directive contains no provision precluding him from doing so if his right is taken to 61 In full, the referring court asked: ―When a trade mark is registered both for motor vehicles and for toys, does the affixing by a third party, without authorisation from the trade mark proprietor, of a sign identical to that trade mark on scale models of that make of car, in order to reproduce it faithfully, and the marketing of those scale models, constitute, for the purposes of Article 5(1)(a) of the Directive, a use which the trade mark proprietor is entitled to prevent?‖ in European Court of Justice January 25, 2007, in case C-48/05, Adam Opel v. Autec, (2007), ECR I-1017 ff., case ―Autec‖, para 14. 62 Opinion of the Advocate General Ruiz-Jarabo Colomer, March 7, 2006, C-48/05, Adam Opel v. Autec, (2007), ECR I-905 ff., case ―Autec‖, para 46. 63 Ibid, para 32. Can the Owner of a Mark Registered for Toy Cars Prohibit the Manufacture and Sale of Toy Cars which constitute Naturalistic Reproductions of Real Cars on which the Owner‟s Mark appears? ___________________________________________________________________ 304 extend to all forms of use, including use which cannot and does not purport to indicate the origin of supplies.64 The Advocate General Colomer also found that, should the ECJ disagree with his conclusion concerning the inapplicability of Article 5(1) to prevent descriptive use, the Directive nevertheless permitted the use of trademarks by model car manufactures insofar as such marks are ―an inherent part of the original which, in order for the consumer to be better informed and for all operators in the sector to compete on the same terms, can be considered as falling under Article 6(1)(b) . . . as one of the other characteristics to which the provision refers.‖65 The ECJ did not reverse the opinion of the Advocate General, but did dismiss his conclusion that defendant‘s conduct should be permissible as a matter of law pursuant to Article 6(1)(b), finding that affixing a trademark to a model car is, in fact, a descriptive use and not an indication of its one of its essential characteristics such as kind, quality, or intended purpose. The Court‘s decision not to apply Article 6(1)(b) has been questioned¸ with some scholars arguing that the exception would have been an expeditious way to protect against what appears to be the inevitable monopolization of the model car market by a few large players.66 The Court further opined that Art. 6(1)(c) was also unavailing to the defendant model car manufacturer, finding that the affixing of the trademark on Autec‘s scale models was not designated to indicate the ―intended purpose‖ of the goods.67 In other words, the trademark does not constitute an essential descriptive term necessary for consumers to understand the model cars, similar to information relevant to fair use exceptions.68 Instead, it is merely ―an element in the faithful reproduction of the original vehicles.‖69 64 European Court of Justice, September 20, 2001, Case C‑ 2/00, Hölterhoff v. Ulrich Freiesleben, (2002), ECR I‑ 4187, case ―Hölterhoff‖, para 16. 65 Ibid, para 51. 66 A. KUR, Small Cars, Big Problems? An Analysis of the ECJ‟s Opel/Autec Decision and its Consequences, supra at note 20, 329-352. 67 European Court of Justice January 25, 2007, case C-48/05, Adam Opel v. Autec, (2007), ECR I1017 ff., case ―Autec‖, para 29. 68 The fair use doctrine in the United States acknowledges that trademark protection is an exception to the rule of free competition. Fair use provides a safe haven for uses of trademarked terms that belong beyond the boundaries of trademark enforcement. A strong fair use defence alleviates concerns of free riding because there is little justification for eliminating free riding for its own sake since the purpose of trademark law has never been to maximize profits for trademark owners at the expense of competitors and consumers. The fair use defence is meant to accommodate the special concerns that arise when businesses claim exclusive rights in surnames and descriptive words and symbols. Thus fair use defence focuses on a defendant‘s purpose in applying a surname or descriptive word or symbol, determined through examination of circumstantial evidence, not on the impact of the use on consumers. The fair use defence provides defendants who are acting in good faith leeway to make descriptive use of words and symbols in their primary meaning even if consumers may perceive the use as source-indicating. Thus, even though a plaintiff demonstrates that the defendant made a trademark use of it symbol, and even though plaintiff demonstrates that 305 ________________________________________________________________________________ John Graziadei and Angela Saltarelli In addressing the question of whether the owner of a trademark registered for model cars could prevent third parties from using its mark pursuant to Article 5(1), the ECJ observed, as a preliminary matter, that Article 5(1) does bestow an exclusive right to the owner of a registered trademark entitling it to prevent third parties from using it in the course of trade. The ECJ then observed, in contrast to the the Attorney General‘s decisive opinion, that ―the exclusive right under Article 5(1) was conferred in order to enable the trademark proprietor to protect his specific interests as proprietor‖ and, therefore, ―the exercise of that right must be reserved to cases in which . . . use of the sign affects or is liable to affect the functions of the trademark, in particular its essential function of guaranteeing to consumers the origin of the goods.‖70 The Court‘s test of whether a particular use is infringing under Article 5(1) appears similar to Arsenal: the use itself – in this case descriptive – is not determinative. Rather, the impact of the use on the trademark itself must be analyzed. If the use is considered liable to impair the trademark‘s ability to perform its essential function, then the infringement analysis would continue. Finding that this was a possibility, the Court therefore held that the German national court should conduct a factual inquiry to determine whether the trademark‘s ability function had been impaired by the defendant‘s use. The Court thus held that potential liability depended on whether the relevant consumer ―perceived the sign identical to the [plaintiff‘s] logo appearing on the scale models . . . as an indication that those products come from [plaintiff] or an undertaking economically linked to it.‖71 The test is, in essence, an analysis of the likelihood of confusion or, more strictly, of antecedent consumer association that might in turn lead to confusion.72 So, if the relevant public were to interpret the Opel logo on Autec‘s remote control cars as an indication that the toys were somehow linked to Opel, the essential guarantee of origin function of the trademark this trademark use is likely to confuse consumers, the defendant can avoid liability by demonstrating that it applied the word or symbol in good faith merely for the purpose of describing its own goods or services. Occasionally the fair use defence is denied because of its propensity to cause consumer confusion. In KP Permanent Make-up v. Lasting Impressions, 543 U.S. 111, 122 (2004), the Supreme Court continues its tendency to restrain protection in favour of preserving competition and recognizing distinctiveness as the essential ingredients of trademark protection when it recognized that fair use and some confusion may coexist. It rejected the approach of the Ninth Circuit which shifts the burden of proof to the defendant to prove a lack of consumer confusion. See Margreth Barett, Reconciling Fair Use and Trademark Use, unpublished, pp. 8-12. 69 European Court of Justice, January 25, 2007, case C-48/05, Adam Opel v. Autec, (2007), ECR I1017 ff., case ―Autec‖, para 44. 70 European Court of Justice January 25, 2007, case C-48/05, Adam Opel v. Autec, (2007), ECR I1017 ff., case ―Autec‖, para 31 (emphasis supplied). 71 European Court of Justice, June 13, 2002, case C-206/01, Arsenal Football Club plc v. Matthew Reed, (2002), ECR I-10273 ff., case ―Arsenal‖, para 24. The German Supreme Court recently held that there has been no trademark infringement according to Article 5(1)(a) and 5(2) (decision forthcoming); but see Decision of the Spanish Supreme Court (Sala 1a), 8 March 2004, case 168/2004, Harley Davidson Inc. v. Juguetes Faber S.A., Repertorio de Jurisprudencia Aranzadi Nr. 2004/813. 72 G. B. DINWOODIE, M. D. JANIS ―Confusion Over Use: Contextualism in Trademark Law‖, Iowa L. Rev. 2007, 1597-1667. Can the Owner of a Mark Registered for Toy Cars Prohibit the Manufacture and Sale of Toy Cars which constitute Naturalistic Reproductions of Real Cars on which the Owner‟s Mark appears? ___________________________________________________________________ 306 could be impaired and infringement under Article 5(1)(a) could be found. Conversely, if the relevant public did not perceive the sign as an indication that the models originated from Opel or an undertaking economically linked to it, the German court should conclude that Autec‘s use did not affect the essential functions of Opel trademark and that there had been no infringing pursuant to Article 5.73 73 European Court of Justice, January 25, 2007, case C-48/05, Adam Opel v. Autec, (2007), ECR I1017 ff., case ―Autec‖, para 24. 307 ________________________________________________________________________________ John Graziadei and Angela Saltarelli 4. ANALYSIS If, as in Arsenal, Autec‘s use of an identical mark on identical goods were found to implicate Article 5(1) despite the descriptive use of the mark, how could model car makers avoid liability when they affix identical marks on identical goods in their production of model cars? According to the Arsenal and Opel Courts, the answer is found in the minds of the consumers and, at least in the case of Opel, that‘s where the national courts must look to find it. While the English High Court found that the use of Arsenal‘s trademark by defendant was not a ―trademark use,‖ it nevertheless found that such use was harmful to its ability to function as a trademark. To explain why, one must look to the market in which it was demonstrated that relevant consumers believed the manufacturer of the goods was economically linked to the football club.74 According to the Advocate General Colomer, while some uses should not be considered use as a trademark and are therefore outside of the scope of Article 5(1), these must nevertheless be determined through an analysis of the relevant market, noting that ―when I stated [in Arsenal that] it was for the national court to specify the moment at which a trade mark is used [for decorative and not trademark purposes], I pointed out the need to consider other factors, particularly the nature of the goods in question, the structure of the market and the position in the market of the proprietor of the trade mark….‖75 Thus, because the owner of the mark in Arsenal had a validly registered trademark for sports merchandise, and because the trademark in that market could potentially function as a symbol of origination to the relevant consumer market, permitting a descriptive but nevertheless confusing use by a third party could harm the Arsenal trademark. Accordingly, the use made by the defendant could therefore be precluded pursuant to Article 5(1). Providing in Opel an assessment of the presently booming model car market to frame the context, the Advocate General observed – importantly – that that particular market had been served by independent model car manufacturers for more than a century and that automobile manufacturers had only recently begun to push for control of their marks in that industry. As a result, because of the nature and history of this specific market, present-day consumers and collectors of model cars expect that their models are constructed by myriad manufacturers who may have no connection with the automobile manufacturers whatsoever; that, for example, the Ferrari Scudetto on a die-cast model 250 GTO does not reliably signify that the good was made by, or even in conjunction with, the company in Maranello. He further concluded that consumers of model cars associate the model‘s Detail Trademark with the trademark on the automobile on which the model is based and not with the trademarks on the models manufactured for Opel by its licensees.76 74 Ibid, case ―Arsenal‖. Opinion of the Advocate General Ruiz-Jarabo Colomer, March 7, 2006, C-48/05, Adam Opel v. Autec, (2007), ECR I-905 ff., case ―Autec‖, para 33. 76 Ibid, paras 37, 40. 75 Can the Owner of a Mark Registered for Toy Cars Prohibit the Manufacture and Sale of Toy Cars which constitute Naturalistic Reproductions of Real Cars on which the Owner‟s Mark appears? ___________________________________________________________________ 308 Because trademarks registered in the model car class fail to reliably signal to the market the characteristic of origin, national courts deciding such cases today pursuant to the ECJ‘s interpretation of Community Law should generally find that the descriptive use of a mark by model car manufacturers does not impair the ability of a trademark to function because the Detail trademark does not – and has never – functioned effectively as an Origin Trademark. Thus, Detail Trademarks affixed to model cars should not implicate Article 5. At least for the time being. Indeed, to hold that automobile trademarks registered in the model car class could exclude other makers from using the marks in a descriptive manner would be tantamount to stretching the power of the automobile companies (who, in practice, have registered most of the automobile trademarks in the model car class) over the model car industry. To grant them control – significant legal power – over another industry would contravene the pro-competitive principles of trademark theory. The ECJ thus concluded that the Detail Trademark may not indicate an essential characteristic of the good since the identical reproduction of the automobile logo may not be interpreted by relevant consumers as a mark guaranteeing origin.77 Nevertheless, while the ECJ could have simultaneously concluded that the descriptive use implicit in a Detail Trademark excluded it from application as an Origin Trademark, it deferred this crucial question to the German national court.78 The result is clear: while national courts may presently decide that Detail Trademarks do not impair the functionality of Origin Trademarks, trademark proprietors are free to campaign for the minds of consumers with the hope of changing their perception concerning the trademarks in order to capture the market in the future. 5. CONCLUSION Similar to many European industries, the model car industry is comprised of a vast array of producers ranging from large toy companies producing inexpensive toys for children in large quantities to artisans and craftsmen making limited numbers of exquisite models for serious collectors. However, in ruling on the various questions referred by national courts and, specifically, in Opel v. Autec, the ECJ may have made it more difficult for this diverse and growing industry to continue its robust expansion. Indeed, it is likely that the ECJ‘s decision in Opel will have a negative impact on the market, limiting the ability of many producers to continue making and selling their models and of many collectors to enjoy the array of collectibles previously available to them. Automobile makers, economically powerful concerns compared to model car makers, typically register their famous 77 Or takes an ―unfair advantage‖ of the reputation of the motor car trademark if the plaintiff is an automobile producer. 78 T. C. JEHORAM, M. SANTMAN, Opel /Autec: Does the ECJ Realize What it Has Done?, supra at note 75, 507-510. 309 ________________________________________________________________________________ John Graziadei and Angela Saltarelli trademarks in the toy car class and do so with the intention of controlling an industry related to its own in only the most aesthetic of ways. Should a national court find that a trademark owner registered for model cars could prevent other model car makers from using trademarks necessary for naturalistic reproductions, as the Spanish national court did in Harley Davidson v. Juguetes Faber Sa, the ability to make naturalistic models using purely descriptive trademarks would be limited to an extent unprecedented in the model car industry.79 It is, of course, apparent how so many European industries could be affected by opening the door to such an unjustified restriction on descriptive use. Had the ECJ recognized that Article 5(1) required a demonstration of use as a trademark by alleged infringers, however, it would likely concluded that the decorative use of Detail Trademarks by model car manufacturers in the creation of their models is not infringing. Moreover, had the ECJ arrived at this conclusion as a matter of law, it would have increased legal certainty and consistency across jurisdictions while reducing costs for manufacturers and consumers. Requiring a trademark use for infringement, or finding that descriptive use either does not impair the functionality of Origin Trademarks or is properly beyond the scope of Art. 5(1), would have provided appropriate protection for the descriptive use of trademarks generally. This, in turn, would have provided the certainty necessary to permit smaller manufacturers to commit to production and for financiers to invest with more confidence. By electing, instead, for a localized consumer confusion test that ignores the descriptive characteristic inherent in Detail Trademarks, the ECJ reduced certainty, raised costs for producers, and cast a pall over prospects for growth and diversity in the model car industry as well as other industries dependent on access to trademarks for descriptive purposes. The likelihood of confusion analysis delegated to national courts by the ECJ also increases temporal uncertainty in the market by permitting large manufacturers who own the trademarks to important automobile brands (and who likely own the corresponding marks in the model car class) to allocate their considerable resources to change consumer perception about the origin of models in an effort to capture the increasingly lucrative market. Thus, while the trademark use requirement would have provided legal certainty by basing infringement analysis on a consistent type of use, the likelihood of confusion analysis also raises costs for market participants by enabling courts to regularly revisit the question of consumer confusion, perhaps arriving at different conclusions based on changing perceptions or as a result of judicial subjectivity. When national courts inevitably arrive at their irreconcilable factual conclusions, model car makers will face additional challenges created by territorial restrictions on the marketplace; their markets will be reduced as will the diversity of models available to collectors. The evolution of trademark law reflects a continuous rebalancing that seeks to maximize the informational value of marks while avoiding their use to suppress 79 Spanish Supreme Court (Sala 1a), 8 March 2004, case 168/2004, Harley Davidson Inc. v. Juguetes Faber S.A., Repertorio de Jurisprudencia Aranzadi Nr. 2004/813. Can the Owner of a Mark Registered for Toy Cars Prohibit the Manufacture and Sale of Toy Cars which constitute Naturalistic Reproductions of Real Cars on which the Owner‟s Mark appears? ___________________________________________________________________ 310 access to goods, services, and markets.80 However, it would seem unjustified and inadvisable to satisfy the anticompetitive potential of trademarks by enabling a few trademark owners to control entire markets by granting them control not just over Origin Trademarks but Detail Trademarks as well. Particularly in cases where trademark owners have substantial economic power, to grant them outsized control over all uses of their marks would create market friction in the form of, at a minimum, additional barriers to entry for competitors.81 This would, of course, result in fewer options, reduced quality, and higher costs for consumers. As we have seen, if the use of a trademark is descriptive, as in the case of affixing a Detail Trademark to a model car, then it is generally understood that the mark no longer functions reliably as an indication of origin – it is no longer trustworthy for that purpose and it is no longer properly within the scope of Art. 5(1). As a result, in deciding Opel, the ECJ should have resolved the problem of distinguishing between trademark and descriptive uses of marks as a matter of law by recognizing that trademark theory doesn‘t support the expansion of the right to preclude the use of marks in all contexts. The benefits of carefully defining the differences are clear. The costs of monopolization of marks and protracted infringement litigation are also clear.82 While it‘s true that consumer perception of the Detail Trademark may vary by jurisdiction, the increased efficiency in a marketplace operating under clear rules would certainly work to ameliorate initial confusion. In conclusion, the owner of a trademark registered for model cars should not be able to prohibit the manufacture and sale of model cars which constitute naturalistic reproductions of real cars on which the owner‘s mark appears because such use is descriptive, does not conflict with the purpose of trademarks, and is outside the scope of protection pursuant to Art. 5(1). The ECJ‘s decision in Opel paves the way for this outcome but, unfortunately, does not guarantee this result for the many diverse jurisdictions of Europe. Thus, while the ECJ suggested that a case for infringement under Article 5(1) may be defeated on the basis of nontrademark use, it nevertheless found there could be (under the same circumstances) an infringement depending on a national court‘s assessment of local consumer perception. This, of course, provides an opportunity for trademark owners to campaign for changes in consumer perception in the years to come. 80 S. L. DOGAN, M. A. LEMLEY, A Search-Cost Theory of Imitating Doctrines in Trademark Law, in G. B. DINWOODIE, M. D. JANIS, Trade Mark Law and Theory, A Handbook of Contemporary Research, supra at note 53, 65-94, 66 81 Ibid, 65-94, 70; the danger of monopolization of trademarks is explored by G. S. LUNNEY Jr., Trademark Monopolies, 48 Emory L. J. 1999, 367, 370. 82 American Honda Motor Co., Inc. v. Pro-Line Protoform and T. Mattson Enterprise, Inc., 2004 U.S. Dist. LEXIS 13949. 311 ________________________________________________________________________________ John Graziadei and Angela Saltarelli 6. FINAL THOUGHTS When deciding whether to register automobile trademarks for application on model cars, companies and authorities must ask for what purpose these marks have been registered in the model car class. Are they registered to function as Origin Trademarks on the models as they are on the automobiles after which they are modelled? Or are registrants seeking to restrict third-party access to their trademarks – even though use as a Detail Trademark is purely descriptive – in an effort to corner the market? If the answer is the latter, what is the basis for inferring the right to preclude such descriptive use in light of the true scope of protection provided for by Article 5(1)? As we know, tension between trademark owners and third-party users may arise in three primary contexts in the life of a trademark: registration, infringement litigation, and the assertion of fair-use defence.83 In asking whether there has been an infringement by a third-party model car maker, the question posed assumes the existence of a validly registered trademark in the model car class. However, in light of our conclusion that the purely descriptive use of Detail Trademarks should never be considered infringing, we submit that a system based on sound trademark theory must question whether there is any theoretical or legal justification for granting registration of these marks in the first place. Since all infringement litigation should fail in cases of descriptive use, the market would certainly benefit from clearer signals not only in the early stages of infringement litigation through application of trademark use theory, but at an even earlier stage – the point of registration – where the strength of such marks and the potential outcome of litigation is first assessed by existing and potential market participants. 83 M. RICOLFI, Strategic Branding (Opel/Autec, Eventmarke), Max Planck Institute paper, 2009, supra note 5. 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PINTO, Is Consent Required to Use Registered Trade Marks on Model Replica Cars?, 2 Journal of Intellectual law & Practice 2007, 359 ff. M. RICOLFI, Strategic Branding (Opel/Autec, Eventmarke), Max Planck Institute paper 2009. J. M. SAMUELS, L. B. SAMUELS , A review of recent decisions of the United States Court of Appeals for the Federal Circuit: article: the trademark jurisprudence of Judge Rich, 25 The American University Law Review 2007, 5059 ff. N. SHEMTOV, Trade mark use in Europe: revisiting Arsenal in the light of Opel and Picasso, 8 Journal of intellectual Law & Practice 2007, 557 ff. I. SIMON, Embellishment: Trade mark use triumph or decorative disaster ?, in E.I.P.R. 2006, 321 ff. C. WADLOW ―One more outing for Arsenal: a case of dilution or one for restitution?‖, 2 Journal of Intellectual Law & Practice 2005, 143 ff. Can the Owner of a Mark Registered for Toy Cars Prohibit the Manufacture and Sale of Toy Cars which constitute Naturalistic Reproductions of Real Cars on which the Owner‟s Mark appears? ___________________________________________________________________ 316 Case Law a. ECJ European Court of Justice February 23, 1999, case C- 63/97, BMW v. Deenik, (1999) ECR I-905 ff., case ―BMW‖. European Court of Justice, September 20, 2001, Case C‑ 2/00, Hölterhoff v. Ulrich Freiesleben, (2002), ECR I‑ 4187 ff., case ―Hölterhoff”. Opinion of the Advocate General Ruiz-Jarabo Colomer June 13, 2002, C206/01, Arsenal Football Club plc v. Matthew Reed, (2002) ECR I-3422 ff., case ―Arsenal‖. European Court of Justice June 13, 2002, case C- 206/01, Arsenal Football Club plc v. Matthew Reed, (2002) ECR I-10273 ff., case ―Arsenal‖. Opinion of the Advocate General Jacobs July 10, 2003, C-408/01, Adidas Salomon Ag v. Fitnessworld Trading LTD, (2003) ECR I-3711 ff., case ―Adidas‖. European Court of Justice October 23, 2003, C-408/01, Adidas Salomon Ag v. Fitnessworld Trading LTD, (2003) ECR I-4881 ff., case ―Adidas‖. European Court of Justice November 16, 2004, C-245/02, Anheuser-Busch v. Bud jovickð Budvar, (2004) ECR I-2013 ff., case ―Budweiser‖. European Court of Justice March 17, 2005, case C-228/03, The Gillette Company, Gillette Group Finland Oy v. LA-Laboratories Ltd Oy, (2005) ECR I2337 ff., case ―Gillette‖. Opinion of the Advocate General Ruiz-Jarabo Colomer March 7, 2006, C48/05 Adam Opel v. Autec, (2007) ECR I-905 ff., case ―Autec‖. European Court of Justice January 25, 2007, case C-48/05, Adam Opel v. Autec, (2007) ECR I-1017 ff., case ―Autec‖. European Court of Justice September 11, 2007, case C-17/06, Céline Sarl v. Céline SA, (2006) ECR I-7041 ff., case ―Celine‖. European court of Justice October 10, 2007, C-487/07, L‟Oréal S.A. (and others) v. Bellure N.V. (and others), (2007) ECR I-7079 ff., case ―l‟Orèal‖. b. European Member National Cases England 317 ________________________________________________________________________________ John Graziadei and Angela Saltarelli Court of Appeal ( Civil division) on Appeal from Chancery division, Mr Justice Laddie, May 21,2003, WCA Civ 96 Case No: A2/2003/007, Arsenal Football Club v. Matthew Reed, case ―Arsenal‖. Germany Bundesgerichtshof, 14 January 2010, I ZR, 88/08. Italy Cassazione civile, I° sezione, September 1, 1998, n° 10739, available on www.cortedicassazione.it Cassazione civile, I° sezione, September 20,1998 n° 10416, available on www.cortedicassazione.it Tribunale di Roma, ordinanza 28 aprile 2004, in Foro It, 2005, 586 ff. Spain Spanish Supreme Court (Sala 1a), 8 March 2004, case 168/2004, Harley Davidson Inc. v. Juguetes Faber S.A., Repertorio de Jurisprudencia Aranzadi Nr. 2004/813. c. United States Mishawaka Rubber & Woolen Mfg. Co. v. S.S. Kresge Co., 316 US 203, 205, 53 USPQ 323, 324-25, 1942. Warner Bros Inc v. Gay Toys Inc, 553 F. Supp 1018, 1983 Us Dist. American Honda Motor Co Inc v. Pro Line Protoform and T Mattson Enterprise Inc, F. Supp 2D 1081, 325 F. Supp. 2d 1081; 2004 U.S. Dist. LEXIS 13949. Dr Ing H.C.F. Porsche AG ans Porsche Cars North America Inc v Universal Brass Inc., 1995 U.S. Dist Lexis 7079. Interactive Products Corporation v. A2Z Mobile Office Solutions Inc, 326 F 3d 687, 695, April 10, 2003, (6th Cir 2003 ). KP Permanent Make-Up, Inc v. Lasting Impression I Inc, 328 F. 3d 1061, 1072 (9th Cir 2003). Volkswagen Ag v. Dorling Kindersley Publishing Inc, 614 F. Supp. 2d 793, 2009 US dist Lexis 288851. Legislation Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 to approximate the laws of the Member States relating to trade marks. Can the Owner of a Mark Registered for Toy Cars Prohibit the Manufacture and Sale of Toy Cars which constitute Naturalistic Reproductions of Real Cars on which the Owner‟s Mark appears? ___________________________________________________________________ 318 Council Regulation 09/207/EC of February 26, 2009 on the Community trade mark, 2009. Internet http://juris.bundesgerichtshof.de http.//en. wikipedia.org ANALYSIS OF THE GEOGRAPHICAL INDICATIONS IN THE USCOLOMBIA FTA AND CHOICE OF FORUM IN ADJUDICATING A GEOGRAPHICAL INDICATION’S DISPUTE by Sofia Rodriguez-Moreno A Free Trade Agreement between Colombia and the United States (herein thereafter referred to as the ―FTA‖) was concluded in 2006.1 The goal of the agreement is to eliminate tariffs and other barriers to goods and services, and to expand trade between the United States and Colombia. The agreement is pending before US Congress and its approval it is expected to happen in 2010. The intellectual property provisions as well as the dispute settlement provisions are among the most important parts of the agreement. Given the social and economical advantages resulting from the protection of Geographical Indications (GIs) for a developing country like Colombia, it is important to analyze which changes are introduced in this regard in the FTA. Furthermore, this work will observe some factors to be taken into account in order to choose between the FTA or the World Trade Organization (WTO) system of settlement disputes in order to solve a controversy regarding GIs that may arise between Colombia and the US. 1. SCOPE OF THE APPLICATION The General Agreement on Trade and Tariffs (GATT) Article XXIV authorizes members of the World Trade Organization (WTO) to establish free trade areas.2 Consistent with this agreement the governments of Colombia and the United States decided to engage in an agreement that will eliminate tariffs and other barriers in order to trade in good and services. The scope of the agreement includes important areas relating to customs administration and trade facilitation, technical barriers to trade, government procurement, investment, telecommunications, electronic commerce, intellectual property rights and labor and environmental protection. In the following part the work will focus on the intellectual property rights provisions, and specifically on the geographical indications rules in order to determine what changes are introduced by the FTA and whether or not they go beyond the requirements of the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS).3 1 The text of the agreement can be accessed at: http://www.ustr.gov/trade-agreements/free-tradeagreements/colombia-fta/final-text (last visited Feb. 21, 2010). 2 Article 24 of the GATT 1994. 3 Agreement on Trade-Related Aspects of Intellectual Property Rights, 15 April 1994, Marrakesh Agreement Establishing the World Trade Organization, Annex 1C, Legal Instruments-Results of the Uruguay Round, Vol. 31, 33 IM 81 (1994). Analysis of the Geographical Indications in the US-Colombia FTA and Choice of Forum in Adjudicating a Geographical Indication‟s Dispute ___________________________________________________________________ 320 2. THE GEOGRAPHICAL INDICATION STANDARD: WHAT GOES BEYOND TRIPS? 2.1. Geographical Indications under the Current Standard of Protection According to Article 22.1 TRIPS geographical indications are ―indications which identify a good as originating in the territory of a Member (country) or a region o locality in that territory, where a given quality, reputation or other characteristic of the good is essentially attributable to its geographical origin‖. Such definition has been incorporated in Decision 486/2000 which is the Common Regime on Intellectual Property for the countries of the Andean Community (Bolivia, Peru, Ecuador and Colombia). The Decision makes a distinction between designations of origin (DOs) and indications of origin (IOs). In fact, DOs indentify a good as originating in a particular territory, the qualities, reputation, or characteristics of which are exclusively or essentially attributable to the geographical environment in which such good is produced, including both natural and human factors. On the other hand, IOs are understood to be a name, expression, image, or sign that indicates or evokes a particular country, region, locality, or place. However, the qualities of the good identified with an IO are not exclusively attributable to the geographical origin.4 As it can be observed, Colombia as part of the Andean Community, has given GIs independent protection from trademarks. Such separate protection is due to the fact that some benefits are said to be obtained by protecting GIs, among them the promotion of manufacture of local products, the regional marketing of protected products, the promotion of tourism and touristic routes, the establishment of high levels of quality control.5 Indeed, through GIs, in the words of J. Bullbrook ―it is ensured that consumers in international markets will accept and favor the product‖.6 Evidence of that could be the most famous Colombian GI ―Café de Colombia‖. 4 Cfr. Articles 201 and 221, Decision 486/ 2000 of December 14, 2000, Common Regime on Intellectual Property, GO 20, 1ff. Furthermore, Decision 486 also includes additional protection for GIs for wines and spirits (Articles 135, 215) in the same line as Article 23 TRIPS. 5 D. VIVAS-EUGUI, Negotiations on Geographical Indications in the TRIPs Council and their Effect on the WTO Agricultural Negotiations – Implications for the Developing Countries and the Case of Venezuela, in JWIP 2001, 703 ff. at 715. In the same line, M.A. E CHOLS, Geographical Indications for Food, TRIPs and the Doha Development Agenda, in 47 Journal of African Law, 2003, 199ff. at 200. 6 J. BULLBROOK, Geographical Indications within GATT, in 7 JWIP 2004, 501ff. at 502. See also, S. REVIRON, Geographical Indications: Creation and Distribution of Economic Value in Developing Countries, NCCR Trade Working Paper No. 2009/14, 2009, 30ff. 321 ________________________________________________________________________________ Sofia Rodriguez-Moreno As L. SCHÜSSLER points out, for many years coffee producers have faced low and unsteady coffee prices.7 Nevertheless, in the case of Colombia the National Federation of Colombian Coffee Growers (NFC), a nonprofit and nonpolitical organization for the collective of over 560.000 coffee growers of Colombia that tries to stabilize the market for Colombian coffee, has relied not only in trademark but also on GI protection in order to increase market shares in the global market.8 In fact, in 2005 ―Café de Colombia‖ became the first protected DO in Colombia and in 2007; it was recognized as a Protected Geographical Indication (PGI) under the European Community (EC) system (Council Regulation (EC) No. 510/2006). ―Café de Colombia‖ was the first non- EC application ever filed and the first time that a product from a country outside from the EC was granted protection as a GI under the EC system.9 Other Colombian products may follow the same path. Besides ―Café de Colombia‖, the Colombian Patents and Trademarks Office (PTO) has granted protection as DOs for ―Cholupa del Huila‖ an exotic fruit from Colombia and it is currently examining the applications for ―Queso del Caquetá‖ for cheese, ―San Agustín‖ for coffee, ―Cristal‖ for an alcoholic beverage, ―Ron de Caldas‖ for rum, and ―Cacao de Tumaco‖ for Cocoa. Furthermore, protection as DO was granted in 2009 for a type of handicraft as ―Cestería en Rollo de Guacamayas‖.10 2.2. Geographical Indications under the FTA The FTA agreement defines GIs as ―indications that identify a good as originating in the territory of a Party, or a region or locality in that territory, where a given quality, reputation, or other characteristic of the goods is essentially attributable to its geographical origin. Any sign or combination of signs, in any form whatsoever, shall be eligible to be a geographical indication‖ (Note 4 to Article 16.2). Moreover, Article 16.2 of the FTA establishes that ―each party shall provide that trademarks shall include collective and certification marks. Each party shall also provide that signs that may serve, in the course of trade, as geographical indications may constitute certification or collective marks‖.11 7 L. SCHÜSSLER, Protecting „Single-Origin Coffee‟ within Global Coffee Market: The Role of Geographical Indications and Trademarks, in TECJILTP, 10(1), 2009, 149ff. at 150. Retrieved [December 9, 2009] from the World Wide Web: http://www.esteyjournal.com 8 Ibid. at 165. See also, G.E. EVANS and M. BLAKENEY, The Protection of Geographical Indications after DOHA: QUO VADIS?, in 9 JIEL 2006, 575 ff. at 607. 9 It is important to note that the NFC originally filed an application for a Protected Designation of Origin (PDO). Nevertheless, it was changed to a Protected GI application (PGI) since Colombian coffee is based on Arabica species. 10 Further information on Colombian GI‘s can be found at the website of the PTO Office at httt://www.sic.gov.co (last visited February 9, 2010). 11 It is also important to note Article 16.3 of the FTA: 1. If a Party shall provide the means to apply for protection or petition for recognition of geographical indications, through a system of protection of trademarks or otherwise, it shall accept those applications and petitions without the requirement for intercession by a Party on behalf of its nationals and shall: (a) process applications or petitions, as relevant with a minimum of formulations. Analysis of the Geographical Indications in the US-Colombia FTA and Choice of Forum in Adjudicating a Geographical Indication‟s Dispute ___________________________________________________________________ 322 When comparing the above mentioned FTA regulation of GIs with the current laws under Decision 486/2000, several contradictions arise. First of all, although the FTA defines GIs as indications that identify a good as originating in the territory of a Party, it goes beyond to establish that any sign or combination of signs is eligible for GI protection. The Decision 486 is very specific in requiring the sign to be either an indication which identifies a good as originating from a particular territory or to evoke it. Hence, not ―any sign‖ is eligible for GI, but only those which resort to a geographical area, used to communicate a product's geographic origins or product characteristics due to a geographic origin. Secondly, under the FTA GIs can be protected as certification or collective marks following the US approach under which GIs are not protected independently from trademarks.12 Several authors have criticized such approach since it is clear that this approach favors US. In the words of the Colombian former Intellectual Property FTA negotiator ―…The European and Andean perspective (in Intellectual Property matters the Andeans have closely followed the European regulations) privilege geographical indications over trademarks even if they are subsequent in time to trademarks. In the FTA such preferential treatment disappears‖.13 Furthermore, Colombian Professor of Law J.A. Zarama highlights that the rules contained in the FTA leave open the possibility of monopolize GIs which are (b) make its regulations governing filling of such applications or petition, as the case may be, readily available to the public. (c) provide that applications or petitions, as the case may be, for geographical indications are published for opposition, and shall provide procedures for opposing geographical indications that are the subject of applications or petitions. Each Party shall also provide procedures to cancel a registration resulting from an application or a petition. (d) provide that measures governing the filling of applications or petitions for geographical indications set out clearly the procedures for these actions. Such procedures shall include contact information sufficient for applicants and/or petitioners to obtain specific procedural guidance regarding the processing 2. Each Party shall provide that grounds for refusing protection or recognition of a geographical indication include the following: (a) the geographical indication is likely to cause confusion with a trademark that is the subject of a good-faith pending application or registration; and (b) the geographical indication is likely to cause confusion with a preexisting trademark, the rights to which have been acquired through use in good faith in that Party. 12 The advantages of protecting geographical symbols under a property rights system are appropriately explored by Prof. Ricolfi , see M. RICOLFI, ―Geographical Symbols in Intellectual Property Law: the Policy Options”, in SCHUTZ VON KREATIVITÄT UND WETTBEWERB, FESTSCHFIRFT FÜR ULRICH LOWENHEIM, ZUM 75. GEBURTSTAG, 2009, 231 ff, at 233. 13 LA. MADRID, Negociaciones de Propiedad Intelectual en el TLC con EEUU: Proceso, Resultados y Algunos Mitos, Bogota, Universidad Sergio Arboleda, Retrieved [December 9, 2009] from the World Wide Web: http://www.usergioarboleda.edu.co 323 ________________________________________________________________________________ Sofia Rodriguez-Moreno signs of common use.14 He also explains that the protected interest in the case of GIs and DOs is the one of a community represented by people which elaborate their products in a specific geographical place. Hence, consumers acquire a product, induced by the reputation of the product derived from its geographical origin rather than from the trademark that may identify it. He argues that in the case of collective trademarks the protected interest is the product quality that has been developed by the holders of the trademark. Moreover, in the case of certification trademarks, the protected interest is the public‘s reliance on the certification organism in regards to the quality of the product without considering the importance of the geographical origin of the same.15 Conversely, at the European level Prof. M. Ricolfi stresses out the importance of collective and certification trademarks as an ideal solution towards a harmonized protection of geographical signs, which can lead to a system of multilateral registration of collective and certification trademarks.16 Undoubtedly, the certification and collective trademarks system has important advantages over the GIs Andean and European model. Indeed, as explained by Prof. Ricolfi, with such system (i) registration of the sign is enough to avoid the need to prove reputation; (ii) the enforcement of the property right granted by registration is easier to obtain; (iii) the system contributes to the optimal allocation of resources by means of lowering consumers search costs, a goal also attained due to the essential information that collective or certification trademarks provide; (iv) it ―provides an incentive for an investment towards a quality-price combination satisfactory to consumers‖; furthermore, (v) there are already registration systems in place for individual trademarks.17 Additional benefits/distinctions between the European and the American approach to GIs are highlighted by American professor J. Hughes.18 Prof. Hughes explains how certification marks can develop as a matter of common law without USPTO registration: ―Thus, if an appellation or denominazione is controlled locally in France or Italy, the producers market in the United States, and no one else in the United States is using the GI for the same product, there are probably common law trademark rights under U.S. trademark doctrine. This means that a European producer can gain common law protection of its geographical indication in the United States without regard to whether the GI is protected under an EU member state's trademark law, geographical indications law, or both‖. 19 Furthermore, Prof. Hughes explains how a certification mark system 14 J.A. ZARAMA, Las Indicaciones Geográficas en el TLC firmado por Colombia y Perú con los Estados Unidos frente al TLC firmado con Chile, (El problema de la desprotección de las Denominaciones de Origen)”, in 7 REM (1), Universidad Externado de Colombia, 24 ff, at 23. Retrieved [December 9, 2009] from the World Wide Web: http://www.emercatoria.edu.co. 15 Ibid. 16 M. RICOLFI, Geographical Symbols in Intellectual Property Law: the Policy Options, supra at note 12, at 249. 17 Ibid. 233-237. 18 J. HUGHES, Champagne, Feta, and Bourbon: The Spirited Debate about Geographical Indications, in 58 Hastings L.J. 299, 1ff. at 6. Retrieved [January 16, 2010] from the World Wide Web: http://www.lexis-nexis.com. 19 Ibid. Analysis of the Geographical Indications in the US-Colombia FTA and Choice of Forum in Adjudicating a Geographical Indication‟s Dispute ___________________________________________________________________ 324 polices itself on quality controls as well as GIs do, because both GIs and certification trademarks share the incentive to maintain quality in order to retain consumer loyalty and to gain new market share.20 These advantages will be applied to Colombia as a result of the protection adopted in the FTA and therefore, Colombia will certainly benefit from such system. As a matter of fact, the protection of Colombian GIs in the US already follows the route of the certification trademark while in Europe they follow the GI European model. 21 Nevertheless, Colombia as part of the Andean Community has the obligation to follow Decision 486 which, as examined before, provides independent protection from trademarks to GIs.22 It is unclear what would be the position of the other members of the Community (except from Peru that has also signed an FTA with the US), and how the Decision should be updated in case Ecuador and Bolivia do not accept the obligations that Colombia has undertaken.23 2.3. What goes beyond TRIPS? In general, the analyzed FTA norms with regards to GIs do not provide for a higher standard of protection compared with TRIPS. However, a provision to fulfill the obligations contained in Article 22.2 TRIPS was not included within the FTA.24 20 Ibid. at 15. He also refutes the thesis according to which stronger GIs rights would benefit developing countries. According to the author, (i) such argument is unproven; (ii) the most important geographical names are concentrated in Europe and North America; (iii) certification trademark law provides a legal framework in which GIs from developing countries can construe reputational capital that to be exploited and (iv) the same type of initial reputational investment would be needed to build recognition of a country‘s GIs as would be required with new trademarks. Ibid. at 28. 21 Indeed, the NFC has maintained since 1981 USPTO registration of the certification mark the COLOMBIAN (1.160.492) for coffee, which has reached incontestable status. Retrieved [February 21, 2010] from the World Wide Web: http://www.uspto.gov. 22 It is important to distinguish the protection that a geographical sign may get in Colombia. A geographical sign may be registered as trademark or as a part of a trademark. Nevertheless, if the protection is oriented to value the geographical origin and the product characteristics due to geographic origin that the sign conveys, then such sign is registered as a GI. On the contrary, if the protection is oriented to value the ability of the sign to differentiate products or services of one company from those of another, then the sign is protected as a trademark. Trademarks and GI under the Andean Community Decision have two separate regimes and requirements. Authors such as K. Maskus have established that ―In Colombia geographical indications may be registered as trademarks […]‖. Articles 134 and 201 of Decision 486/2000 have a clear wording on the law not allowing for such confusion. K. Maskus in Jeffrey J. Schott, Trade relations between Colombia and the United States Volume 79, Policy analyses in international economics, Peterson Institute, 2006, 145 ff. at 152. 23 F. M. ABBOT, T. COTTIER, F. GURRY, International Intellectual Property in an Integrated World Economy, Aspen Publishers, New York, 2007. 683 ff. at 394. 24 Art. 22.2 TRIPS reads: ―[…] 2. In respect of geographical indications, Members shall provide the legal means for interested parties to prevent: (a) the use of any means in the designation or 325 ________________________________________________________________________________ Sofia Rodriguez-Moreno Unlike the North American Free Trade Agreement (NAFTA)25 in which Article 1712 requires members to provide means for private parties to prevent the use and registration of false geographical indications that are misleading to the public, the FTA is silent in this regard.26 It is important to note that as a consequence of Article 1712, US Congress amended the Lanham Act provisions related to the registration of false geographical indications and trademarks.27 Nonetheless, no modification to United States law was made with respect to the use of geographical indications.28 As for enforcement provisions regarding IP matters in the FTA, it is necessary to highlight that the main changes introduced by the FTA which have some differences with the current Colombian enforcement regulations are in the field of copyright and neighboring rights which would deserve a separate analysis from this work (article 16.11). 3. THE CHOICE OF FORUM FOR THE SETTLEMENT OF A GI DISPUTE: THE FTA OR THE WTO SYSTEM? 3.1. Scope of Application of the FTA Dispute Settlement Provisions Article 21.2 of the FTA limits the application of the dispute settlement provisions to the disputes between Colombia and the US regarding the interpretation or application of the agreement or wherever a party considers that the obligations contained in the FTA have been violated; this applies to the GI disputes as well. An obvious but important difference from the WTO system comes out of this rule. The FTA provisions will be only applied to the disputes that arise on the bilateral level (Colombia –US) while the WTO dispute settlement provisions aim at operating at a global or near-global level. On the other hand the FTA dispute settlement provisions do not apply to disputes that arise between members of the Andean Community (Art. 21.2). This is an important clarification since initially all the Andean Community countries were going to negotiate as a bloc a free trade agreement with the US. However, the governments could not agree on this possibility and it was determined that every member would decide whether or not to negotiate a bilateral agreement with the presentation of a good that indicates or suggests that the good in question originates in a geographical area other than the true place of origin in a manner which misleads the public as to the geographical origin of the good; (b) any use which constitutes an act of unfair competition within the meaning of Article 10bis of the Paris Convention (1967). 25 North American Free Trade Agreement (NAFTA), adopted on December 1992 by México, United States and Canada. Enforce since January 1, 1994. 26 Indeed, it prevents the use and registration of similar trademarks or signs similar to a protected trademark but not prevents the registration of false GIs. cfr. art. 16.2 (4) FTA. 27 P. M. BRODY, Protection of Geographical Indications in the Wake of TRIPs: Existing United States Laws and the Administration‟s proposed Legislation, in 84 TR 520, 1994, 520 ff. at 522. 28 Ibid. Analysis of the Geographical Indications in the US-Colombia FTA and Choice of Forum in Adjudicating a Geographical Indication‟s Dispute ___________________________________________________________________ 326 US. For that reason, disputes among members of the Andean Community will continue being decided under the dispute settlement mechanism established by the Andean agreements. 3.2. Choice of Forum, Timeframes and Enforcement of the Decision Article 21.3 of the FTA sets out that when a dispute regarding any matters arises under the agreement or another free trade agreement to which the disputing Parties are party or the WTO agreement, the complaining party may select the forum in which to settle the dispute. Once the complaining Party has requested a panel under an agreement referred to in Art. 21-2 paragraph 1, the forum selected shall be used to the exclusion of the others. That means that the two countries may choose both the FTA and the WTO dispute settlement procedures for settling a GI dispute. In the future if Colombia or the US is faced up to selecting the forum in a GI controversy, it will be important to consider the type of GI dispute to settle. Colombia or the US may prefer the WTO mechanism -which has a multilateral nature- if the type of controversy may be benefited from the participation of third parties (third countries) with substantial trade interest. Such would be the case of the members of the Andean Community, which share similar economic needs and structures as Colombia if the type of dispute allows such members to be on Colombia‘s side or to defend Colombia‘s interests. On the contrary, the bilateral procedure could be strategically more discrete when involving other WTO members may have an undesired international political effect either for Colombia or the US. As for the timeframes and enforcement of the decision, the FTA (Art. 21.4 21.18) follows the steps of the WTO system. As a first step, the parties commit for consultations. If consultations are not successful they might request the body appointed to meet in order to analyze the agreement and if this fails to lead to an accepted solution the parties can go to a panel. The rules or procedure provide procedural fairness (right to hearings and submissions) determine the timeline for issues such as submissions, reports by the panel and if required the suspension of benefits.29 Other factors to take into account to select the relevant system will be ―the specific facts of the case, which include the expertise of adjudicators of each forum, the need for efficiency and specific remedies, and the procedural aspects of each forum. In addition, there are other factors of a more political nature that may 29 P. DRAHOS, The Bilateral Web of Trade Dispute Settlement, 1ff. at 9. Retrieved [February 21, 2010] from the World Wide Web: http://www.twnside.org.sg. A comprehensive list of the WTO dispute settlement steps is provided in C. BOWN and B.M. HOECKMAN. BOWN, C. and HOEKMAN, B., WTO Dispute Settlement and the Missing Developing Country Cases: Engaging the Private Sector, in JIEL, v8, n4, 2005, 861 ff at 863. 327 ________________________________________________________________________________ Sofia Rodriguez-Moreno affect the state‘s choice of forum, such as whether the state will seek a dispute settlement or a systemic declaration or what type, importance, or influence the forum will have, which will affect the state‘s choice of forum‖. 30 Also, it will be important to take into account that the WTO mechanism will be held at the WTO headquarters in Geneva which involves more costs than choosing as a forum either the US or Colombia. With respect to this issue a comprehensive analysis of the costs of actual WTO litigation for developing countries is made by Bown and Hoeckman, arriving to a bill of approximately US$500,000 (by 2005) for litigation only (to an exporter for a market access case) without including the pre-litigation phase of investigation and post-litigation phase to ensure compliance.31 W. J. Davey points out that in real practice, with the exception of MERCOSUR32 dispute settlement in regional trade agreements does not seem as successful as WTO dispute settlement.33 Among the reasons that explain such situation according to Davey are (i) the WTO dispute settlement system is a more sophisticated mechanism; (ii) it has a more effective enforcement system, and (iii) the WTO decisions are observed as more legitimate than many other bilateral dispute settlement systems.34 Since the FTA provides protection that does not go beyond TRIPS, the WTO dispute settlement mechanism will enforce the standards at the level provided in the TRIPS Agreement as well as it would do with the obligations contained in the FTA. Additionally, as explained by P. Drahos ―Whether two states pursue a trade dispute in the WTO using the DSU or whether they use the procedure available to 30 K. KWAK and G. MARCEAU, Overlaps and Conflicts of Jurisdictions between the World Trade Organization and Regional Trade Agreements, in Regional Trade Agreements and the WTO Legal System, Edited by L. BARTELS and F. ORTINO, Oxford University Press, Oxford, 2006. 465 ff. at 482. 31 C. BOWN and B.M. HOECKMAN. BOWN, C. and HOEKMAN, B., WTO Dispute Settlement and the Missing Developing Country Cases: Engaging the Private Sector, at note 29, at 870. 32 MERCOSUR agreement or Mercado Común del Sur (Southern Common Market) was adopted on March, 1991 by Argentina, Brasil, Paraguay, Uruguay and Venezuela. It came into force in 1995. 33 W. J. DAVEY, Dispute Settlement in the WTO and RTAs: A Comment, in Regional Trade Agreements and the WTO Legal System, Edited by L. BARTELS and F. ORTINO, Oxford University Press, Oxford, 2006. 343 ff. at 354. 34 Ibid. at 355. An interesting analysis in regards to the success of developing countries in WTO disputes is made by C. BOWN; he wonders ―what can developing countries do to increase the likelihood that they will achieve success as plaintiffs in trade disputes? Can they do anything to improve the likelihood that developed countries will abide by their market access commitments? Perhaps an obvious question that is frequently lost in the discussion is that developing countries should continue to liberalize and expand their own market access commitments in order to receive more exports from developed trading partners and thus to become more integrate in the world trading system….Having substantial imports will give developing countries the power to make credible threats that they will take away valuable concessions from developed trading partners who refuse to comply with their WTO obligations and whom they might face as defendants in WTO trading disputes‖, C. BOWN, Developing Countries as Plaintiffs and Defendants in GATT/WTO Trade Disputes, TWE v27, n1 2004, 1ff at 26. Analysis of the Geographical Indications in the US-Colombia FTA and Choice of Forum in Adjudicating a Geographical Indication‟s Dispute ___________________________________________________________________ 328 them under a bilateral trade agreement, the dispute still remains a bilateral dispute. In either case, the superior bargaining power of a strong state also remains.‖35 Colombia and the US are free to submit their GI disputes regarding matters concerned by the agreement to the WTO or to use the dispute settlement environment established by the FTA. Nevertheless, in order to promote the uniformity in decisions a party should not undergo a process before an arbitral Panel formed according to the FTA provisions and bring the same controversy before the WTO. Otherwise, the parties could be encountering different decisions since the WTO Panelists‘ decisions will be influenced by the WTO goals of trade liberalization while the FTA Panelists‘ decisions will reflect the FTA objective of commercial cooperation among two countries: the US and Colombia. Finally, one major issue to look at when choosing between the FTA or the WTO forum is that under the FTA the Panel‘s ruling cannot be appealed. It is interesting to see that countries that have established regional trade agreements such as MERCOSUR have decided little by little to introduce innovations in their rulings in order to allow the appeal of the decisions by creating an international judicial body in charge of issuing a decision on appeal. In fact, just by means of the Protocol of Olivos in 2004, MERCOSUR introduced the possibility of appeal for decisions issued by ad hoc arbitration tribunals.36 Probably with the time Colombia and the US will include the possibility of appeal for the disputing parties, by means of the creation of a neutral appeal body. In fact, it would be useful for disputing parties to have a neutral body to review the decision on points of law and to correct possible mistakes that the Panel could have made on legal interpretation of GI provisions. 4. CONCLUSIONS According to the above analysis, Colombia‘s current GI regime is close to the European model of protection. Nevertheless, there are many advantages of adopting the collective and certification trademark system and therefore Colombia has been benefited from the FTA regime. However, it is evident that although GIs have been included as a protected interest in the FTA, there is a substantial difference between the current regulation contained in the Common Regime for the Andean Community countries and the type of protection allowed by the FTA. Such difference puts Colombia in a difficult position since it is bound to comply with Decision 486. Sooner or later, the 35 36 P. DRAHOS, The Bilateral Web of Trade Dispute Settlement, supra at 29 at 14. A comprehensive study has been made by G. LUCARELLI and J. GAMA, Considerations of the Mercosur Dispute Settlement Mechanism and the Impact of its Decisions in the WTO Dispute Resolution System, 2006, 31ff. 329 ________________________________________________________________________________ Sofia Rodriguez-Moreno government of Colombia will have to address this issue in regards to its Andean Community partners. On the other hand, since the GI‘s protection in the FTA does not go beyond TRIPS, Colombia and the US will have to take a look at different factors that were described in this work, when adjudicating a controversy regarding GIs in order to select the relevant dispute settlement system. Analysis of the Geographical Indications in the US-Colombia FTA and Choice of Forum in Adjudicating a Geographical Indication‟s Dispute ___________________________________________________________________ 330 BIBLIOGRAPHY ABBOT, F.; COTTIER, T.; GURRY, F., International Intellectual Property in an Integrated World Economy, New York, Aspen Publishers, 2007. BARTELS, L. and ORTINO, F., Regional Trade Agreements and the WTO Legal System, Oxford University Press, Oxford, 2006. BERCOVITZ, A., El derecho de autor en el acuerdo TRIPS, in Propiedad Intelectual en el GATT, Buenos Aires, Ciudad Argentina, 2000. BOWN, C. and HOEKMAN, B., WTO Dispute Settlement and the Missing Developing Country Cases: Engaging the Private Sector, in JIEL, v8, n4, 2005. BOWN, C., Developing Countries as Plaintiffs and Defendants in GATT/WTO Trade Disputes, TWE, v27, n1 2004. BRODY, P. M., Protection of Geographical Indications in the Wake of TRIPs: Existing United States Laws and the Administration‟s proposed Legislation, in 84 TR 520, 1994. BULLBROOK, J., Geographical Indications within Gatt, in 7 JWIP 2004. CORTES MARTIN, J.M., The WTO TRIPs Agreement – The Battle between the Old and the New World over the Protection of Geographical Indications, in 7 JWIP 2004. DRAHOS P., The Bilateral Web of Trade Dispute Settlement, Retrieved [February 21, 2010] from the World Wide Web: http://www.twnside.org.sg. DEVUYST, Y. and SERDAREVIC, A., The World Trade Organization and Regional Trade Agreements: Bridging the Constitutional Credibility Gap, 18 Duke J. of Comp. & Int'l L. 1 ECHOLS, M.A., Geographical Indications for Food, TRIPs and the Doha Development Agenda, in 47 Journal of African Law, 2003. EVANS, G.E. and BLAKENEY, M, The Protection of Geographical Indications after DOHA: QUO VADIS?, in 9 JIEL 2006. FORSYTHE L., KEMP D., Trademarks and Geographical Indications: A Case of California Champagne, 10 Chap. L. Rev. 257, 2006. Retrieved [January 16, 2010] from the World Wide Web: http://www.lexis-nexis.com. 331 ________________________________________________________________________________ Sofia Rodriguez-Moreno HOEKMAN, B.; KOSTECKI, M., The Political Economy of the World Trading System, New York: Oxford University Press, 2001. HUGHES, J. Champagne, Feta, and Bourbon: The Spirited Debate about Geographical Indications, in 58 Hastings L.J. 299, 2006. Retrieved [January 16, 2010] from the World Wide Web: http://www.lexis-nexis.com. LAWRENCE, R., Crimes and Punishments? Retaliation under the WTO, Washington, Peterson Institute for International Economics, 2003. LUCARELLI, G. and GAMA, J., Considerations of the Mercosur Dispute Settlement Mechanism and the Impact of its Decisions in the WTO Dispute Resolution System, CEBRI Papers, CEBRI- Brazilian Center for International Relations, Volume 4, Year I, 2006. MARTINEZ-GUTIERREZ, A., La tutela comunitaria de las denominaciones geográficas. Conflictos con otros signos distintivos, Atelier, Barcelona, 2008. MADRID, L.A., Negociaciones de Propiedad Intelectual en el TLC con EEUU: Proceso, Resultados y Algunos Mitos, Bogota, Universidad Sergio Arboleda, Retrieved [December 9, 2009] from the World Wide Web: http://www.usergioarboleda.edu.co O‘CONNOR B., The Law of Geographical Indications, Cameron May, London. 2004 (PRIV 3873). O‘CONNOR, B. and DJORDJEVIC, M., Practical Aspects of Monetary Compensation: The US - Copyright Case (March 2005), in JIEL, Vol. 8, Issue 1, 2005. K. KWAK and G. MARCEAU, Overlaps and Conflicts of Jurisdictions between the World Trade Organization and Regional Trade Agreements, in Regional Trade Agreements and the WTO Legal System, Edited by L. BARTELS and F. ORTINO, Oxford University Press, Oxford, 2006. PALMETER, D. and MAVROIDIS, P., Dispute Settlement in the World Trade Organization, United Kingdom, Cambridge University Press, 2004. PACHON MUNOZ, M. and SANCHEZ AVILA, Z., El régimen andino de la propiedad industrial, Bogotá, Ediciones Jurídicas Gustavo Ibáñez, 1995. RUBINO, V. Le denominazione di origine dei prodotti alimentari, Alessandria, Editrice Taro, 2007. RINCON CARDENAS, E.; SANTAMARIA ARIZA, E.; CALDERON VILLEGAS, J., El Tratado de Libre Comercio, la integración comercial y el Analysis of the Geographical Indications in the US-Colombia FTA and Choice of Forum in Adjudicating a Geographical Indication‟s Dispute ___________________________________________________________________ 332 derecho de los mercados, Bogotá, Universidad Colegio Mayor de Nuestra Señora del Rosario, 2007. RAMIREZ, J., Temas no Comerciales en la negociación comercial entre Colombia y Estados Unidos, Santiago de Chile, Naciones Unidas, 2005. RICOLFI, M., “Geographical Symbols in Intellectual Property Law: the Policy Options“, in Shutz Von Kreativität Und Wettbewerb, Festschfirft Für Ulrich Lowenheim, ZUM 75. GEBURTSTAG, 2009. SHERZOND, S., Retaliation in the WTO Dispute Settlement System, Volume 19 GTL, Kluwer Law International, 2009. SCHÜSSLER, L. Protecting „Single-Origin Coffee‟ within Global Coffee Market: The Role of Geographical Indications and Trademarks, in TECJILTP, 10(1), 2009, 149ff. at 150. Retrieved [December 9, 2009] from the World Wide Web: http://www.esteyjournal.com SCHOTT, J., ―Trade relations between Colombia and the United States‖ Volume 79, Policy analyses in international economics, Peterson Institute, 2006. VIVAS-EUGUI, D., Negotiations on Geographical Indications in the TRIPs Council and their Effect on the WTO Agricultural Negotiations – Implications for the Developing Countries and the Case of Venezuela, in 4 The Journal of World Intellectual Property 2001. ZARAMA J.A., Las Indicaciones Geográficas en el TLC firmado por Colombia y Perú con los Estados Unidos frente al TLC firmado con Chile, (El problema de la desprotección de las Denominaciones de Origen)”, in 7 REM (1), Universidad Externado de Colombia, Retrieved [December 9, 2009] from the World Wide Web: http://www.emercatoria.edu.co, 24. GEOGRAPHICAL INDICATIONS: A REVIEW OF GI PROTECTION IN SWITZERLAND by Larissa Thommen INTRODUCTION The protection of geographical indications (GIs) has long been the untended patch of the intellectual property law garden. That is not to say that this branch of intellectual property law has withered. However, the use of GIs as a means of protecting intellectual property has not enjoyed the some broad support as trademarks (TMs) or copyrights. This situation is now changing.1 Europe has a long history of protecting GIs which have existed for hundreds of years. So in Yugoslavia, as early as 1222, a Charter of Steven I governed the sale of wine. So-called ―guild marks‖ were a common means indicating the geographical origin of products in Middle Ages. Murano glass from the island near Venice, Italy is an example of those that remain common today. Marks indicating the geographical origin of goods were the earliest type of TMs, taking into account that the products of particular regions having special quality and some features were more saleable. Climate, geology, indigenous raw materials, food processing techniques local to a region also as manufacturing skills were by those features identifying the quality of goods creating their distinctiveness. The evolution of general marks associated with a region to the specific ―trade‖ marks that apply to the products of individual manufactures, has not resulted in the disappearance of geographical marks. This is particularly so in Europe where substantial processed food markets and markets for alcoholic beverages are dependent upon the continued recognition of GIs.2 Like TMs or commercial names, GIs are distinctive signs with permit the identification of products on the market. If they are used in the proper way and are well protected; they can become an effective marketing tool of great economic value. GIs indeed convey the cultural identity of nation, religion or specific area. They make it possible to add value to the natural riches of country and to the skills of its population, and they give local products a distinguishable identity.3 1, 2 B. O‘CONNOR, The Law of Geographical Indications, Cameron May Ltd, London, 2004, 1 ff., at 21-22. 3 F. ADDOR, A. GRAZIOLI, Geographical Indications Beyond Wines and Spirits. A Roadmap for a Better Protection for Geographical Indications in the WTO/TRIPs Agreement, in JWIP 2002, 865 ff., at 865 334 Geographical Indications: A Review of GI Protection in Switzerland ________________________________________________________________________________ Starting from a review of the current protection of GIs at the international level and at the Swiss level, the purpose of this paper is to analyze how the current reform of the Swiss legislation and the proposed enhanced protection for the‖Swissness‖ concept fit in the overall debate on the protection of unique products, whose quality and/or reputation is due to their geographical origin. 1. GENERAL PROTECTION OF GEOGRAPHICAL INDICATIONS (GIs) 1.1. What are Geographical Indications? A GI is an expression with a ―place-goods‖ connection with permits the producers of products or offers of services of certain geographical region to claim a right in such region. A GI, therefore, is a broad term which refers to any type of expression which connotes a geographical origin of particular product.4 GIs, however, do not protect products or methods of production as such, but rather confer to all producers from a given geographical area the exclusive rights to use a distinctive sign identifying their products. In case of properly using of GIs and also if it is well protected, they can receive worthwhile marketing tool, as they enable the producers to convey the considerable information to the consumers. Even though the Paris Convention for the Protection of Industrial Property does not provides explicitly the expression of GIs, but the new standard global definition of GIs is found in the WTO TRIPs Agreement of 15 April 1994, Art. 22 (1), which states: ―GIs are, for the purpose of this Agreement, indications which identify a good as originating in the territory of a member or a region or locality in that territory, where a given quality, reputation or other characteristic of the good is essentially attributable to its geographical origin‖.5 The TRIPs definition of GIs includes also Appellations of Origin (AOs), since the Lisbon Agreement limits AOs to the criteria of quality or characteristics of a product attributable to its geographical origin, whereas the TRIPs mentions also the reputation of the product. Although, the definition of GIs is similar to the definition of AOs that given in the Lisbon Agreement, but it does not cover all GIs. Following the wording of Article 22 (1) of TRIPs, not all types of GIs are covered there being further requirements in relation to goods. However, protection is also granted to places not known in other countries or by consumers. Services are not cover by this wording.6 4 C. LACKERT, Geographical Indications: What does the WTO TRIPs Agreement Require?, in TMW 1998, 22 ff., at 22 5 Agreement on Trade-Related Aspects of Intellectual Property Rights, Apr. 15, 1994, Marrakesh Agreement Establishing, the World Trade Organization, Annex 1C, Legal Instruments-Resultants of the Uruguay Round, 33 I.L.M. 1197 (1994) [hereinafter TRIPs Agreement]. 6 M. BUNDI, Swiss Trade Marks Practice on Misleading Geographical Indications, in JIPLP 2008, 262 ff., at 264 Larisa Thommen 335 ________________________________________________________________________________ 2. The Concepts of Indications of Source (ISs) and Appellations of Origin (AOs) There are two multilateral Agreements concerning ISs: the Paris Convention of 20 Mach 1883 for the Protection of Industrial Property7 and the Madrid Agreement of 14 April 1891 for the Repression of False or Deceptive Indications of Source on Goods8 which do not define the term IS. Nevertheless, Art. 1(1) of the Madrid Agreement contains elements clarifying that are meant by this term: ―All goods bearing a false or deceptive indication by which one of the countries to which this Agreement applies, or a place therein, is directly indicated as being the country or place of origin shall be on importation into any of the said countries.‖ Based on this, an IS can be defined as: Any expression or sign used to indicate that a product or a service originates in a country, region or a specific place, without any element of quality or reputation.9 This distinguishes them from GIs. However, like GIs, ISs relate to the geographical area from where the product originates and not to another type of origin such as the product manufacturer, as for TMs. IS can be words that directly indicate the origin of the product such as the name of countries or of regions, and cities therein. Also it can be in another written figurative form, symbols, emblems that call up to the geographical origin of the product indirectly – the name of ―William Tell‖ for Swiss products or the ―Eiffel Tower‖ for products from region of Paris. AO is a term used in Art. 1(2) of the Paris Convention and identifying in Art. 2 of the Lisbon Agreement for the Protection of AOs as follow: ―Appellation of Origin means the geographical name of a country, region or locality, which serves to designate a product originating therein, the quality or characteristics of which are due exclusively or essentially to the geographical environment, including natural and human factors.10 Three elements constitute the notion: 7 Paris Convention for the Protection of Industrial Property of 20 March 1883, as revised at Brussels on 14 December 1900, at Washington on 2 June 1911, at The Hague on 6 November 1925, at London on 2 June 1934, at Lisbon on 31 October 1958, and at Stockholm on 14 July 1967, and as amended on 28 September 1979, 21 U.S.T. 1583, 828 U.N.T.S. 305, [hereinafter Paris Convention] 8 Madrid Agreement for the Repression of False or Deceptive Indications of Source on Goods of 14 April 1891, Act revised at Washington on 2 June 1911, at The Hague on 6 November 1925, at London on 2 June 1934, and at Lisbon on 31 October 1958, Additional Act of Stockholm of 14 July 1967, 828 U.N.T.S. 168, [hereinafter Madrid Agreement] 9 F. ADDOR, A. GRAZIOLI, Geographical Indications Beyond Wines and Spirits, supra at note 3, at 867. 10 Lisbon Agreement for the Protection of Appellations of Origin and their International Registration of 31 October 1958, as revised at Stockholm on 14 July 1967, and as amended on 28 September 1979, 923 U.N.T.S. 205, [hereinafter Lisbon Agreement] 336 Geographical Indications: A Review of GI Protection in Switzerland ________________________________________________________________________________ appellations must be direct geographical names; appellation must serve as a designation of geographical origin of the product; quality and characteristics exhibited by the product must be essentially attributable to the designated area of geographical origin. This is similar to GIs, but the definition of AO has higher requirements with regard to the following two main points. First, for AOs, mere ―reputation‖ of the products is not sufficient to get protection by an AO; specific qualities or characteristics need to be expressed in the particular product. Second, AOs must be direct geographical names of countries, regions or localities; mere symbols or emblems evoking indirectly a geographical origin are nor sufficient.11 3. PROTECTION OF GEOGRAPHICAL INDICATIONS AT THE INTERNATIONAL LEVEL As present below, there are 3 multilateral agreements relating to the protection of GIs and relatedconcepts in addition to the TRIPs. The Paris Convention for the Protection of Industrial Property The Paris Convention for the Protection of Industrial Property (Paris Convention) of 1883 was the first international agreement relating to the protection of GIs. Art. 10(1) of the Convention provides for the certain remedies in respect unlawful use of ISs on goods, meaning that no ISs may be used if it refers to a geographical area from which the products in question do not originate. It does not mention AOs expressly; however, they are covered by the term ISs as all AOs are considered of the source of goods. The basis for protection against misleading ISs, including AOs is given in Article 11bis and it obliges members to provide protection against unfair competition containing a non-exhaustive list of acts, which are to be prohibited. The Paris Convention does not provide for any special remedies against infringement of this provision. The Madrid Agreement for the Repression of False or Deceptive Indications of Source on Goods The Madrid Agreement for the Repression of False or Deceptive Indications of Source on Goods (Madrid Agreement) of 1891 was the first multilateral agreement providing specific rules for the repression of false and deceptive ISs and did not add much to the protection already given by the Paris Convention, but it extended protection to the deceptive ISs in addition to false indications, which can 11 F. ADDOR, A. GRAZIOLI, Geographical Indications Beyond Wines and Spirits, supra at note 3, at 868. Larisa Thommen 337 ________________________________________________________________________________ be the true name of place where the good originates from ,but nevertheless confusing the purchaser in respect to the true origin and quality of the good. The Lisbon Agreement for the Protection of Appellations of Origin and Their International Registration The Lisbon Agreement for the Protection of Appellations of Origin and Their International Registration gives a proper AO definition reflecting two basis requirements for an AO to be protected: the AO should be protected in its country of origin, and the AO should be registered in the International Register of WIPO In accordance with its terms, countries are free to adopt its own system for AOs designating by juridical and/or administrative decision. Protection against all usurpation or imitation, including cases there the true origin of a product is indicated or where the AO is used in translated form or accompanied by terms such as: ―kind‖, ―type‖, ―make‖, ―imitation‖ or ―like‖ stipulated in Art.3. Once registered, it is protected in other contracting parties and they have to protect the AO, to which international protection was required, except if a contracting party declares, within a period of one year that it can not ensure the protection for a certain application. There are no specified grounds for refusal to names in the Agreement. The duration of the protection by international registration is the same which given in the country of origin of AOs and therefore no requirements for international renewal. The TRIPS Agreement on the Protection of Geographical Indications A specific section of the WTO TRIPs Agreement is dedicated to GIs. It is the first multilateral text dealing with GIs as such and may be rightly considered an important first step in this difficult field. Given its groundbreaking nature, this section of the Agreement begins with a definition of what constitutes a GI. This should be welcomed because definitions are crucial to distinguish GIs from the notion of IS and that of AO. At first glance Art. 22 (1) resembles Art. 2 of the Lisbon Agreement, yet it differs from Lisbon on a number of points: (1) AO under the Lisbon Agreement are necessarily geographical names of a country, region, or locality, while GIs under TRIPs are any indication pointing to a given country, region or locality; (2) AO under Lisbon designates a product, while a GI under TRIPs identifies a good; (3) Lisbon limits appellations to the quality or characteristics of a product, while TRIPs also mentions its reputation; (4) finally, AOs refer to a geographical environment, including natural and human factors, while TRIPs uses a more general concept of "geographical origin".12 Art. 22 provides the basis framework for GIs establishing the minimum scope of protection and is limited if the public misled concerning real geographical origin of goods or 12 D. Cervais, The TRIPS Agreement: Interpretation and Implementation, in EIPR 1999, 156 ff., at 158. 338 Geographical Indications: A Review of GI Protection in Switzerland ________________________________________________________________________________ if it constitutes acts of unfair competition. Moreover, Art.22 does not prevent the use of GIs in translation or accompanied by a ―de-localizer‖.13 Additional Protection for Geographical Indications for Wines and Spirits Art. 23 of TRIPs provides stronger protection than does Art. 22 for GIs used in respect of wines and spirits. In this regard, member countries are required to provide interested parties with the legal means to prevent the use of a GI for wines or spirits not originating in the place indicated by the GI. The most relevant reasons that GIs for wines and spirits deserve stronger protection under Art. 23 of the TRIPs are their reputation. Long time ago, wines and spirits from particular regions have acquired reputation thanks to their qualities. Unlike Art. 22, under this provision no requirement that the use of the GI is misleading in order to be enforceable, except in relation to the registration of TMs containing a GI for wines and spirits. Furthermore, use of a false GI for wines and spirits will be prohibited even where the true place of origin is indicated or is accompanied by terms such as ―kind‖, ―type‖ or ―style‖. This provision has a purpose to balance between the producer concerns from misappropriation of the products and consumer expectations excluding the trickery regarding wines and spirits. International Negotiations, Exceptions. In general, Art. 24 of the TRIPs provides exceptions that limit Art. 22 and 23. Based on Art. 24(4), continued and similar use of a GI in respect of wines and spirits by other parties in the member countries for 10 years prior to the enactment of the TRIPs is permitted. This means that, even though Art. 23 specifically provides greater protection for wines and spirits, but under Art. 24(4), the protection is limited to the use after entering the TRIPs into force. Another exception is Art. 24(5) dealing with the relationship of GIs to TMs. With respect to the registration of TMs, a TM registered in good faith before the enactment of the TRIPs remains valid and a TM consisting of a GI is valid if the GI has not yet been registered in its country of origin. A further possibility of international protection of GIs is the conclusion of bilateral and/or regional agreements specifying a kind and lists of GIs protected by the contracting parties. Although, the scope of protection remains de minimis and often limited to specific products such as wines and/or spirits. 4. PROTECTION OF GEOGRAPHICAL INDICATIONS AT THE NATIONAL LEVEL There are a few forms of protection of GIs at the national level: Special Title of Protection, Registration of Collective Marks or Certification Marks, and the Law 13 M. VITTORI, The International Debate on Geographical Indications (GIs): The Point of View of the Global Coalition of GI Producers-oriGIn, in JWIP 2009, 1 ff., at 4 Larisa Thommen 339 ________________________________________________________________________________ of Unfair Competition (Passing-Off) or the TM Law developing locally and is limited by the territory of its jurisdiction. Therefore it is impossible to secure protection of domestic geographical symbols abroad by means of domestic legislation alone: international cooperation is indispensable. Domestic provisions may be fashioned in such a way as to optimize the possibility of extension abroad of domestic protection. Conversely, domestic rules may be fashioned in a way which is art to minimize the rate of access of foreign GIs to domestic market. While welfare-economics considerations as to the comparative efficiency of the different solutions may be to a certain extent be taken into account in this lawmaking process, they are not likely to be decisive for the ultimate choice.14 4.1. Unfair Competition Under the Unfair Competition Law principles, in order to be protected, a given GI must have acquired a certain reputation or goodwill. In other words, consumers must associate the GI with the place of origin of its products or services. Furthermore, it is required that the use of a certain GI on goods or services not originating from the geographic area is misleading, so that consumers are deceived against the true place of the product or service. In this regard, proof of damages caused by such misleading practices is required. In order to be protected under the Law of Unfair Competition, a GI should have a reputation. Therefore, a GI which does not have an established reputation yet in the market, may not be protected by the Law of Unfair Competition. Yet, a GI which has not been used for a certain time may lose its reputation and may no longer be protected under Unfair Competition Law principles. Under the TM Law, a GI may be protected by refusing or invalidating TMs that consist wholly or partly of a GI which misleads consumers about the real geographic origin of the goods. This kind of protection may be accorded in members countries pursuant to Article 22(3) of the TRIPs Agreement. Protection accorded to GIs following a lawsuit based on unfair competition is only effective between the parties to the procedure. The entitlement to protection of a given GI shall be demonstrated every time enforcement is sought. 4.2. Trademarks, Certification Marks and Collective Marks Most TM Laws, in general, prohibit the registration of a geographical name because considered descriptive. However, under certain conditions, a geographical name can be registered as a TM, for instance, if it has acquired a ―secondary meaning‖. If this is not the case, GI producers have often been forced to seek a limited protection - for their logo only - via a figurative TM registration. In addition, experience shows that some IP Offices regularly reject registration 14 M. RICOLFI, Geographical Symbols in Intellectual Property Law: the Policy Options, in Festschrift für Ulrich Loewenheim zum 75. Geburstag, Schutz von Kreativität und Wettbewerb, C.H.Beck, Munich, 2009, 321 ff., at 244 340 Geographical Indications: A Review of GI Protection in Switzerland ________________________________________________________________________________ requests from producers on the grounds that GI names are: a simple indication of the place of origin of the goods (i.e. an IS) and/or a generic name. GIs are often protected via a Collective or a Certification Mark when such legal concepts exist and which usually depend on the applicable national law. They may serve to indicate the origin of goods or services, thus to some extent they may be suitable for the protection of GIs. A Collective Mark is a mark which may be only used by members of a collective body: associations, cooperative manufacturers, producers, traders. The Collective Mark is owned by the association which exclusively grants its member to use it and is governed by rules, which has to be submitted to the IP Office together with the application for registration. Once a GI has been registered as a Collective Mark, the association has the right to prohibit its use by not member of the association. However, the registration of a GI as a Collective Mark may not prevent the mark from becoming a generic term. Yet, this system contains requirements of the use which may be subject to the cancellation of registration, when the Collective Mark is not continuously used. On the contrary to Collective Marks, Certification Marks are not owned by a collective body such as an association of producers, but by a certification authority. Such an authority may be a local council or an association or a commission which is not engaged in the production or the trade of the product concerned. In this regard, the owner of Certification Marks must ensure that the goods bearing the Certification Mark pose a certified quality. The geographical character of the symbol is not nor an obstacle to the registration of Collective and Certification TMs. The reason for this rule, much more liberal than the opposite one applicable to individual geographical TMs, are quite straightforward. Once the business located in a certain area has set up the organization registering the TM and are in principle entitled to obtain an authorization to use the same, there is no risk that competitors are disadvantaged or consumers deceived.15 4.3. Sui generis System In countries where there is a sui generis system which provides for the registration of GIs, producers do not encounter major difficulties in protecting their IPRs on their name. It is much more difficult, monetary and time costly for GI producers to rely on unfair competition and consumer protection acts, passing off actions or the TM regime. The EU has come up with a third sui generis option for protection of geographical symbols, which is provided by regime initially set up by Reg. No 2081/1992 and later refurbished by Reg. No 510/2006. Under EU law, access requirements to GI protection are rather low. This is immediately apparent. Indeed, Art.2 (1) (a) of Reg. No 510/2006 protects as designation of origin only agricultural 15 M. RICOLFI, Geographical Symbols in Intellectual Property Law: the Policy Options, supra at note 14, at 234 Larisa Thommen 341 ________________________________________________________________________________ products which at least in principle are unique, as ―the quality or characteristics of which‖, according to this provision, ―are essentially or exclusively due to a particular geographical environment with its natural and human factors‖.16 The Regulation 510/200617 sets out provisions on agricultural products and foodstuffs (excluding all wine-sector products, except wine vinegar) from a defined geographical area. If there is a link between the characteristics of certain products and their geographical origin, they may qualify for either a protected geographical indication (PGI) or a protected designation of origin (PDO) and they are different. The PDOs cover the term used to describe foodstuffs which are produced, processed and prepared in a given geographical area using recognized know-how (such as Mozzarella di Bufala Campana).The PGIs indicate a link with the area in at least one of the stages of production, processing or preparation (such as Turrón de Alicante). Therefore, the link with the area is stronger for PDOs. Generic names, that have become common names for a product even though they refer to a geographical region, can not be granted PDO or PGI status. No exhaustive list of generic exist and they are defined only when a producer group attempts to register such names.18 According to the Art.13 and 14 of Reg. 510/2006 the product is protected against any practice liable to mislead the consumer as to the true origin of the product, for example: any direct or indirect use of the registered name by a product not covered by the registration or by any misuse or imitation not only in a language of the application but also in translation. Several countries have ex officio protection, where the public authorities can intervene without being asked to. Such countries are geographically closed to the EU (exl: Switzerland). Also some countries have an ex officio protection but with a limited scope (Japan for liquors, Chile for wines and spirits GIs), as a result of the bilateral agreement signed with the EU. Such countries, as Algeria, Tunisia and Mauritius, have ex parte and ex officio protection available at the request of the competent authorities, for example governmental bodies and GI groups, that however, difficult to know how often and how well the controls are made. In general, the EU legislation is perceived as the model for the protection of GIs by third countries. The scope of the protection offered in the EU, in particular the ex officio protection, is therefore of high importance to these countries. Over the past years more and more countries around the world have established sui generis systems for GI protection. This process in ongoing and will certainly facilitate the protection of GIs around the world demonstrating the fact 16 M. RICOLFI, Geographical Symbols in Intellectual Property Law: the Policy Options, supra at note 14, at 340 17 Council Regulation (EC) No 510/2006 of 20 March 2006 on the Protection of Geographical Indications and Designations of Origin for Agricultural Products and Foodstuffs, 1 ff. 18 T. Josling, The War on Terroir: Geographical Indications as a Transatlantic Trade Conflict, in JAE 2006, 337 ff., at 345 342 Geographical Indications: A Review of GI Protection in Switzerland ________________________________________________________________________________ that countries recognize the need for a specific GI protection system that coexists with TM regimes. 5. GEOGRAPHICAL INDICATIONS AND TRADEMARKS: COEXISTENCE AND POTENTIAL CONFLICTS Although GIs and TMs represent different spheres of distinguishing marks, the efforts to protect them sometimes create conflicts. Such conflicts arise between TMs and PGIs for identical/similar products containing the same sign. Nevertheless, it is difficult determining who should have the right to use that sign as TM or GI. The question whether exclusivity of a registered TM trumps a laterin-time PGI is also of great significance. The conflicts that arise can be settled from either a TM perspective or a GI perspective and depending on which perspective is used, conflicts will be dealt with differently. It is, basically, a matter of either granting exclusive rights to either the TM or the GI according to a ―first-in-time, first-in-right‖ scheme, or granting the GI exclusive rights, without taking possible prior TMs into account, or prescribing a co-existence of the TM and the GI. TRIPS deals with these conflicts by prescribing that previously registered TMs containing a PGI can be invalidated, under certain circumstances. Such circumstances include the situation when the use of a TM ―is of such a nature as to mislead the public‖ about the origin of the goods carrying it. The burden of proof lay on the producer claiming that an illegitimate use of the GI is taking place. But if the GI relates to wine or spirits, no proof regarding risk of misleading is needed; the TM shall be invalidated anyway. Nonetheless, a TM will prevail, even though it is ―identical‖ or ―similar‖ to the GI if it is registered or applied for in good faith, before a certain time, or if rights to it have been acquired through use.19 Moreover, Art 22 TRIPs allows for the use of a GI by producers from outside the designated geographical area, provided that such a use is accompanied by a corrective label. Such a label discloses the true origin of the good, thus disclosing that it is another than what is actually indicated by the GI that the good carries. The position of TRIPs is that corrective labels prevent consumers from being misled about the actual origin of the good. By identifying the true origin, the GI can be legitimately used on the good, even though it originates from elsewhere.20 However, corrective labels cannot be used on wines or spirits, according to Art 23 TRIPs. It is further noted that Reg. No 510/2006 proscribes the use of corrective labels – a prohibition which thus applies to corrective labels on agricultural products. 19 M. BLAKENEY, Proposal for the International Regulations of Geographical Indications, in JWIP 2001, 641 ff., at 64320 D. Rangnekar, Demanding Stronger Protection for Geographical Indication: The Relationship between Local Knowledge, Information and Reputation, UNU-INTECH, Netherlands, 2004, 1 ff., at 13 Larisa Thommen 343 ________________________________________________________________________________ Conflicts will at times also be settled in direct favor of the TM. So Parma Ham is a PGI within the EU, but cannot be used as GI in Canada or Mexico. A prior Canadian TM registration of the very same connotation renders such use impossible. Often, countries in support of more limited GI protection measures use TM Law as the vehicle for protection, which involves a ―first-in-time, first-inright‖ resolution of conflicts. In such situations, producers of GI labeled goods will be denied the right to use that GI as a direct result of the principle of priority. Furthermore, TM Law itself sometimes hinders producers of GI labeled goods to use the GI relating to the goods. Since GIs commonly entail geographical references, such as names of regions or cities, they cannot be registered under TM Law since such names are in nature descriptive. 6. PROTECTION OF GIs IN SWITZERLAND21 6.1. General Legal Framework Switzerland has a long tradition, since 19th century, for protecting GIs for all goods and services. Until the adoption of special rules for the registration of GIs for agricultural products in 1997, legal protection for agricultural GIs was exclusively granted under the Federal Law on the Protection of Trademarks and Indications of Source22 providing general protection. Under this law, protection of GIs is granted automatically, without a formal notification/registration procedure, provided that certain conditions are satisfied. In addition to the protection granted by the TM Law, producers of agricultural products have, since 1997, the possibility of entering their GIs in a national registry. The first GI for such products was registered in January 2000. The Ordinance23 on PAOs and PGIs distinguishes two different types of GIs, the Appellation d‟origine contrôle (AOC/PAO) and the Indication géographique protégée (IGP/PGI). The AOC constitutes the name of a place, region, or traditional denomination that is used to designate an agricultural product whose quality and character draw essentially or exclusively from the nearby geographical environment, including both human and natural factors. Some products had successfully completed AOC registration, including for the most part cheeses, spirits, bakery products and other products of vegetable origin. 21 Part II prepared on the base of the materials published by Swiss State Institute of Intellectual Property: www.ige.ch 22 Federal Law on the Protection of Trademarks and Indications of Source adopted on 28 August 1992 (Status as at 1 August 2008), 1ff. 23 Ordinance on the Protection of Appellations of Origin and Geographical Indications in Respect of Agricultural Products and Processed Agricultural Products adopted on 28 May 1997 (Status as at 1 January 2008), 1 ff. 344 Geographical Indications: A Review of GI Protection in Switzerland ________________________________________________________________________________ The IGP concept is based on a slightly weaker linkage between the product and the territory of origin. This concept applies to products for which the quality, reputation or other characteristic may be attributed to the region or place of origin. So some products have enjoyed IGP protection, including for the most part meats and sausages. The most relevant laws are the TM Law and Ordinance on the Protection of AOs and GIs in respect of Agricultural Products and Processed Agricultural Products. Also, GI protection in Switzerland extends widely to imitations; fallacious indications; misleading packaging; translations; abusive labeling such as ―like‖, ―type,‖ ―according to the recipes‖; as well as ―other recourses to the distinctive shape of the product‖ even if the true origin of the product is identified. Registration of the AOC or IGP is not an easy process. Such applications undergo a thorough review by the Swiss authorities. Currently, six cheese products, five meat products, one plant-based product, two alcohol-based products, and one forestry product are undergoing evaluation. Also under the Swiss law, foreign GIs are granted the same protection as Swiss GIs. Thus, foreign GIs may benefit from the general protection provided by TM Law and may apply for AOC or IGP registration under Ordinance. 6.2. Specific Protection for Agricultural Products and Processed Agricultural Products The ordinance on the protection of AOs and GIs for agricultural products and processed agricultural products of 28 May 1997 establishes a register at the federal level for PAOs and PGIs for agricultural and processed agricultural products except wines. This includes all foodstuffs from the agricultural sector, the main categories being dairy products, fresh meat, salted, smoked and cold cooked meats, fruit, vegetables and other crops, processed products and spirits. Manufactured products and wines can not be registered. Under the terms of this ruling, the commercial use of PAOs and PGIs is prohibited for all comparable products which do not meet the specifications as well as any other non-comparable product if it exploits the reputation of the protected indication. 6.3. Specific Protection for Wines Wine appellations are protected under Ordinance on Viticulture and the Importation of Wine from 7 December 199824 defining the AOC, the country wines and the table wines. At the federal level, the Federal Office of Agriculture maintains a register of the Swiss AOCs, which is based on the cantonal AOCs publishing at regular intervals. At the cantonal level, no similar register exists, but there is a land registry of wine producing zones which describes among others the specific properties of the vineyard and the AOC authorized for the designation of 24 Ordinance on Viticulture and the Importation of Wine adopted on 7 December 1998, last amended on 13 April 2005 (Status as of 17 May 2005), 1 ff. Larisa Thommen 345 ________________________________________________________________________________ the wine stemming from a given wine-growing area. The cantons have own legislation on AOs. They have issued regulations on the use of the AOC designation and defined the production areas as well as the authorized blends. The cantonal legislations include additional conditions to those set out in the federal wine ordinance. As the production areas are clearly delimited, wine producers within a given geographical zone have the right to use the AOC in question, provided the quality criteria is met. 6.4. Specific Protection for Swiss-Watchers When we think watch, we think Swiss, which label confers a certain status in the marketplace. What is exactly a Swiss watch? A ―Swiss Made‖ watch is not necessarily made entirely in Switzerland. In accordance with Ordinance 1971, modified in 199525 and which was issued by Federal Council based on the TM Law: a watch may legally bear the label ―Swiss‖ or ―Swiss Made‖ if it has a Swiss movement is cased up in Switzerland, where the manufacturer must have carries out its final inspection. Furthermore, components of Swiss manufacture must account for at least 50% of the total value-not number of parts-exclusive of assembly costs. But with watchmakers importing an even-increasing of parts, the Federal Council announced that it intended to tighten the legal definition of ―Swiss Made‖ applicable to all products, including horological. Proposed legislation would raise the value threshold to 60%. The Federal Council may define the conditions under which a Swiss IS may be used for certain products if it is in the best interests of Swiss economy or particular sectors like this was done in the case which defines the Swiss watch. 6.5. Bilateral Treaties for the Protection of GIs The seven bilateral treaties on protection of GIs and AOs were concluded between Switzerland and European countries (Germany, Socialist Republic of Czechoslovakia, France, Spain, Portugal, and EU). The names of countries and cantons are granted absolute protection. The protection of the designation ―Switzerland‖ is therefore not limited to certain types of product or goods. This may include all industrial products, such as watches, chocolate, textiles, etc., as well as natural products, such as wines and agricultural products. However, there is a general provision preventing use of ISs which mislead the public. These treaties specify that GIs must be used in conformity with the law of the country of origin (re-application of the law of the country of origin). The protection system also prohibits the illicit appropriation of an IS as a TM. Also, an IS can not be transformed into a generic name in the country where it is protected as well as the legislation of the country of origin applies in respect to sanctions. 25 Ordinance on the Use of the Designation Swiss for Watches of 23 December 1971 as last amended on 29 March 1995 (Status as at 1 July 1995), 1 ff. 346 Geographical Indications: A Review of GI Protection in Switzerland ________________________________________________________________________________ 6.6. The Concept of ―Swissness‖ Although according to the criteria of the Madrid Agreement ―made in Switzerland‖ should be a mere IS without any reference to quality, the concept of being ―Swiss‖ indicates to Swiss as well as foreign consumers primarily, associating Swiss products and services with ―top quality‖, as a synonym for innovation, exclusivity, superior services which economic value is clearly recognized. Over 50% of all businesses trading in Swiss products affix a ―made in Switzerland‖ designation and/or the Swiss Cross besides their own TM (cobranding) and more then 40% of business activities would like to use it in the future. Moreover, the use of these is neither standardized nor coordinated because based on the strategy of each individual activity. It is not surprise, that producers are increasingly using or misusing ―Swiss made‖ as marketing tool. This has led to a growing realisation that this valuable asset needs to be carefully preserved and defended. That element of quality is of particular interest and is the reason why it is mention here in a debate on the protection of GIs. 6.1.1. Project Swissness Permanent changing market conditions under impact of globalization and other factors create the strong necessity of amendments in the current legislation. The origin of legislative revision is the increasing illegal use of the IS ―Switzerland‖ and Swiss Cross26 both domestically and abroad. On November 1997 was launched a ―Swissness‖ project under motto: „better protection of designation ―Made in Switzerland‖ and Swiss Cross‖. The Federal Council began the consultation process for the legislation in respect of it. The draft aims at two main goals: firstly, protection for ―Made in Switzerland‖ designations and the Swiss Cross should be strengthened domestically and abroad, secondly, regulations regarding ―Made in Switzerland‖ designations and the Swiss Cross should be formulated more precisely in order to create greater legal certainty and clarity. The Federal Council approved on 18 November 2009 the dispatch for the ―Swissness‖ legislative amendment. The bill strengthens the domestic protection of both the IS ―Made in Switzerland‖ and the Swiss Cross as well as facilitating law enforcement abroad. It thus provides a basis for preserving the value of the ―Swiss‖ TM for the future. The Federal Institute of Intellectual Property is working at full speed on proposed amendments to the legislation .We hope that in the near future this work will be ended and the new legal instruments allow moreover to strengthen the positions of ―Swiss made‖ goods and services domestically and abroad. 26 Federal Law on the Protection of Emblems and the Name of the Red Cross of 25 March 1954, 1 ff. Larisa Thommen 347 ________________________________________________________________________________ 6.1.2. The use of “Swiss” Designation ―made in Switzerland‖ belongs to the public domain available for anyone to use andcan not be monopolized. The conditions for using of ―Swiss‖ for products are defined in the TM Law as follows: the origin of goods shall be determined by the place of manufacture or by the origin of basis materials and components used, at least 50%. The origin of services is defined by the headquarters of the person providing service or by citizenship or the domicile of the persons actually controlling the policies and management of the business. Federal Council can specify such conditions if it is justified by general economic interests or interests of individual sectors, as in case of Swiss-watches. 6.1.3 Enforcement Domestic and Abroad Any person who comes across an illegal use of an IS may demand a restraining order to stop the violation or to impede an imminent violation (Art.55 of TM Law). Illegal use of a IS can said to take place when a third party uses an IS with a product which does not come from the place in question, or applies a PAO to a product which does not satisfy the conditions set out in the specifications. In the latter case, the rightful producers of a PAO or a producer satisfying the official specifications, may request a court to stop the illegal acts. Any person authorized to take action against the illegal use of an IS may request the assistance of the customs office if the case involves imported products. National or regional consumer associations and organizations can take direct legal action. Also any person accused of using an inexact IS or a designation which could be confused with an inexact IS, or of creating a risk of deception by using a name, address or TM in relation to products or services of a different source may be criminally liable. If the offender has acted in a professional capacity, the offence is prosecutable ex officio. So, an importer of products from China affixes a label with his full Swiss address may also be subject to criminal prosecution because he misleads the buyer about the actual origins of the goods. Criminal prosecution is the responsibility of the cantons and it is determined by the codes of criminal procedure at the cantonal level. In addition to the general provisions of the TM Law, Art.172 of the Federal Law on Agriculture,27 lays down specific criminal sanctions in the event of intentional illegal use of a PAO or PGI for agricultural and processed agricultural products, as well as for wines. The Federal Law on Foodstuffs and objects in everyday use28 also specifies criminal punishment for acts which risk misleading the consumer on the origins of products. Since foreign laws differ from Swiss law, also the interpretation and judicature of the international treaties is often vague that makes the prosecution very expensive and uncertain. Although no designation ―made in Switzerland‖ exists in legal sense as 27 Federal Law on Agriculture adopted on 29 April 1998 last amended on 24 March 2006 (Status as of 26 September 2006), 1 ff. 28 Federal Law on Foodstuffs and Everyday Objects of 9 October 1992 last amended on 16 December 2005 (Status as of 20 June 2006), 1 ff. 348 Geographical Indications: A Review of GI Protection in Switzerland ________________________________________________________________________________ well as it is not clear who has a right to enforce it in the foreign courts, such enforcements are rarely attempted. In order to deal with issues regarding effectiveness of the current international regulations, taking into account an increase in the trade the goods which carry unauthorized country names as result of globalization and trade liberalization, Jamaica proposed to open discussions in the forum of the SCT29 for the provision of Art.6ter of Paris Convention to be amended to reflect the protection of these country names, in addition to the other categories of protection already in existence, the widening of the categories of protection considering different factors of such amendment. That has not only for the value of private TMs, but on a country‘s ability to properly protect its IP generally. CONCLUSION GIs, as a valuable commercial instrument, have the capability to acquire a high reputation. For reasons of misappropriation, counterfeiting, misleading, their protection is needed to avoid consumers from deceptions. There are many functions of GIs: as source identifiers, indicators of quality, business interests and an area of IPRs. GIs can be protected nationally and internationally. At the national level, they may be protected by special regulations, under the law of unfair competition, or under the TM law. So, the amendment of current law of Switzerland having ―weaknesses‖ is an example of creating more effective regulation satisfying today‘s requirements. On the contrary to the protection at the national level, at the international level, there are three treaties relating to the protection of GIs prior to the TRIPs Agreement. Since the enactment of the TRIPs, international protection of GIs has become an important issue because GIs are increasingly recognized as marketing tools in the global economy, but …the international rules do not provide in the interested parties with effective legal remedies to stop infringements. As a result unlawful uses of protected names have been increasing over the year.30 With the reality of market globalization, GIs may be used to protect products of certain regions from misappropriation as well as to protect consumers from deceptions. As an area of IPRs, the use of GIs is comparable with the use of TMs. GIs and TMs benefit consumers by providing them with reliable information and assurances of authenticity. They also respond to concerns of certain producers, particularly local communities, more effectively than other IPRs do. Especially rights to control GIs and TMs can be maintained indefinitely and they do not confer a monopoly right over the use of certain information, but simply limit the people who can use a specific symbol. Furthermore, they protect goodwill and reputation acquired by producers over centuries. In this regard, they can serve to maintain traditional heritages and practices. 29 Proposal by Jamaica to WIPO Standing Committee on the Law of Trademarks, Industrial Design and Geographical Indications (SCT), Twenty- First Session , Geneva , 22-26 June 2009 30 M. VITTORI, The International Debate on Geographical Indications (GIs), supra at note 13, at 1 Larisa Thommen 349 ________________________________________________________________________________ Growing interest to the better protection of country‘s names for commercial purposes indicating a geographical provenance as well as given quality or reputation demonstrates the importance of the issues of improvements in the current international and national rules. These changes would ensure the benefits from the more sophisticated, efficient and adequate GI protection for all world community, its value also in the future, that is the potential of debate on protection of GIs. THE PATENT RIGHTS ENFORCEMENT IN CHINA by Feiyu Lei 1. RECOGNISE THE PATENT RIGHTS ENFORCEMENT IN CHINA 2. COMPARATIVE ISSUES BETWEEN CHINESE PATENT CIVIL LAW ENFORCEMENT AND TRIPS 2.1. Introduction 2.2. Jurisdiction, Evidence, Pre-Litigation Injunctions 2.3. Disposal of Goods Confiscated by Court 3. COMPARATIVE ISSUES BETWEEN CHINESE PATENT ADMINISTRATIVE LAW ENFORCEMENT AND TRIPS 3.1. Introduction 3.2. How does Chinese Administrative Law Enforcement Frame comply with TRIPS? 3.3. The Border Enforcement 4. COMPARATIVE ISSUES BETWEEN CHINESE PATENT CRIMINAL LAW ENFORCEMENT AND TRIPS 5. SOME IMPLEMENTATION ISSUES 6. CONCLUSION: HOW TO REINFORCE THE PATENT PROTECTION IN CHINA 6.1. Improve the Patent Administrative Law Enforcement 6.2. Enhance the Assistance of Patent Enforcement 352 The Patent Rights Enforcement in China ________________________________________________________________________________ INTRODUCTION In Recent years, China has attached great importance to IPR Protection, specially the patent protection. The protection level of patent has achieved remarkable results: In 2008, there were 828,328 applications for patent; the third amended patent law of the People's Republic of China1 (hereinafter referred to as the Patent Law) has been adopted on 27th December, the smooth completion of the third amendment of the Patent Law was another milestone in the development of the Chinese patent system which indicated Chinese patent law became more perfect and compatible with international law. In 2008, local IP administrations nationwide received a total of 1,092 patent disputes over infringement and 34 other types of patent disputes2. They investigated and handled 59 cases of counterfeiting patents and 601 cases of passing off others‘ patents.3 The trial of IPR cases continued to make tremendous progress. Courts of law nationwide took 24,406 and resolved 23,518 first-instance IPR civil cases, up 36.52% and 35.2% respectively. Among them, there were 4,074 patent cases, up 0.82%.4 This paper will introduce the civil, administrative and criminal law enforcement of patent rights in China, and put emphasis on discussing how Chinese norms comply with the TRIPS respectively, and also discuss some implementation issues, in the end of the paper, it will give some suggestion on how to reinforce the patent protection in China. 1. RECOGNISE THE PATENT RIGHTS ENFORCEMENT IN CHINA China is a member of WTO, it should commit to implement the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS). As TRIPS provides in the foreword that ―recognizing the underlying public policy objectives of national systems for the protection of intellectual property, including developmental and technological objectives‖, accordingly, we need first know what are the public policy objectives of patent enforcement in China and whether they comply with TRIPS. Article 1 of Patent Law provides the aims of the Law are to protect the legal rights of patentees, to encourage invention-creation, to foster the spreading and application of inventions-creations, to enhance innovation ability, and to promote the development and innovation of science and technology. They are all compatible with TRIPS. Furthermore, the patent rights enforcement is the 1 Which was adopted at the Fourth Session of the Sixth Standing Committee of the National People‘s Congress on Mar 12th, 1984, came into force on Oct 1st, 1990, the third revised at the Sixth Session of the Eleventh Standing Committee of the National People‘s Congress on Dec 27th, 2008. 2 It is the patent administrative enforcement that will be introduced in the following sections. 3 Counterfeiting patents means counterfeiting any unpatented product as a patented product. the 2008 version Patent Law has combined the passing-off and counterfeiting activities into passing-off . 4 See China's Intellectual Property Protection in 2008. http://www.sipo.gov.cn/sipo_English/laws/whitepapers/200904/t20090427_457167.html Feiyu Lei 353 ________________________________________________________________________________ core part of patent system, it guarantees the public police objectives to be achieved, so the patent right enforcement is crucial in a national patent system. For the sake of the above objectives, Article 41 of TRIPS requires the general obligations of enforcement that the member countries should ensure their law provides effective, fair, equitable enforcement procedures. Chinese patent rights enforcement system includes three ways: the civil, administrative and criminal law enforcement. The Patent Law and the Implementing Regulations of the Patent Law5 are the special laws on patent system, they defines patent enforcement apply to the three measures. At the same time, the three measures are regulated in the departmental laws respectively: the civil law enforcement system is regulated by General Principles of the Civil Law6 and the Civil Procedure Code7; the administrative law enforcement system is regulated by the Patent Administrative Enforcement Measures8; the criminal law enforcement system is regulated by the Criminal Law9. There is some relevant Judicial Interpretation of the Supreme People‘s Court to complement the above laws. 2. COMPARATIVE ISSUES BETWEEN CHINESE PATENT CIVIL LAW ENFORCEMENT AND TRIPS 2.1. Introduction Patent right is private property, so civil law in each country should apply to patent civil law enforcement. Civil law enforcement generally refers to actions in civil court.10 Article 42 of TRIPS requires that member countries should make available to right holders civil judicial procedures concerning the enforcement of patent rights. The Civil Procedure Code gives all the civil procedures which s to patent civil lawsuits, Article 60-70 of Patent law regulate further rules to detail it. The civil enforcement of patent in China isn‘t independent or distinct from the enforcement of law in general, which satisfies Article 41(5) of TRIPS. 2.2. Jurisdiction, Evidence, Pre-Litigation Injunctions With respect to the competent courts, the Intermediate People‘s Courts in the CAPITALS of the provinces, autonomous regions and municipalities directly under 5 Which was published on Jun 15th, 2001, first revised on Sep 28th, 2002, second revised on Jan 9th, 2010. 6 Which was adopted at the Fourth Session of the Sixth National People‘s Congress on Apr 12th, 1986, came into force on Oct 1st. 1990, the third revised at the Sixth Session of the Eleventh National People‘s Congress on Dec 27th,2008. 7 Which was adopted at the Fourth Session of the Seventh National People‘s Congress on Apr 9th, 1991, came into force on the same day. 8 Promulgated by the State Intellectual Property Office (SIPO) and came into force since Dec 17th, 2001. 9 Which was adopted at the Second Session of the Fifth National People‘s Congress on Jul 1st, 1979, and revised at the Fifth Session of the Eighth National People‘s Congress on Mar 14th, 1997, came into force on Jul 1st, 1997. 10 C.HEATH, L.PETIE, Patent enforcement worldwide: a survey of 15 countries; writings in honour of Dieter Stauder, Hart Publishing Ltd., Oxford, 2005, at 287. 354 The Patent Rights Enforcement in China ________________________________________________________________________________ the central government and those specially designated by the Supreme People‘s Court have jurisdiction in the first instance of patent infringement cases, and the second instance acts in the Higher People‘s Courts of which the decision is final. The Supreme People‘s Court hears particular and significant case in the whole country. View from practice, the system satisfies the Article 41(2) of TRIPS that requires procedures should be fair and equitable and not be unnecessarily complicated or costly or unreasonable time-limits, since the duration of court proceedings is between 4 and 7 years to receive a final judgment in the patent area as long as it takes in many other Western countries.11 Article 43 of TRIPS regulates the principles of presentation of evidence in civil procedures with which the related regulations of the Civil Procedure Code comply. First, the interested parties (e.g. patentees assert an infringement) must bear the burden of proof for the facts to support their claim or the facts to rebut the claim of the other party.12 Second, article 64(2) of the Civil Procedure Code(CPC) of which provides the court shall investigate and collect the evidences on its own initiative when the party are unable to obtain them themselves because of objective reasons. A special rule called Burden of proof in reverse presented in Article 61 of patent law, which stipulates that in infringement cases relating to invention patents for production processes for new products, manufacturers of identical products must furnish proof that their production processes are different from the patented process.13 It also satisfies Article 34 of TRIPS concerning burden of proof of process patents. Article 50 of TRIPS provides that the judicial authorities shall have the authority to order prompt and effective provisional measures. The Civil Procedure Code and the Patent Law both provide provisional measures definitely. Article 66 of the Patent Law regulates that patentee or other interested party can request the court to adopt measures to order the suspension of relevant acts before any legal proceedings, with the related requirements, providing security, reasonable period, etc. Article 67 of the Patent Law regulates that patentee or other interested party can request the court to adopt measures for preservation of evidence before any legal proceedings, with the related requirements, providing security, reasonable period, etc. The Judicial Interpretation of the Supreme People‘s court on applying law issues concerning the suspension of infringement patent before any legal proceedings14provides more details in applying the pre-action injunction. 11 T.BENDER, How to Cope with China‟s (Alleged) Failure to Implement the TRIPs Obligations on Enforcement,, in JWIP 2006, 230 ff., at 233. 12 C.HEATH,L.PETIE, Patent enforcement worldwide: a survey of 15 countries; writings in honour of Dieter Stauder, supra at note 10, at 299. 13 C.L.LI, Recent Chinese Patent Reform, in JWIP, 2001, 919 ff., at 936. 14 Which was adopted on May 5th, 2001, at the 1179nd Session of the Judicial Committee of the Supreme People‘s Court, and to be effective on Jul 1st, 2001. Feiyu Lei 355 ________________________________________________________________________________ 2.3. Disposal of Goods Confiscated by Court Article 46 of TRIPS provides the requirements related to disposal or destroying of infringement goods by the judicial authorities. Article 118 of section 3 of chapter 6 of General Principles of the Civil Law of P.R.C provides civil liability for infringement of IPRS obliges the party infringing such rights to stop the infringement, to eliminate the ill effects and to pay damages. According to judicial practice, the utilize of elimination of ill effects in patent infringement means the right holder enjoys a claim to the elimination of goods and methods of production that infringe rights if the stop of the infringement action is not sufficient to prevent a repetition thereof.15 The word ―eliminate‖ implicates ―dispose‖ or ―destroy‖ in judicial practice. 3. COMPARATIVE ISSUES BETWEEN CHINESE PATENT ADMINISTRATIVE LAW ENFORCEMENT AND TRIPS 3.1. Introduction What ―Administrative enforcement‖ means in China is not the same as in other countries. It is a system of Intellectual Property Rights with Chinese characteristics while most of the developed countries don‘t adopt it. In China, the courts and specific authorities each have a parallel responsibility for the enforcement of IPRS.16 Right holders have the choice between civil and administrative enforcement which leads to the description of this system as one of ―dual enforcement‖ which is quite common in Asian countries.17 The enforcement of IPRS by means of administrative measures which is very popular amongst Chinese nationals and foreigners.18 This situation isn‘t altered from version 2000 of patent law to version 2008. The administrative enforcement mainly embodies in Article 3 and Article 60 of the Patent Law and the Patent Administrative Enforcement Measures (PAEM).19 The rights of Administrative enforcement of IP in China belong to different competent administrative authorities in every region. The administrative authority for patent affairs under the people‘s governments of provinces, autonomous regions and municipalities directly under the Central Government (hereinafter referred to as ―local IP office‖20) are responsible for the administrative enforcement of patent in 15 L. XIAOHAI, Enforcement of Intellectual Property Rights in the People‟s Republic of China, in 32 IIC. 2001, 141 ff., at 150. 16 L. XIAOHAI, Enforcement of Intellectual Property Rights in the People‟s Republic of China, supra at note 15, at 142. 17 C.HEATH,L.PETIE,Patent enforcement worldwide:a survey of 15 countries;writings in honour of Dieter Stauder, supra at note 10, at 285. 18 L. XIAOHAI, Enforcement of Intellectual Property Rights in the People‟s Republic of China, supra at note 15, at 142. 19 Promulgated by SIPO and in force since Dec 17th , 2001. 20 Although they are called IP office, they are mainly responsible for patent affairs. 356 The Patent Rights Enforcement in China ________________________________________________________________________________ their respective administrative areas.21 Article 60 of Patent Law is the primary article in patent administrative enforcement system, which regulates that the patentee or any interested party may request the administrative authority for patent affairs to handle the infringement dispute, the administrative authority may order the infringer to stop the infringement act immediately if the infringement is established, the decisions of the administrative authority may be judicially reviewed by the court. PAEM regulates details on how the administrative enforcement come into effect, including principles, procedure in handling patent infringement disputes, procedure in mediating a patent infringement disputes, procedure in investigating of passing-off and counterfeiting, investigation and taking of evidence, injunctions, etc. 3.2. How does Chinese Administrative Law Enforcement Frame Comply with TRIPS? The related articles about administrative enforcement in TRIPS are Article 41, 49. (Article51-60 are special requirements related to the border measures, they will be discussed in the following sections.) Article 41 is the general obligations about enforcement of intellectual property rights; the administrative enforcement procedures shouldn‘t violate these obligations. Article 41(2) requires the enforcement procedures shall be fair and equitable, and shall not be unnecessarily complicated or costly, or entail unreasonable time-limits or unwarranted delays. It gives out the ―low cost‖ and ―high efficiency‖ requirements. Concerning the administrative enforcement, many opinions tended to favour administrative enforcement over the courts because this procedure is faster and cheaper.22 So, Chinese administrative enforcement complies with this obligation. Furthermore, administrative competent authorities often play the neutral roles who mediate the parties in the cases. Most of the time the mediation in the cases is an efficient method for each parties. Article 41(4) of TRIPS regulates parties shall have an opportunity for review by a judicial authority of final administrative decision which being called ―judicial review‖ principle. Article 61 of the Patent Law and the related clauses of PAEM regulate if the infringer is not satisfied with the order from patent administrative authority, he may, within 15 days from the date of receipt of the notification of the order, institutes legal proceedings in court in accordance with the Administrative Procedure Law of the People's Republic of China (APL)23, namely if one of the parties does not agree with the authority‘s decision he can file an action against it before the court. APL is the special law on establishing judicial review system to supervise and restrict the administrative authorities in China. So, the judicial 21 As Article 3 of Patent Law regulates, the patent administration department under the State Council (SIPO) is responsible for the patent work throughout the country which include examination applications and grant patent rights, but not for enforcement directly. 22 C.HEATH,L.PETIE,Patent enforcement worldwide:a survey of 15 countries;writings in honour of Dieter Stauder, supra at note 10, at 285. 23 Which is adopted at the Second Session of the Seventh National People‘s Congress on Apr 4th, 1989, came into force on Oct 1st, 1990. Feiyu Lei 357 ________________________________________________________________________________ review of patent administrative enforcement in China complies with Article 41(4) of TRIPS well. Article 49 of TRIPS is the only special clause about the administrative procedures which requires that administrative procedures of which any civil remedy can be ordered as a result shall conform to principles equivalent in substance to those set forth in section 2. The words ―conform to principles equivalent in substance‖ gives the obligation that the administrative procedures must conform to the civil procedures in TRIPS. Although civil and administrative enforcement of patent are different remedy procedures and the competent authorities are different, many procedures and principles of the two systems of China are homologous. The administrative enforcement of patent infringement disputes has many features of ―quasi-judicial‖ which is different from other IPRS administrative enforcement. These features comply with the principles equivalent of civil enforcement, for example, (i)fair and equitable procedures: the basic principles of administrative enforcement regulated in Article 2 of PAEM that the administrative authority shall base themselves on facts and regard the law as the criterion in the conduct of all cases and follow the principles of fair and timely conform to principles of Article 42 of TRIPS; (ii)evidence: the interested parties must bear the burden of proof , and the requested party have the right to defend himself; (iii) injunctions: local IP offices may make the injunctions if the infringement act exist and order the infringer to stop the infringing act immediately. If such proceedings are not instituted and the order is not complied with, local IP offices may approach the people's court for compulsory execution. (iv) Disposal of infringing goods: the Patent Law doesn‘t provide the remedies which described in article 46 of TRIPS explicitly, which only says the administrative authority may order the infringer to stop the infringing act immediately. But the PAEM concretes the measures what the administrative authority can do. Article 33 of PAEM says they may order the infringer to stop the infringing act immediately, and destroy the implements which are used for creation of the infringing goods, not to sell and use the infringing goods or to launch the infringing goods into market by other methods, to destroy the infringing goods which are hard to reserve. If the infringer doesn‘t execute the order, the administrative authority may approach court for compulsory execution. The provisions conform to principles equivalent in substance to those in article 46 of TRIPS. In the other hand, there are still some procedures don‘t comply with TRIPS completely, for example, article 45 of TRIPS regulates the authorities shall have the authority to order the infringer to pay the right holder damages adequately. Chinese local IP offices may only, upon the request of the parties, mediate in the amount of compensation for the damage caused by the infringement of the patent right, with no fines. It brings right holders a choice that if he is more concerned with stopping the infringement than with compensation, the administrative route may be the preferred option.24 If he is concerned with compensation, he may 24 C.L.LI, Recent Chinese Patent Reform, supra at note 13, at 936. 358 The Patent Rights Enforcement in China ________________________________________________________________________________ choose to claim to court in another independent suit if he wants. So the civil enforcement complements the insufficiency of the administrative enforcement to this point. 3.3. The Border Enforcement In a broad sense, the administrative enforcement of patent includes the border enforcement. Section 4 of TRIPS provides for special requirements related to border measures. The Customs IPR Regulations25 and the Custom IPR Implementing Measures26 regulates the border enforcement of IPRS. General Administration of Customs of the People‘s Republic of China and local customs responsible for the border protection of patent. The most interesting topic about Chinese border enforcement of patent is whether it complies with Article 59 of TRIPS concerning the disposal of confiscated goods. Article 59 of TRIPS refers specifically to disposal of goods confiscated by Customs Authorities that infringe IPRs while article 46 with respect to dealing with infringing goods. Article 27 of the Customs IPR Regulations and Article 33 of the Custom IPR Implementing Measures set forth the requirements for the disposal of goods that infringe IPRs and that are confiscated by Chinese customs authorities. There are four ways to deal with the infringing good: (i) donate to welfare institutions, (ii) transfer to the right holder, (iii) where the above two means can‘t be adopted, they may be auctioned after eliminating the infringement character, (iv) where the infringement character can‘t be eliminated, the goods shall be destroyed. Although there are a hierarchy of requirements for the disposal of infringing goods that are confiscated by Chinese customs authorities27and they will give priority to allow such goods to enter the channels of commerce (for example, auction), however, it still doesn‘t violate the principles in article 46 and 59 of TRIPS. First, the (i)(ii) ways don‘t make the infringing goods enter into commercial channels, and the last sentence of Article 33 of the Custom IPR Implementing Measures regulates that Chinese customs shall make necessary supervision over them when the (i)(ii) ways are carried out. Second, auction only can be done when the conditions satisfied that all infringement characters have been eliminated and customs have asked the attitude of the right holder. So, when the infringing goods are confiscated that create a deterrent to infringement, the auctions don‘t make any harm to right holder while at the same time make use of the resource effectively. 25 Which was adopted at the 30th Executive Meeting of the State Council on Nov 26th, 2003, promulgated by Decree No.395 of the State Council of the People‘s Republic of China on Dec 2nd, 2003, and effective from Mar 1st, 2004. 26 Which was adopted at an Administrative Affairs Meeting of the General Administration of Custom on Apr 22nd, 2004, revised at an Administrative Affairs Meeting of the General Administration of Custom on Feb 17th, 2009, and effective from Jul 1st, 2009. 27 One of the controversial points between US and China. Feiyu Lei 359 ________________________________________________________________________________ 4. COMPARATIVE ISSUES BETWEEN CHINESE PATENT CRIMINAL LAW ENFORCEMENT AND TRIPS Criminal procedures in China has been provided through the Criminal Law of PRC which contains a separate section(Sec.7 of Ch.3 of Part 2) named ―Crime of Infringing upon Intellectual Property‖ and the related judicial Interpretations ―the 2004 Judicial Interpretation‖28 and ―the 2007 Judicial Interpretation‖29. With regard to patent, Article 216 of Criminal Law regulates criminal procedures and penalties on passing-off and counterfeiting of patent when the circumstance is serious. The relevant authorities are the Public Security Bureaus (PSBs) and the People‘s Procuratorate and the People‘s Court. Each local General Brigade of Economic Investigation under Public Security Bureau responsible for investigating and prosecuting and punishing for infringement. Some of the criminal cases are filed by patentees, and the others are transferred from the administrative authorities30. Once a case is transferred and accepted, the rules governing criminal law apply,31and the case starts to go through the judicial procedure. Article 61 of TRIPS requires an obligation for members to provide for criminal procedures and penalties to be applied at least in cases of willful trademark counterfeiting or copyright piracy on a commercial scale, while does not oblige members to apply the same rule in other field of IP, only ask for ―may provide‖ term, so in the field of patent, China is free to provide criminal procedures and penalties in patent. Article 216 of Criminal Law provides the remedies for crime of passing-off and counterfeiting of patent including fixed-term imprisonment of not more than three years or criminal detention, and fine. These remedies comply with which article 61 of TRIPS require. The seizure, forfeiture and destruction of the infringing goods and any related materials are the civil law liabilities which can be claimed by patentee in the civil law system. So, different damages can be available to different law, and they are complementary. 28 The Interpretation by the Supreme People‘s Court and the Supreme People‘s Procuratorate on Several Issues of Concrete Application of Law in Handing Criminal Cases of Infringing Intellectual Property, came into force on Dec 22nd, 2004. 29 The Interpretation by the Supreme People‘s Court and the Supreme People‘s Procuratorate on Several Issues of Concrete Application of Law in Handing Criminal Cases of Infringing Intellectual Property(II), came into force on Apr 5th, 2007 . 30 It means a patentee may file to criminal authority for the patent infringement directly, if the case satisfied the criminal threshold regulates in the Criminal Law, the application will be accepted; he may also file to administrative authority, if the administrative authorities judge the infringement have committed the Criminal Law, they will transfer the case to criminal authorities to deal with. 31 C.HEATH,L.PETIE,Patent enforcement worldwide:a survey of 15 countries; writings in honour of Dieter Stauder, supra at note 10, at 316. 360 The Patent Rights Enforcement in China ________________________________________________________________________________ 5. SOME IMPLEMENTATION ISSUES In the past 20 years, Chinese government endeavor to establish a perfect legal system of IP which can promote the technical development and boom the art and literature. Although the accession to the WTO brought lots of pressure to change and adjust legislation to comply with the TRIPS, ―Most legal experts agree that China‘s laws meet most international standards‖.32 In the other hand, we should keep a clean head to recognize that the period patent law established in China is so short that Chinese patent rights enforcement system still face many problems both in legislation and practice. For example, the legislation still need to perfect to comply with TRIPS better; the administrative law enforcement is not very effective in some areas of China because of lack of man-power; a general enforcement problem which has a detrimental impact on civil law enforcement is the inability to execute judgments33; counterfeiting always was and until today remains a rampant problem in the Chinese market34; many patent right holders in China today still know little about how to enforcement their rights because they are inventors but not lawyers, or they don‘t have money to protect patents as said the heavy cost also in European countries, specially the right holders are the smaller firms (SMEs) or individuals. As a 1999 report by experts to the European Commission stated that: ―In our view, by far the greatest deterrent to the use of intellectual property rights, in particular patents, by SMEs as well as universities and similar institutions, is the fear of heavy costs to enforce them.‖35 6. CONCLUSION: HOW TO REINFORCE THE PATENT PROTECTION IN CHINA 6.1. Improve the Patent Administrative Law Enforcement From the patent system established in China to now, there have been many controversies about China‘s system of the administrative protection of patent be ―abolished‖ or ―reserved‖? Or ―Strengthen‖ or ―weaken‖? In fact, the 1984 patent law, the 1992 version, the 2000 version, and the 2008 version all reserved the administrative law enforcement of patent; it indicates the patent administrative enforcement is essential and important. There are several reasons need to recognize: First, Article 49 of TRIPS provides the international norms to patent administrative enforcement, it doesn‘t deny administrative procedures on the merits of a case and any civil remedy, and it also gives the requirements of administrative enforcement. Second, the legal system in China has been imperfect at the present, 32 D.K.CHOW, A Primer on Foreign Investment Enterprises and Protection of Intellectual Property in China, Kluwer, The Hague, 2002, at 205. 33 T.BENDER, How to Cope with China‟s (Alleged) Failure to Implement the TRIPs Obligations on Enforcement, supra at note11, at 233. 34 C.HEATH,L.PETIE,Patent enforcement worldwide:a survey of 15 countries;writings in honour of Dieter Stauder, supra at note 10, at 285. 35 see W. KINGSTON, Improving Patents for Smaller Firms: Insurance, Incontestability, Arbitration? in IPQ 2007, 1-18, at 2. Feiyu Lei 361 ________________________________________________________________________________ judicial officers are not enough and some of them lack of experiences in judging patent infringement, so the judicial channel alone is not adequate to enforce patent rights. Third, viewed from practice, the procedure of administrative enforcement on patent infringement is quick and saving for parties, and the decision made by local IP administrations is supported and supervised by court according to law (Article 60 of Patent Law). Fourth, according to the provisions of other related Chinese laws such as the trademark law and copyright law, the Administrative Departments for trademark and those for copyright are specifically empowered to impose administrative sanctions against infringements, and patent administrative enforcement of law is obviously less powerful than that of trademark and copyright. To harmonize with other legislation on IP in China, it is necessary to establish such a power.36 So, All the above reasons show China‘s patent administrative law enforcement fulfils international norms and China's actual conditions, which is important and essential to improve it: (i) to enhance the authorities of the administrative authority through legislation; (ii) to increase the resources and man-power to put into the fighting against patent infringements, provide more training or other measures to establish experienced and competent enforcement groups; (iii) to establish some cooperation mechanisms of patent administrative enforcement across different districts. 6.2. Enhance the Assistance of Patent Enforcement In recent years, Chinese government dedicated to transform its functions to a service-oriented government, to enhance the public service and social administration. To supply public and right holders‘ service on IP is IP administration authorities‘ inevitable option. In this case, the State Intellectual Property Office published the Guidelines on initiation of assistance for IPRs enforcement in 2007; soon Chinese Assistance Centers of Intellectual Property right enforcement (hereinafter referred to as Assistance Center) were established in many districts. Chinese government hope them can be one of the measures to solve enforcement issues. Their responsibilities are summarized as to provide intellectual assistance for Chinese individual or legal person whoever faces problems concerning IPRs which are difficult to solve, and economic assistance for whom can‘t afford IP enforcement cost, they may be SMEs or individuals. The main work pattern is to organize local related governments, law firms, IP agents, research institutes, social organizations, experts to provide assistance for enforcement for who satisfies the requirements. As these centers were established one after another, and have been operated for one or two years, they present some problems lead to they can not achieve the original aims. First, the assistance center is a new thing that there is no perfect operation mode and experience to use, every local center would only ―grope in the blank‖ based on the basic principles. Second, most of the local centers don‘t have enough funds to enforce assistance. 36 This discuss part see X.Q.FENG,J.Q.LIU, A Review of Recent Developments in Patent Law in the People‟s Republic of China, in 4 The Journal of World Trade Law, 2001, at 861-863. 362 The Patent Rights Enforcement in China ________________________________________________________________________________ How to solve the above problems and make the Assistance center to play a big role in patent enforcement? There are some suggestions: (i) to consummate the assistance system of the assistance centers, give more regulations about the system, rather than only a guidance; (ii) to establish an assess system to stimulate these centers to create more effective performance and popularize the good cases in all the centers; (iii) every center should establish a multi-channel funds to ensure the operation of the assistance centers, including government support, social donation, etc. Feiyu Lei 363 ________________________________________________________________________________ BIBLIOGRAPHY Books F.M.ABBOTT, TH.COTTIER, F.GURRY, International Intellectual Property in an Integrated World Economy, Aspen publishers, New York, 2007 M.J.ADELMAN, R.R.RADER, I.R.THOMAS, H.C. WEGNER, Cases and Materials on Patent Law, West Group, St. Paul, Minnesota, 1998 (PRIV 2094) D.K.CHOW, A Primer on Foreign Investment Enterprises and Protection of Intellectual Property in China, Kluwer, The Hague, 2002 (PRIV 2446) M.A.COHEN,A.E. BANG&S.J.MITCHELL, Chinese Intellectual Property Law and Practice, Kluwer Law International, The Hague, 2000, (PRIV 1706) W. Cornish-D. Llewelyn, Intellectual Property: Patents, Copyright, Trade Marks and Allied Rights, Thomson- Sweet & Maxwell, 2007 (PRIV 4605) A.S. DWYER, Trade-Related Aspects of Intellectual Property Rights, in T.P. STEWART (a cura di), The GATT Uruguay Round: A Negotiating History (19861994), Vol. IV, The End Game, Kluwer, Deventer, 1999, (INT 539) 461 ff. T. DREIER, TRIPS and the Enforcement of Intellectual Property Rights, in (F.K. Beier & G. Schricker eds.), From GATT to TRIPS: The Agreeement on Trade Related Aspects of Intellectual property Rights, Studies in Intellectual Property and Copyright Law, 1996, 248 ff. (INT V 455 and PRIV VI 585.18) P.GANEA,T.PATTLOCH, Intellectual Property Law in China, Kluwer Law International, The Hague, 2005 (PRIV 3669) D. GERVAIS, The TRIPs Agreement. Drafting History and Analysis, Sweet & Maxwell, London, 1998 (INT 563) C.HEATH,L.PETIE,Patent enforcement worldwide: a survey of 15 countries; writings in honour of Dieter Stauder, Hart Publishing Ltd., Oxford , 2005 R.P. MERGES, Patent Law and Policy. Cases and Materials, 2nd edition, Michie, Charlottesville, 1997 (PRIV 1994) J.O. NELSON, International Patent Treaties with Commentary, Oceana Publications, New York, 2007 T. TAKENAKA, Patent Law. A Handbook of Contemporary Research, Edgard Elgar, 2008 (PRIV 5117) 364 The Patent Rights Enforcement in China ________________________________________________________________________________ S. THORLEY-R. MILLER-G. BURKILL-C. BIRSS, TERRELL on the Law of Patents, 15th ed., Sweet & Maxwell, 2006 (PRIV 3986) C.WADLOW, Enforcement of Intellectual Property in European and International Law, Sweet & Maxwell, 1998 (INT 243) J.WATAL, Intellectual Property Rights in the WTO and Developing Countries, Kluwer Law International, The hague, 2001 (INT 1095) X.T.YIN, Patent rights protection, Intellectual property publisher, Beijing, 2008 N. PIRES DE CARVALHO, The TRIPs Regime of Patent Rights, The Hague, Kluwer, 2nd ed., 2005 (INT 1366) Articles T.BENDER, How to Cope with China‟s (Alleged) Failure to Implement the TRIPs Obligations on Enforcement, in JWIP 2006, 230 ff. D.C. CLARKE, Economic Development and the Rights Hypothesis: The China Problem, in LI Am. J. Comp. L. 2003, 89-111 R.J.T.CORBETT, Protecting and Enforcing Intellectual Property Rights in Developing Countries, in The Int. Lawyer 2001, 1083 ff. J. DREXL, R. HILTY, A. KUR, Proposal for a Directive on Measures and Procedures to Ensure the Enforcement of Intellectual Property Rights, in 34 IIC 2003, 530 ff. X.Q.FENG, J.Q.LIU, A Review of Recent Developments in Patent Law in the People‟s Republic of China, in JWIP, 2001, 827 ff. L.T.C. HARMS, The Role of the Judiciary in the Enforcement of IPRs: IP Litigation under the Common Law System with Special Emphasis on the Experience in South Africa, in EIPR 2004, 483-492 C. HEATH, Wrongful Patent Enforcement – Threat and Post-Infringement Invalidity in Comparative Perspective, in IIC 2008, 307 ff. R.INNES, Enforcement Costs, optimal sanctions, and the choice between ex post-liability and ex-ante regulation, in Int. R.. of Law and Economics, 2004, 29-48 W. KINGSTON, Improving Patents for Smaller Firms: Insurance, Incontestability, Arbitration? in IPQ 2007, 1-18 Feiyu Lei 365 ________________________________________________________________________________ W. KINGSTON, How Realistic are EU Hopes for Innovation? in 26 EIPR 2004, 197-202 W. KINGSTON, Making Patents Useful to Small Firms, in IPQ 2004, 369378 W. KINGSTON, What Role for European National Patent Offices? in EIPR 2003, 289-291 QUINGJIANG KONG, The Judicial Enforcement of Intellectual Property Rights in China – on the Eve of WTO Accession, in JWIP, 2001, 809 ff. A. KUR, The Enforcement Directive – Rough Start, Happy Landing? in 35 IIC 2004, 821 ff. C.L.LI, Recent Chinese Patent Reform, in JWIP, 2001, 919 ff. T.MALONEY, The enforcement of patent rights in the United States, in IIC 2000, 723-748 C.H. Massa, A. Strowel, The Scope of the Proposed IP Enforcement Directive: Torn Between the Desire to Harmonize Remedies and the Need to Combat Piracy, in EIPR 2004, 244-253 P. MEIER-BECK, Damages for Patent Infringement According to German Law – Basic Principles, Assessment and Enforcement, in IIC 2004, 113 ff. S.J. PALMER, An Identity Crisis: Regime Legitimacy and the Politics of Intellectual Property in China, in 8 Ind. J. of Global Legal Studies, 2001, M. RICOLFI, The proposed IP Enforcement Directive: tough on legitimate competitors, weak against pirates, in Italian Intellectual Property, 2004, 3 – 12. L. XIAOHAI, Enforcement of Intellectual Property Rights in the People‟s Republic of China, in 32 IIC. 2001, 141 ff. 366 The Patent Rights Enforcement in China ________________________________________________________________________________ Laws Directive 2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the enforcement of intellectual property rights, available at :http://ec.europa.eu/internal_market/iprenforcement/directives_en.htm Amended proposal for a Directive of the European Parliament and of the Council on criminal measures aimed at ensuring the enforcement of intellectual property rights, available at:http://eurlex.europa.eu/LexUriServ/LexUriServ.do?uri=COM:2006:0168:FIN:EN:HTML Official documents: Guidelines on initiation of assistance for intellectual property right enforcement, published by Intellectual Property Office of the People‘s Republic of China on 7 Nov. 2007 Website: China's Intellectual Property Protection in 2008 http://www.sipo.gov.cn/sipo_English/laws/whitepapers/200904/t20090427_457167 .html THE PROTECTION OF IPRS IN THE PHARMACEUTICAL MARKET AFTER PATENT EXPIRATION: AN ANALYSIS OF THE REVERSE PAYMENT SETTLEMENTS IN LIGHT OF COMPETITION LAW by Karoline Brandi and Federica Lorenzato INTRODUCTION CHAPTER 1 THE PHARMACEUTICAL REGULATORY ENVIRONMENT A. USA: The Hatch-Waxman Act 1. The ANDA Process 2. The Paragraph IV-Certification 3. Patent Term Restauration B. Europe 1. Supplementary Protection Certificate (SPC) 2. Regulatory Data Protection, Marketing Exclusivity, „Bolar Scheme― CHAPTER 2 LIFE CYCLE MANAGEMENT STRATEGIES A. Patent Filing Strategies, Evergreening B. Vexatious Litigation C. Second Generation Products D. Authorized Generics E. OTC Switches F. Reverse Payment Settlements CHAPTER 3 THE REVERSE PAYMENTS SETTLEMENTS IN DETAIL A. The Reverse Payments Settlements in U.S. 3.1. Definition of Reverse Payment Settlements 368 The Protection of IPRs in the Pharmaceutical Market after Patent Expiration. An Analysis of the Reverse Payment Settlements in Light of Competition Law ________________________________________________________________________________ 3.2. Factors proving Incentives for Reverse Payment sSttlements in the Drug Industry 3.2.1 Innovative Drugs have intrinsically High Social Utility 3.2.2. Barriers to Generic Market Entry 3.3. Reverse Payment Settlements in the FTC‘s Opinions 3.4. Reverse Payment SettlementS in the Courts B. The Reverse Payments Settlements in Europe CONCLUSION BIBLIOGRAPHY Karoline Brandi and Federica Lorenzato 369 ________________________________________________________________________________ INTRODUCTION Intellectual property rights - and patents in particular - are arguably more important to the pharmaceutical industry than to any other industry. There are a number of reasons for this, which distinguish the pharmaceutical industry from most other sectors. The research-based pharmaceutical industry is particularly dependant on being able to benefit from the full duration of the 20 years patent protection. This contrasts with many other industries, where a product can enter the market soon after a patent application is made and where innovation and technological development can make patented technology obsolete long before the expiry of the patent. First, there are significant regulatory and scientific requirements that must be fulfilled before any new drug can be placed on the market. The drug must complete a rigorous testing process to establish that it is both safe and effective. It usually takes 6 to 12 years from the date of patent application until an innovative drug is put on the market. As a result, effective patent protection is reduced up to only eight years.1 Second, the relative speed with which generic producers can enter the market once the patent has expired given that they do not need to repeat the regulatory process. This means that the pharmaceutical company which developed the drug must plan to recoup the cost of its Research and Development (R&D) investment before patent protection expires. Third, the very significant cost of developing a new drug, which has been estimated as being around a billion dollars today. This compares to approximately $230 million at the end of the 1980s.2 Obtaining a patent on its invention allows the pharmaceutical firm to benefit from a monopoly power for a certain period, during which it has the exclusive right to produce the patented drug and/or to concede licences to other laboratories. In this case, patents are an efficient tool for innovative firms to make their R&D investments profitable and represent therefore an incentive for further innovation. However, this situation totally changes once the patent expires and the invention falls into the public domain; many generic copies of the originally patented drug could henceforth be produced by different laboratories in different countries. The market for this drug turns from a monopole into a competitive structure. Traditionally, innovative pharmaceutical companies lose 20% to 50% of 1 GARLAND P.,LARUSSON H.K., Data Exclusivity, Bolar Exemption and Generic Drugs in the EU, 129, EIPR (2007) 2 KILLICK J., SCHULZ A., DAWES A., 7, The Special Regime of Intellectual Property for the Pharmaceutical Industry, IP & Technology Programme Report (BNA), 2006 370 The Protection of IPRs in the Pharmaceutical Market after Patent Expiration. An Analysis of the Reverse Payment Settlements in Light of Competition Law ________________________________________________________________________________ their market share when a first generic pharmaceutical enters the market. Subsequent generic entries can cause prices to drop by as much as 90%.3 With patent term expiries in full swing, innovative market players increasingly have recourse to diverse strategies aimed at reducing the adverse effects of generic competition. These practices to encounter the entry of generics have drawn the attention of antitrust authorities, especially in the United States. The European Commission (EC) in July 2009 issued its Final Report on its inquiry into competition in the pharmaceutical sector, after having conducted surprise inspections of certain pharmaceutical companies, seeking evidence of anticompetitive conduct.4. The inquiry, which began in January 2008 under Art.81 and 82 of the ex-EC Treaty (which is now Art.101 and 102 of the Treaty on the Functioning of the European Union (TFEU)) was mandated to examine why fewer novel medicines were being brought to market and why generic entry was frequently delayed. The findings of the inquiry indicate that originator companies use a variety of instruments to extend the commercial life of their medicines. The results of the sector inquiry suggest that the behaviour of companies contributes to the generic delay.5 Our aim in this work is to study, how innovative pharmaceutical firms react in response to generics competition. A special analysis will be given on the socalled „Reverse payment settlements―strategy in the light of antitrust law. First of all, there are the strategies that exploit regulations to maintain market share or delay the introduction of generic drugs. Therefore, initially we will sum up the particular regulatory environment of the pharmaceutical industry, with a focus on the regime in Europe and the US. 3 LAMOTE A., L‘ECLUSE P., LONGEVAL C., Generic entry - a challenge to traditional EC competition law?, 81, Cross-Border Handbook Life Sciences (2008/09) 4 EU Commission Final Report, available at http://ec.europa.eu/competition/sectors/pharmaceuticals/inquiry/communication_en.pdf 5 EU Commission Final Report, 11 Karoline Brandi and Federica Lorenzato 371 ________________________________________________________________________________ CHAPTER I. THE PHARMACEUTICAL REGULATORY ENVIRONMENT A. USA: The Hatch-Waxman Act The United States in 1984 enacted the Hatch-Waxman Act with the dual objectives of facilitating entry of generic competition while preserving sufficient patent exclusivity time to incentivize drug innovation.6 1. The ANDA Process The Hatch-Waxman Act changed the regulatory criteria for the U.S. Food and Drug Administration (FDA) approval of generics, thereby significantly reducing the costs and time delays of generic entry. This abbreviated new drug application (ANDA) process requires generic manufacturers to demonstrate that the generic is ―bioequivalent‖ to an approved brand drug.7 Prior to passage of the Hatch-Waxman Act, generic firms could not rely on branded drugs‘ safety and efficacy data unless this information was published in the scientific literature. In effect, these safety and efficacy data were given „trade secret―status. Hence a generic imitator had to undertake many of the same safety and efficacy tests as the innovator to gain FDA approval. Second, the Act allowed generic manufacturers to conduct their testing prior to patent expiration without infringing the patent (= US „Bolar Scheme―8). This allowed generics to enter the market much more quickly after patent expiration than previously.9 2. The Paragraph IV-Certification If the ANDA applicant is seeking approval to market a drug before the expiration of one or more patents listed in the Orange Book, then for each patent the ANDA applicant must include a certification (a so-called „paragraph IVcertification―) which states that the patent is invalid or will not be infringed by the proposed generic product. The patent owner may then file a patent infringement lawsuit within 45 days of receiving a paragraph IV notification. In that case, FDA approval of the ANDA is automatically stayed for 30 months. During the stay, the FDA is prohibited from approving another ANDA. Additionally, the first ANDA is granted a 180-day market exclusivity period, as an incentive whereby the generic company does not have competition from other generic companies and can both establish market share and charge a higher price.10 6 SLOAN F., Pharmaceutical innovation: incentives, competition, and cost-benefit analysis in international perspective, 153, Cambridge University Press, New York, 2007 7 SLOAN F., 153. 8 GARLAND P., LARUSSON H.K., 130. 9 SLOAN F., 154. 10 RUMORE M., The Hatch-Waxman Act - 25 years later: Keeping the Pharmaceutical Scale Balanced, www.pharmacytimes.com/supplement/pharmacy/2009/GenericSupplement0809/GenericHatchWaxman-0809; PAVANE M., FERRARI L., Reverse payment settlement agreements, trading 372 The Protection of IPRs in the Pharmaceutical Market after Patent Expiration. An Analysis of the Reverse Payment Settlements in Light of Competition Law ________________________________________________________________________________ 3. Patent Term Restauration Hatch-Waxman also provided benefits to innovative firms by restoring some of the patent life lost during the long clinical and regulatory periods for new drugs.11 In particular, new drugs were eligible for a Hatch-Waxman extension in patent life equal to the sum of the NDA regulatory review time plus one-half of the IND testing time. The law also constrained extensions to a maximum effective patent lifetime of 14 years and capped extensions at five years. In addition, Title I of the law provided for a five-year data exclusivity period for the drugs‘ safety and efficacy data. In essence, no generic firm could submit an ANDA and rely on the safety and efficacy data of the innovating firm until five years after FDA approval.12 However, the primary impact of the Act has been to foster greater generic competition, since the patent term extension benefits to innovators were more than offset by the increased generic competition after patent expiration that was facilitated by the law.13 B. Europe 1. Supplementary Protection Certificate (SPC) After the passing of Waxman Hatch innovative European firms were put at a competitive disadvantage vis à vis the US. Pressure was put on the EC Commission to provide for extension or restoration of patent terms for pharmaceuticals.14 The E.U. responded in 1992 by adopting the Supplementary Protection Certificate (SPC) Regulation15, which grants pharmaceutical products up to five years‘ extra patent protection (or 15 years from the first marketing authorization in the EU16) to compensate research-based companies for the delays inherent in the regulatory system.17 one litigation headache for another, Managing Intellectual Property, available at http://www.managingip.com/Article.aspx?ArticleID=2324934 . 11 SLOAN F., Pharmaceutical innovation: incentives, competition, and cost-benefit analysis in international perspective, 153, Cambridge University Press, New York, 2007. 12 SLOAN F., 165. 13 SLOAN F., 154. 14 MARKS D., Life beyond the patent, 13, Managing Intellectual Property (1994). 15 Regulation 1768/92 of 18 June 1992 concerning the creation of a supplementary protection certificate for medicinal products. 16 GARLAND P.,LARUSSON H.K., Data Exclusivity, Bolar Exemption and Generic Drugs in the EU, 129, EIPR (2007). 17 KILLICK J., SCHULZ A., DAWES A., 8, The Special Regime of Intellectual Property for the Pharmaceutical Industry, IP & Technology Programme Report (BNA), 2006 . Karoline Brandi and Federica Lorenzato 373 ________________________________________________________________________________ To obtain an SPC on the date of application in the territory concerned, three conditions must be met. Firstly, a medicinal product must be covered by a basic patent in force. Secondly, the manufacturer must have been granted a valid authorization18 to place the product on the market as a medicinal product and it must have been the first manufacturer to obtain an authorization for that particular product. Thirdly, the product may not already have been the subject of an SPC: a product may only obtain a single SPC for a maximum of five years19. 2. Regulatory Data Protection, Marketing Exclusivity and the „Bolar Scheme“ (Directives 2001/83 and 2004/27) In addition to patents and SPC, pharmaceutical products in Europe also benefit from the „regulatory data protection―. Following the example of the US (five-year data exclusivity period of the Hatch-Waxman Act), Directive 2001/83, amended by Directive 2004/27, provides 8-years protection of the drugs‘ safety and efficacy data. An „abridged― application for marketing a generic drug can therefore be filed only eight years after the first marketing authorization of the innovative drug upon which the generic drug is based.20 Art. 8 (3) (i) of the amended 2001 Directive states that the results of preclinical tests and clinical trials must be submitted with an application for the grant of marketing authorization of a particular drug. Art.10 (1) - as an exception to this provision - allows a generic producer, once the data exclusivity period has expired (as well as the patent protection and the SPC), to submit an application for marketing authorization for a generic drug submitting the data referred to in Art.8 (3) (i). According to this „abridged procedure― the manufacturer of the generic drug is not required to repeat pre-clinical tests and clinical trials carried out in relation to the innovative drug, but can in its application refer to the innovative pharmaceutical company‘s original research data kept by the relevant marketing authorization authorities.21 The eight years of data exclusivity are complemented by an overlapping 10year market exclusivity22 which means that a generic drug cannot be placed on the market until 10 years have elapsed from the initial authorization of the innovative drug.23 Therefore, if processing a marketing application for a generic drug takes less than two years (as is usually the case), generic manufacturers now have real prospects of being able to put their products an the market as soon as the 10-year market exclusivity expires. 18 Under either Directive 2001/83/EC or Regulation 726/2004/EC. KILLICK J., SCHULZ A., DAWES A., 8. 20 GARLAND P.,LARUSSON H.K., 129. 21 GARLAND P.,LARUSSON H.K., Data Exclusivity, Bolar Exemption and Generic Drugs in the EU, 129, EIPR (2007). 22 Directive 65/65/EEC, 87/21/EEC. 23 Art.10 (1) of the Amended 2001 Directive. 19 374 The Protection of IPRs in the Pharmaceutical Market after Patent Expiration. An Analysis of the Reverse Payment Settlements in Light of Competition Law ________________________________________________________________________________ However, this two-year window between the end of the data exclusivity period and the end of the marketing exclusivity period would in most cases be of no practical use without the simultaneous implementation of the „Bolar Scheme―. Art.10 (6) of the amended 2001 Directive expressly states that conducting the necessary studies and trials with a view of marketing an application for marketing authorization ―shall not be regarded as contrary to patent rights or SPC‘s―.24 CHAPTER II. LIFE CYCLE MANAGEMENT STRATEGIES Besides filing for a European SPC25 or using the patent term restoration and the 30-month stay provision of the Waxman-Hatch Act, there are other responses of branded firms, typically referred to as life cycle management strategies. 26 In the following we will explore some of the prevalent strategies, especially those mentioned in the European Commissions Final Report on its inquiry into competition in the pharmaceutical sector.27 A. Patent Filing Strategies, Evergreening The findings of the inquiry suggest that in recent years originator companies developed strategies to extend the breadth and duration of their patent protection. In order to delay or block the market entry of generics, originators use to file numerous patent applications for the same medicine (forming so called "patent clusters" or "patent thickets").28 By using this so called „evergreening―-strategy, the brand-name manufacturer literally ―stockpiles‖ patent protection by obtaining separate 20-year patents on multiple attributes of a single product. These patents can cover everything from aspects of the manufacturing process to tablet colour or way of dosing. Through this tactic the generic manufacturer are forced to choose between waiting for all the patents to expire and applying for marketing authorization anyway, running the risks of litigation and the associated costs and delays. Originator laboratories no longer wait until the end of a product‘s patent life to begin the evergreening process. In order to maximize revenues from their 24 GARLAND P., LARUSSON H.K., 130. From a competition law perspective, limited risks are involved, but see the misuse case of AstraZeneca (http://ec.europa.eu/competition/sectors/pharmaceuticals/cpn2005_3_54.pdf) In 2006, the European Commission imposed a € 60 million fine on AstraZeneca for having abused its market power (or ‗dominance‘) by pursuing certain intellectual property (IP) and regulatory strategies aimed at keeping generics off the market. 26 SLOAN F., Pharmaceutical innovation: incentives, competition, and cost-benefit analysis in international perspective, 167, Cambridge University Press, New York, 2007. 27 EU Commission Final Report, 11-16. 28 EU Commission Final Report, 11.. 25 Karoline Brandi and Federica Lorenzato 375 ________________________________________________________________________________ products, pharmaceuticals executives begin preparing strategies to extend patents and stifle generic competition at the outset of product life-cycles. 29 B. Vexatious Litigation Another common strategy for a patentee to prolong the life cycle of its pharmaceutical, is to bring or threaten to bring patent infringement actions against generic competitors that are about to launch substitutes for the patentee‘s pharmaceutical. The primary purpose of this vexatious litigation is to delay the entry of generic medicines rather than a serious attempt to enforce legal rights (e.g., by obtaining interim injunctions keeping generic companies off the market). Branded firms often simply question the bioequivalence and reliability of generic products before the courts.30 Vexatious litigation is arguably a technique that is more rewarding in the US, where the Hatch-Waxman Act offers innovative pharmaceutical companies the opportunity to delay generic entry by filing a patent infringement suit against the generic applicant within the 45 day-deadline.31 By providing such infringement claim, the approval of the generic‘s market authorization can be postponed for 30 months. In the EU, in contrast, there is no such linkage between the grant of marketing authorization and alleged patent infringement. The relevant authority will typically grant marketing authorization, irrespective of such infringement. The patent holder will need to start litigation and, importantly, seek an injunction preventing the entry of the generic drug onto the market. This will require a prima facie case, in contrast with the US, where the stay in the authorization process is automatic.32 C. Second Generation Products The Commissions inquiry discovered that many originator companies launch second generation or follow-on medicines before loss of exclusivity of the first generation product.33 Thereby branded firms try to switch patients to nextgeneration drugs with little or no added therapeutic value, prior to the market entry 29 RUMORE M., The Hatch-Waxman Act - 25 years later: Keeping the Pharmaceutical Scale Balanced, www.pharmacytimes.com/supplement/pharmacy/2009/GenericSupplement0809/GenericHatchWaxman-0809; SLOAN F., 167 ff. 30 EU Commission Final Report, 12; LAMOTE A., L‘ECLUSE P., LONGEVAL C., Generic entry a challenge to traditional EC competition law?, 82, Cross-Border Handbook Life Sciences (2008/09) 31 LAMOTE A., L‘ECLUSE P., LONGEVAL C., 82. 32 VAN KERCKHOVE M., VARMA A., Getting The Deal Through: Pharmaceutical Antitrust Overview, 4, Global Competition Review 2009, available at http://www.blakes.com/pdf/Getting_the_Deal_Through-Pharmaceutical_Antitrust_09.pdf 33 EU Commission Final Report, 15. 376 The Protection of IPRs in the Pharmaceutical Market after Patent Expiration. An Analysis of the Reverse Payment Settlements in Light of Competition Law ________________________________________________________________________________ of a generic version of the first generation product.34 Through this tactic generic companies are less able to gain a significant share of the market. If on the other hand generic companies enter the market before the patients are switched, originator companies may have difficulties in convincing doctors to prescribe their second generation product or in obtaining a high price for the second generation product.35 D. Authorized Generics Authorized generics are pharmaceutical products commercialized under a generic product name by the manufacturer of the original branded pharmaceutical, or by a generic manufacturer under a licensing agreement with the original manufacturer. Pharmaceutical companies can decide to launch an authorized generic as part of a strategy to secure competition in the generics market on patent expiry. Alternatively, an innovator can license an authorized generic to a generic competitor as a way to terminate patent infringement litigation.36 The authorized generic is sold at a lower cost, and as an alternative to the branded product. The brand companies may choose to launch an authorized generic for a variety of reasons, including to settle patent litigation with a generic company by partnering with it, to participate in the generic market once generic competition starts, or to maintain manufacturing capacity for the drug substance or the drug product.37 Arguably, it is mostly US firms that have resorted to this strategy because it allows them to undermine the 180-day exclusivity period granted by the HatchWaxman Act to the first generic manufacturer, as they do not have to abide by this provision.38 The introduction of an authorized generic during the 180-day period indeed results in a situation where two generic companies directly compete on the 34 SIPKOFF M., Big Pharma uses effective strategies to battle generic competitors, available at http://drugtopics.modernmedicine.comSipkoff, Big Pharma uses effective strategies to battle generic competitors. 35 EU Commission Final Report, 16. 36 LAMOTE A., L‘ECLUSE P., LONGEVAL C., Generic entry - a challenge to traditional EC competition law?, 85, Cross-Border Handbook Life Sciences (2008/09); SLOAN F., Pharmaceutical innovation: incentives, competition, and cost-benefit analysis in international perspective, 160, Cambridge University Press, New York, 2007; NARINDER S., Authorized Generics: Antitrust Issues and the Hatch-Waxman Act, 1, available at http://www.fenwick.com/docstore/publications/IP/Authorized_Generics.pdf; EU Commission Final Report, 12,13. 37 NARINDER S., 1. 38 LAMOTE A., L‘ECLUSE P., LOGEVAL C., 85; NARINDER S., 1. Karoline Brandi and Federica Lorenzato 377 ________________________________________________________________________________ same market. This substantially reduces the economic incentive warranted by the 180-day rule and possibly deters generic competition. Yet, the Federal Food and Drug Administration (FDA) and the US courts have stated on several occasions that authorized generics appear to promote rather than to impede competition. The introduction of authorized generics to the EU market would probably provoke less resentment from generic competitors than in the US, given that there are no Hatch-Waxman type rules in the EU.39 E. OTC Switches Another basic option available in the case of some therapeutic categories is to develop an over-the-counter (OTC)-version of a product subject to patent expiration. The strategy has been employed for example for anti-inflammatory pain relievers such as Motrin and Naprosyn. A key driver of success in the OTC market is the ability to capitalize on the brand loyalty enjoyed by the prescription product.40 F. Reverse Payment Settlements Among the practices identified in the Commissions Report that possibly lead to delay of generic entry were also listed so-called „reverse payment settlements―between brand pharmaceutical manufacturers and generic entrants.41 Via such an - also referred to as „pay for delay - agreement a brand company pays a substantial amount of money to a potential generic entrant (and alleged infringer) to delay entry of a competing generic version of the brand-name drug.42 The Commission noted that this type of settlement has attracted antitrust scrutiny in the United States. However, unlike in the U.S., cases of reverse payment agreements in Europe only recently have drawn attention. In the US, patent litigation settlements are extremely rewarding as they may result in a complete foreclosure of the market for generics manufacturers. Under the Hatch-Waxman Act, if the generics manufacturer decides to delay market entry for some reason, the 180-day period will not begin to run, which results in other generics manufacturers being prevented from entering the market. Therefore, if an 39 LAMOTE A., L‘ECLUSE P., LOGEVAL C., 85, 86. SLOAN F., Pharmaceutical innovation: incentives, competition, and cost-benefit analysis in international perspective, 167,168, Cambridge University Press, New York, 2007; MARKS D., Life beyond the patent, 18, Managing Intellectual Property (1994); RUMORE M., The Hatch-Waxman Act - 25 years later: Keeping the Pharmaceutical Scale Balanced, available at www.pharmacytimes.com/supplement/pharmacy/2009/GenericSupplement0809/GenericHatchWaxman-0809. 41 GATES S., JAECKEL J., BETETA D., Pharmaceutical Patent Settlements Under Fire on Both Sides of the Atlantic, available at http://www.mofo.com/news/updates/files/15791.html . 42 RUMORE M., The Hatch-Waxman Act - 25 years later: Keeping the Pharmaceutical Scale Balanced; DUXBURY P., MADAWELA Y., Patent misuse in the pharmaceutical industry: developments in US & EU (2007), available at http://www.wragge.com/published_articles_2852.asp. 40 378 The Protection of IPRs in the Pharmaceutical Market after Patent Expiration. An Analysis of the Reverse Payment Settlements in Light of Competition Law ________________________________________________________________________________ innovator succeeds in keeping the first generics manufacturer from entering the market, he can almost indefinitely maintain his monopoly status on the product under attack. This is why in the US most patent litigation settlements contain exclusionary payment features by which the innovator offers payment to the generics manufacturer in exchange for the latter not entering the market, if it obtains marketing authorization.43 In the following chapter the reverse payment settlements strategy will be analyzed in detail and in the light of competition law. CHAPTER III. THE REVERSE PAYMENTS SETTLEMENTS A. The Reverse Payment Settlements in the US 3.1. Definition of Reverse Payment Settlements The term ―reverse payment‖ is used to define a variety of diverse patent settlement agreements that involve a transfer of money from the patent owner to the alleged infringer. In a broader sense, it can be used to define any agreement between patent litigants, or potential litigants, wherein the patent owner agrees to provide some compensation to the alleged infringer, and the alleged infringer agrees to delay developing or marketing a product. The ―reverse‖ designation refers to the direction of the payment from the patentee to the alleged infringer. In most patent litigation settlements, any payments typically flow from the alleged infringer to the patentee44. Although reverse payment settlements can and probably do occur in other contexts, it appears that all of the reverse payment settlements that have been challenged as antitrust violations have occurred in the context of challenges by generic drug companies of branded drug patents. The most extreme example of reverse payment settlements would be an agreement terminating litigation, pursuant to which the potential generic competitor would agree to stay off the market for the full duration of the patent term in exchange for cash payments. 43 LAMOTE A., L‘ECLUSE P., LONGEVAL C., Generic entry - a challenge to traditional EC competition law?, 81, Cross-Border Handbook Life Sciences (2008/09). 44 C. S. HEMPHILL, Paying for delay: pharmaceutical patent settlement as a regulatory design problem, 81 N.Y.U.L.R. 1553 (2006); C.M.HOLMAN, Do Reverse Payment Agreement violate the Antitrust Laws?, 23 Santa Clara Comp. & High Tech. L.J. 490 (2007). Karoline Brandi and Federica Lorenzato 379 ________________________________________________________________________________ But a closer look to the facts of individual cases reveals that few, if any, reverse payment settlements are as simple as that or as clearly anticompetitive. For example, most agreements that terminate a patent dispute involve a negotiated market entry date for the generic product that substantially occurs later than would have likely occurred if the generic company had prevailed in the patent dispute, i.e. the parties split the remaining patent term. Settlements such as this, involving a negotiated generic entry date prior to patent expiration, can promote competition by providing a guaranteed reduction in the effective patent term that would not have occurred absent the patent challenge. In other cases, the litigants do not settle the underlying dispute, but the generic company agrees to stay off the market for some period of time while the patent litigation remains pending. These types of agreements are often referred to as ―interim settlements‖ or ―partial settlements agreements‖ and can take on the attributes of a privately negotiated preliminary injunction. Various attributes of partial settlements agreements can render them potentially more or less procompetitive than final settlements agreements. On the positive side, partial settlements agreements can allow the parties to diligently pursue the underlying litigation to final judgment without exposing both parties to the huge potential losses facing each party if the generic enters the market but is subsequently found have infringed a patent. On the other hand, interim settlements can tend to prolong litigation. Because the generic company is benefiting from a steady, and typically substantial, incoming flow of cash payments and the branded company is continuing to reap supra-competitive profits as the sole purveyor of the patent drug, there is little incentive for either party to push for a speedy resolution of the matter. Moreover, in many cases these agreements affectively restrict market entry by third generic manufacturers. The anticompetitive potential of interim settlements agreements is substantial, and both the FTC and the courts have treated them as generally more problematic than final agreements45. Other deviations from the simple model occur when the payment is not a simple transfer of cash. For example, in some interim settlements, the payment is contingent upon the defendant prevailing on appeal. In other cases, payment is contingent upon the generic company achieving final approval from the FDA. In many cases the ―payment‖ comes in the form of a side deal, i.e., an agreement ancillary to the patent settlement. For example, in some cases there is an ancillary agreement pursuant to which the defendant licenses one or more of its products to the patentee. If the licensing payments exceed the fair market value of the in-licensed technology, one may infer that the excess amount represents a camouflaged payment for the delayed generic market entry. For example, one agreement at issue in the Schering-Plough involves a payment of $ 600 million that Schering agreed to make in exchange for the right to market several of the generic 45 See FTC, Generic Drug Entry Prior to Patent Expiration: An FTC Study, available at http://www.ftc.gov/os/2002/07/genericdrugstudy.pdf. 380 The Protection of IPRs in the Pharmaceutical Market after Patent Expiration. An Analysis of the Reverse Payment Settlements in Light of Competition Law ________________________________________________________________________________ company‘s proprietary drug products46. The FTC went to great lengths in an attempt to establish that the size of the Schering‘s payment exceeded its actual valuation of the in-licensed drug products. On appeal, however, the court rejected the FTC‘s conclusion that the terms of the ancillary agreements were anything but the product of legitimate arm‘s-length business negotiations. There are potential pro-competitive aspects to these ancillary agreements. For example, the licensing of the products to the branded drug company could facilitate their commercialization, fostering competition in the ancillary drug market. To the extent the ancillary agreements were legitimate business deals, the Schering-Plough agreements were effectively cross-licensing agreements, a form of patent licensing that the FTC and courts have found to be generally pro-competitive. In some cases, reverse ―payment‖ takes the form of an ancillary agreement pursuant to which the patent owner grants the defendant a license to sell a drug other than the one that is subject of the patent dispute. As with case where the generic company licenses a product to the patent owner, these agreements can promote competition in the ancillary market. Of course to the extent the payment is less than a legitimate valuation of the product, the license to sell the other product can function as a disguised payment for delay in the marketing of the product allegedly covered by the disputed patent. Furthermore, in other cases the reverse payment is an ancillary agreement pursuant to which the patent owner grants the defendant a license to sell the patented drug, manufactured by the patent owner, under a generic label. This type of agreement has procompetitive potential, because this generic labelled product will typically come at a price lower than the branded drug product47. In some cases, the parties characterize reverse payments a ―saved litigation expenses‖. The FTC and some commentators have proposed that reverse payment should not raise a presumption of illegality where the payment is limited to the litigation costs that the patentee would expect to save by discontinuing the litigation. The rationale is that even a patent owner convinced of the merits of its patent case might still legitimately settle a nuisance suit by paying the patent challenger an amount representing the amount of money that would otherwise be spent on litigation costs. 46 Schering-Plough Corp. v. FTC, , 402 F.3d at 1060 (11th Cir. 2005). It must be noted that, however, the price discount is limited by the terms under which the branded company supplies the drug to the generic company, and the drop in price is generally much less than would be expected in the case of true generic competition. Nevertheless, there will generally be some consumer benefit, at least compared to an alternative where the patent owner ultimately prevails in the litigation. 47 Karoline Brandi and Federica Lorenzato 381 ________________________________________________________________________________ In other cases, an alleged reverse payment takes the form of an ancillary agreement, pursuant to which the generic company receives payments to copromote the branded drug company‘s product. Sometimes the co-promoted product is the product at issue in the litigation; at other times, it is another product. In further cases, the reverse payment comes in the form of an ancillary agreement under which the generic receives compensation for agreeing to supply the branded drug company with either raw materials for the manufacture of the brand product or with finished drug product. In some cases, the compensation to the generic company consists of an agreement by the brand company not to launch an authorized generic during the first-filer generic company‘s 180-days exclusivity period for the product at issue in the litigation. Further, in other cases the payment is actually an agreement on the part of the brand company to pay the generic up-front payments, milestones, sale percentages, or development fees for unrelated products to be developed using the generic company‘s technology. 3.2. Factors proving Incentives forRreverse Payment Settlements in the DrugIindustry 3.2.1. Innovative Drugs have intrinsically High Social Utility A fundamental issue driving large reverse payment is the amount of profit that can be made in the sale of prescription drugs, particularly ―blockbuster‖ drugs that offer unique and substantial therapeutic benefit relative to other product in the market48. A branded drug company‘s profit margins are to a large extent dependant upon the market exclusivity provided by patents. When patent protection expires, generic competition quickly erodes margins and market share, resulting in precipitous declines in profitability. The high profitability of branded drugs motivates drug patent owners to take extreme measures to maintain and enforce their patent rights. High profit reflects the relative inelasticity of consumer demand for patented prescription drugs, particularly in the case of a true blockbuster drug with no reasonably acceptable substitute. It is important to remain cognizant of the high social utility in drug innovation. The patent system is the primary engine driving the highly risky and expensive machine that is modern drug development. Any attempts to restrict the rights of pharmaceutical patent owners should only be taken while bearing in mind the potential harm to incentives for innovation, and ultimately the impact this might have on the next generation of innovative drugs. 48 C.M.HOLMAN, Do Reverse Payment Agreement violate the Antitrust Laws?, cit., 504. 382 The Protection of IPRs in the Pharmaceutical Market after Patent Expiration. An Analysis of the Reverse Payment Settlements in Light of Competition Law ________________________________________________________________________________ The introduction of generic competition dramatically reduces the profitability of a prescription drug. According to FDA, analysis of retail data shows that the price of a generic drug averages 94% percent of the brand price when there is one generic competitor in the market and that the entry of a second generic competitor reduces priced to 52% of brand price49. It follows that the existence of reverse payments, and their sizeable magnitude can in large part be attributed to the branded and generic companies‘ exposure to enormous potential financial losses and gains respectively, should the patent challenge succeed. 3.2.2. Barriers to Generic Market Entry Substantial barriers to market entry confront potential generic drug competitors, and these barriers tend to incentivize reverse payments settlements. These barriers to entry are unique to the drug industry and depend on the regulatory provisions that interact with the drug development process, in the context of the Hach-Waxmac patent challenges. Moreover, it must be noted that a consideration of barriers to market entry and the source of these barriers, is critical in any assessment of the anticompetitive potential of a specific agreement, as well as reverse payment settlements in general. In the context of a Paragraph IV litigation, barrier to third parties generic entry are very high and the appearance of reverse payments settlements in Paragraph IV disputes is due to the fact that –unique to pharmaceutical patents- a properly defined settlement-plus-exit-payment keeps not only the immediate infringement defendant out of the market for a time, but also keeps generic firm from entering as well. By making reverse payments pharmaceutical patentees are able to achieve ―a guaranteed insulation from competition, without the risk that the patent will be held invalid‖50. In fact, in the context of Hatch-Waxman there is one barrier to third party generic entry that has the potential to dominate over all others and that is the ability of a first Paragraph IV filer or a first filer to indefinitely ―park‖ its 180-day exclusivity period. A parked GE (generic exclusivity) can create a bottleneck in FDA regulatory process preventing the approval of any third party generic competitor, at least until the expiration of the challenged patent. 49 See FDA, Generic Competition and Drug Prices, available at http://www.fda.gov/CDER/ogd/generic_competition.htm. 50 H. HOVERKAMP, M. JANIS, M. LEMLEY, Anticompetitive Settlements of Intellectual Property disputes, 87 Minn. L. Rev. 1719, 1761-62 (2003). Karoline Brandi and Federica Lorenzato 383 ________________________________________________________________________________ The potential to park GE arises out of the criteria used to trigger the awarding of GE and the initiation of the GE period. Recall that GE is awarded to first-filer and generally does not commence until after the first-filer begins marketing a generic version of the drug, or a decision is reached in a lawsuit filed in response to the Paragraph IV litigation. If the parties to Paragraph IV litigation reach an agreement pursuant to which the first-filer agrees to delay or forgo market entry, the 180-day GE period will not begin until after the patent litigation is a final settlement, resulting in dismissal of the infringement action, the 180-day GE period is never triggered; if it never begins, it can never end. As a consequence, the parties can agree to ―park‖ the GE indefinitely, creating a bottleneck that will prevent any generic third party from entering the market, even if that party is never sued for patent infringement, or succeeds in establishing in court that the patent is invalid or not infringed. The ability to park GE creates a huge incentive for collusive settlement agreements between branded drug companies and first-filer generic companies. By effectively creating an insurmountable barrier to third party generic entry, it allows the settling parties to share in supra-competitive profit made possible by market exclusivity. In fact, were it not for fear of antitrust liability, it would probably always be in the interest of a branded drug company and the GE owner to reach such an agreement51. The profit margins available under monopoly conditions generally exceed those available in a market with two or more competitors, and with only a single potential generic competitor both parties would be better off sharing those profits than competing. Moreover, also the ANDA approval process acts can be considered as a relevant barrier to generic market entry. Even if the reformed process has reduced the regulatory burden on generic drug companies, it still imposes its own substantial monetary and temporal barriers to entry for third party generic competition. The process typically requires a would-be generic competitor twelve months and around $1 million just to generate and compile the data necessary to file an ANDA. If that is the case and the ANDA includes a Paragraph IV certification that results in an automatic thirty-month stay, a time lag of at least forty-two months between commencement of approval process and ability to market the drug can be expected. Another way in which drug regulation encourages reverse payment settlements of Paragraph IV litigation is by bolstering the effective exclusionary potential of drug patent. In fact, while designating around a generally a legitimate means to circumventing a competitor‘s patent, it is often difficult to accomplish in the context of prescription drugs. Strict regulatory controls make it heavily difficult more the competitor to design around an Orange Book-listed patent. If the design around process involves any change to the chemical structure of the active ingredient of the drug or results in a product that is not bioequivalent to the original patented product, the competitor will generally not be able take advantage of the 51 C. SHAPIRO, Antitrust Limits to Patent Settlements, 34 Rand J. Econ. 391, 391 (2003). 384 The Protection of IPRs in the Pharmaceutical Market after Patent Expiration. An Analysis of the Reverse Payment Settlements in Light of Competition Law ________________________________________________________________________________ ANDA process. Instead, it will be required to get through the regular NDA process, resulting in a drastic increase in the time and expense to secure marketing approval. This, in part, explains why generic companies expend so much energy challenging patents, rather than attempting to design around them: in fact, any design around involving an alteration of the structure of the active ingredient or lack of bioequivalence will preclude marketing approval by means of an ANDA. 3.3. Reverse payments settlements in the FTC‟s opinions Over the last ten years, FTC scrutiny of the pharmaceutical industry has expanded dramatically, driven by a rapid rise in the nation‘s expenditure on prescription drugs. The FTC originally focused only on settlements agreements that parked Generic Exclusivity or covered non-infringing products, not reverse payments. Its scrutiny in fact focused primarily on terms in patent settlements that either had the potential to park the 180-day GE or that extended to activities and/or products not covered by the patent, for example by requiring the generic company to refrain from marketing any form of the generic drug, even forms not covered by patent, founding both of them anticompetitive52. In a prepared statement before the Senate Judiciary Committee on June 17, 2003, Commissioner Muris stressed that all of the early enforcement actions against reverse payment settlements ―alleged that the brand-name company used the generic company‘s right to the 180-day exclusivity under Hatch-Waxman to impede entry by other generic competitors. Commissioner Muris made a number of recommendations for congressional action with respect to Hatch-Waxman, including revisions to the 180-day GE provisions. Many of these proposals were adopted in the 2003 Medicare Modernization Act. For example, the FTC recommended that the brand-name companies and first generic applicants be required to provide copies of settlements agreements to the FTC and the DOJ in order for them to ensure that the 180-day provision is not manipulated in a way to delay entry of additional generic applicant. There was no suggestion that the review provision was intended to police against reverse payment per se. More recently, the FTC has shifted his position on reverse payment settlements. It has come to equate reverse payments settlements with horizontal market allocation agreements, which are normally per se antitrust violations when no patent is involved. The FTC advocates a rule that would essentially find such agreements presumptively illegal independent of the existence of GE parking or restrictions extending beyond the exclusionary potential of the patent53. 52 53 See FTC Generic Drug Study, cit. See, e.g. Palmer v. BRG of Georgia, Inc., 498 U.S. 46, 49 (1990). Karoline Brandi and Federica Lorenzato 385 ________________________________________________________________________________ This is in contrast to the position taken by most courts, which have generally held that an agreement settling a legitimate patent dispute does not violate the antitrust laws. Although an agreement to stay off the market would be illegal per se in the absence of a patent, most courts would recognize that a patent provides a legitimate and independent basis foe excluding an alleged infringer, and that a settlement agreement is legal so long as it does not restrict competition to an extent exceeding the reasonable exclusionary potential of the patent. Courts tend to point the fact that patents are, in a sense, anticompetitive by their very nature, but this is part and parcel of their ability to incentivize innovation. They also point the presumption of validity conferred by the statute to the issued patent54. In contrast, the FTC evinces considerable scepticism regarding the presumption of patent validity, and points out that any exemption from the application of normal antitrust rules to patent settlements does not apply if the patent is invalid, or does not cover the restricted activities. The agency points to statistics showing that courts routinely find asserted patents to be invalid or not infringed, particularly in the case of Paragraph IV patent challenges, and would infer form a patent owner‘s willingness to make sizeable reverse payments that it considers its patent case to be weak. For example, the FTC in its petition for writ of certiorari in Schering-Plough cites to a leading treatise of antitrust law for the fact that a firm ―certain that a patent was valid (…) would have no incentive whatsoever to pay another firm to stay out of the market‖55. The FTC‘s position relies on a body of scholarly literature that stresses the uncertainty of patent litigation and the probabilistic nature of a patent right in respect to its validity and scope prior to court‘s decision. As expressed by Hovenkamp et al., a patent is not a right to exclude competition, but more correctly it is a ―right to try to exclude competition‖56. The FTC has essentially taken the position that in every Paragraph IV litigation, consumers have an expectation interest in the finite probability that the patent challenge will succeed. The FTC argues that any settlement between parties that deprive consumers of the value of this expectation interest is a presumptive violation of the antitrust laws. Under the FTC‘s approach, essentially any reverse payment settlement will be found illegal, regardless of the strength or weakness of the patent, as an inquiry into the merits of the underlying patent case is inappropriate, except in cases of an objectively baseless or sham patent suit. On July 20, 2006, in a prepared statement before the Senate‘s Special Committee on Aging, the FTC reiterated its position that reverse payment agreements are anticompetitive and ought to be presumptively illegal, and warned that the Second and Eleventh Circuits‘ rejection of this position in In re Tamoxifen 54 Schering-Plough Corp. v. FTC, , 402 F.3d at 1066-76 (11th Cir. 2005). In re Schering-Plough Corp., No. 9207, slip. op. at 30 (F.T.C. Dec. 18, 2003). 56 H. HOVERKAMP, M. JANIS, M. LEMLEY, Anticompetitive Settlements of Intellectual Property disputes, cit., 1761. 55 386 The Protection of IPRs in the Pharmaceutical Market after Patent Expiration. An Analysis of the Reverse Payment Settlements in Light of Competition Law ________________________________________________________________________________ Citrate Antitrust Litigation and Schering-Plough had ―staggering‖ negative economic implications and would result in ―tremendous‖ cost to consumers, insurers, employers and the government57. A number of academic commentators have taken even a stronger position against settlements including reverse payments. For example, Hoverkamp et al. have suggested the following rule. In an antitrust challenge, a payment from a patentee to an infringement defendant for the latter‘s exit from the market is presumptively unlawful, shifting the burden of proof to the infringement plaintiff. The infringement plaintiff can defend by showing both (1) that the ex ante likelihood of prevailing in its infringement lawsuit is significant, and (2) that the size of the payment is no more than the expected value of litigation and collateral costs of the lawsuit58. Taken literally, this standard would apparently render any patent settlement involving a reverse payment exceeding litigation costs per se illegal. In contrast, the FTC would recognize pro-competitive justifications for sizeable reverse payments in certain circumstances. For example, in ScheringPlough, the Commission accepted, in principle, that, in certain cases, a reverse payment to a ―cash-starved‖ generic company might enable the latter to enter the market earlier and more effectively, and such payment could be pro-competitive. B. Reverse Payments Settlement in the Courts Courts have repeatedly refused to find a basis for antitrust liability in reverse payments. Generally, courts will only find an antitrust violation if terms of the agreement restrict competition to an extent exceeding the exclusionary potential of the patent. This most typically occurs when the agreement is found to result in a parking of GE, creating a bottleneck blocking all third party generic market entry, or when the agreement requires generic company to refrain from marketing or developing products that would not infringe the patent. This standard is consistent with a line of earlier court decisions that have generally found the agreements involving patents o not violate the antitrust laws, so long as the term of the agreement do not extend beyond the exclusionary potential of the patent. It is also consistent with the FTC‘s early enforcement actions, which only targeted agreements with restrictions alleged to exceed the exclusionary potential of the patent. 57 See Jon Leibowitz, Comm‘r, FTC, Prepared Statement of the FTC bifore the Special Committee on Aging of the United States Senate on Barriers to Generic Entry 17-19 (July 20, 2006). 58 H. HOVERKAMP, M. JANIS, M. LEMLEY, Anticompetitive Settlements of Intellectual Property disputes, cit., 1759. Karoline Brandi and Federica Lorenzato 387 ________________________________________________________________________________ The emerging consensus test for analyzing the legality of reverse payment settlements under the antitrust laws, which focuses on the extent to which the terms of the agreement exceed the exclusionary potential of the patent is exemplified by the Eleventh Circuit‘s holding in Schering-Plough according to which ―the proper analysis of antitrust liability requires an examination of: 1) the scope of the exclusionary potential of the patent; 2) the extent to which the agreements exceed that scope; and 3) the resulting anticompetitive effects59. The court cited as an agreement exceeding the potential of the patent an agreement intended merely to circumvent antitrust laws, or where the settlements resolves a patent litigation involving a patent which the patent owner knows is almost certainly invalid. The court noted that when a patent is involved the mere existence of anticompetitive effects cannot be the basis for antitrust liability, since patents are by their very nature anticompetitive. Antitrust liability only attaches when anticompetitive effects exceed the exclusionary potential of the patent. Recently, the Second Circuit has adopted the same standard, ruling that a patent settlement, regardless of whether it includes a reverse payment, is generally not in violation of the antitrust laws so long as the patent holder is not acting in bad faith beyond the limits of the patent monopoly to restraint or monopolize trade, for example in case of sham or baseless litigation involving a patent that would certainly not survive a judicial challenge60. Courts cite to a variety of rationales supporting the consensus rejection of presumptive illegality based on reverse payment. For example, they typically point to a general policy in favour of the settlement of litigation, particularly with respect to complex and judicial resource intensive patent dispute. In Tamoxifen, the Second Circuit, noted that rules restricting the ability of parties to settle might actually delay generic entry and be contrary to the goals of the patent system. In that decision, the court stressed the public‘s interest in encouraging settlements, particularly in the context complex and expensive litigation, as patent litigation are61. Furthermore, a number of courts express scepticism as to the existence of any distinction between reverse payment settlements and ordinary patent settlements, as long as, if not all, settlements agreements include some form of compensation from the patent owner to the alleged infringer. Courts have also been reluctant to infer from the presence of reverse payments that the patent owner must have viewed the patent case as weak, even in cases involving very large payments, relying on the statutory presumption of patent validity, in contrast with the FTC, which relies on the probabilistic character o patent rights. 59 Schering-Plough, 402 F. 3d at 1066 (citing Valley Drug, 344 F.3d at 1312). In re Tamoxifen Citrate Antitrust Litig., 466 F.3d 187, 213 (2 Cir. 2006). 61 Tamoxifen Citrate Antitrust Litig., 466 F.3d at 207 n. 20. 60 388 The Protection of IPRs in the Pharmaceutical Market after Patent Expiration. An Analysis of the Reverse Payment Settlements in Light of Competition Law ________________________________________________________________________________ In Valley Drug, the Eleventh Circuit cautioned against inferring from the size of reverse payments that the parties lacked faith in the validity of the patent. The court pointed out specifically to the uncertainty inherent in any attempt to accurately assess: 1) a branded drug company‘s lost profit, (2) potential profits for the generic companies, (3) the risk of the defendant‘s ability to satisfy a judgment, (4) the true cost of litigation, or (5) how much of the payment might have been in exchange for provisions of the agreements other than an acknowledgement of the patent validity62. The Second Circuit in Tamoxifen specifically considered and rejected the argument that excessive reverse payments could lead to a presumption of antitrust liability. Essentially, the court found that the antitrust laws do not prevent a patent owner from paying to protect even a weak patent claim. Under this approach the size of the payment becomes irrelevant, because even if one were to take it as evidence of a subjective lack of confidence in the merits of the patent case, a mere lack of confidence does not lead to antitrust liability foe settling the case. Essentially, courts have not been receptive towards the FTC‘s theory of antitrust liability based on the probabilistic nature of the patent right, not the related theory of a consumer expectation interest in the possibility that the patent challenge might have succeeded were it not for the settlement. One issue on which the courts and the FTC are in substantially agreement is that the analysis of the legality of a reverse payment settlement under the antitrust laws should generally not entail any evaluation of the merits of the underlying patent case, at least in cases where the patent case does not appear be a sham or objectively baseless, or the patent does not appear to have been obtained by fraud. In Valley Drug, the Eleventh Circuit stressed the importance of the presumption of validity of issued patents and concluded that ―patent litigation is too complex and the results too uncertain for parties to accurately forecast whether enforcing the exclusionary right through settlement will expose them to treble damages if the patent immunity were destroyed by the mere probability of the patent‖63. The courts advocates a very high threshold to find antitrust liability based on the merit of the patent case. Finally, a consideration of barriers to third party generic entry is relevant in any assessment of the potential anticompetitive effect of a settlement agreement. In the absence of significantly barriers to third party generic entry, a reverse payment settlement with one generic company might have little effect on competition 62 63 Valley Drug Co. v. Geneva Pharms., Inc., 344 F.3d 1294 (11th Cir. 2003). Valley Drug, 344 F.3d 1294. Karoline Brandi and Federica Lorenzato 389 ________________________________________________________________________________ overall, whereas, in the presence of substantial barriers to third party generic entry, an agreement with a single generic company might effectively foreclose any generic competition. Agreement with potential to park GE are of most concern, but there are also other substantial barriers to third party generic entry, primarily arising from the lengthy FDA pre-marketing approval process. The FTC and other critics of reverse payment agreement implicitly assume very high barriers to third party generic entry, which facilitates a reverse payment settlement between two parties with the potential to effectively block all generic competition. However, aside from parking GE, they normally do not explicitly point out and assess other specific barriers to third parties generic entry. Courts, on the others side, often implicitly assume that barriers to third party generic entry are not overly high, with the exception of cases of GE parking, which are considered in violation of antitrust laws. For example, a number of courts noted that, in general, a reverse payment settlement should not be effective in foreclosing competition, particularly where the merits of the patent case are weak, because of the ability of the third party to challenge the patent. This, of course, ignores the issue of the regulatory barrier to third party generic entry mentioned above. Moreover, in Tamoxifen, the Second Circuit noted that a challenged reverse payments agreement was not in violation of antitrust laws, because it did not entirely foreclose competition in the market for the patented compound. The court argued that a strategy of simply paying potential generic competitors to stay off the market would ultimately fail, because, at some point, the cost of paying off subsequent generic challengers would exceed the ability of the patentee‘s supracompetitive prices to support them64. Essentially, the court challenged the plaintiff‘s implicit assumption that an agreement with one generic firm could block all generic competition. To the extent that this analysis is interpreted ad applying to reverse payment settlements in general, however, it seems unrealistic in assuming minimal barriers to subsequent third party generic entry and it seems also inconsistent with the general antitrust doctrine. In general, it is true that horizontal market allocation agreements would not negatively impact competition were it not for some barriers to third party market entry, but courts have classified such agreements as per se illegal regardless the size of entry barrier. In Ciprofloxacin, the court ruled that: ―it is unlikely that the holder of a weak patent could stave off all possible challengers with exclusion payment because the economics simply would not justify it‖65. The reasoning is surely correct, if we assume that barriers to third party generic entry are not prohibitive. However, to the extent barriers to entry impede subsequent generic challengers; the Second Circuit‘s rationale would appear to fail. In fact, as previously noted, the barriers to entry for subsequent generic competitors would be high, and, as a consequence, a reverse payment strategy could be economically feasible and highly effective even in situation where the merits of the patent case are weak, raising substantial competition concerns. 64 65 Tamoxifen Citrate Antitrust Litig., 466 F.3d at 207 n. 20. Ciprofloxacin, 261 F. Supp. 2d at 252. 390 The Protection of IPRs in the Pharmaceutical Market after Patent Expiration. An Analysis of the Reverse Payment Settlements in Light of Competition Law ________________________________________________________________________________ In conclusion, as now, arguments for presumptive illegality of reverse payments settlements agreements have met with little success in the courts, where the current consensus would not condemn such settlements merely on the existence or excessiveness of reverse payments. B. The Reverse Payments Settlements in Europe As mentioned above, in 2008, the EU Commission launched an inquiry to investigate any possible anticompetitive conditions in the pharmaceutical sector. The Commission‘s report presented detailed findings and proposed several ways to improve patients‘ rapid access to safe, innovative and affordable medicine66. The inquiry tied with other EU initiatives aimed at improving patients with safe, effective and affordable medicines, but also was aimed at creating a business environment in order to stimulate research, innovation and competition in the pharmaceutical industry. One of the findings of the inquiry was that generic medicines take too long time to reach the market: on average, consumers have to wait seven months for cheaper generic medicines to become available once patents for brand-name medicine has expired. According to the inquiry, pharmaceutical companies are manipulating the intellectual property rights system and are actively trying to delay the entry of generic medicines onto their markets. As a result, there has been a decline in the number of innovative medicines getting to the market. In an immediate action related to the findings, the European Commissioner for Competition, Mrs Neelie Kroes announced the pending of a first antitrust case resulting from the inquiry. It alleged breaches of European rules on ―restrictive business practices‖ and ―abuse of a dominant market position ―by a French branded- company -Les Laboratoires Servier- and other five generics with which it had made anticompetitive deals. The sector-wide inquiry was opened because the Commission suspected the slowdown in novel medicines entering the market - 27 annually since 2000 as compared to 40 annually between 1995 and 1999- was a systemic problem, and they sought to find out what was causing it. The European Generic Medicines Association (EGA) in a subsequent release emphasised the Commission‘s finding showing that: ―originator companies use a variety of instruments to extend the commercial life of their products without generic entry for as long as possible‖. The EGA called for quick implementation of the recommendations. The organisation had itself made several, including more 66 EU Commission Final Report, available at http://ec.europa.eu/competition/sectors/pharmaceuticals/inquiry/communication_en.pdf. Karoline Brandi and Federica Lorenzato 391 ________________________________________________________________________________ stringent patentability requirements (especially on inventive step), timelines for oppositions and litigation procedures, controls for medical advertisement, sanctions of misbehaviour, as well as community patents and a unified EU patent court. The European Commission found that companies engaged in delaying strategies such as loading up a single medicine with up to 1,300 patents or engaging in litigation. These are won by generics about two-thirds of the time, but can last up to three years. Meddling with regulators was also an issue, as the Commission found ―originator companies intervened in national procedures for the approval of generic medicines in a significant number of cases, which on average led to four months of delay for the generic medicine.‖ The inquiry found that companies would release claims about the generic product‘s safety and quality. The Commission also found ―at least 200 settlement agreements between generic and originator companies,‖ many of which restrict generics, driving up prices for consumers. The vast majority of the settlements were reached in the context of litigation cases, the remaining settlements were concluded out of court disputes and/or during an opposition procedure. In approximately half of these settlements the generic company‘s ability to market its medicine was restricted, a significant proportion of these settlements contained –in addition to the restriction- a value transfer from the originator company to the generic company, either in the form of a direct payment or in the form of a license, distribution agreement or a ―side-deal‖. Direct payments occurred in more than 20 settlements and the total amount of these direct payments from Originator Company to generic companies exceeded euros 200 million. In the view of this inquiry, there is an urgent need for an EU patent and unique patent litigation systems that will cut costs and improve efficiency for drug companies. In fact, nearly a third of national court cases on patents are happening in parallel in other jurisdictions, and in 11 percent of cases they ―reach conflicting conclusions.‖ All stakeholders, including originator companies also supported the idea of a community patent and a unified litigations system. Suspected anti-competitive behaviour across Europe's pharmaceutical industry has now led the European Commission to confirm that it has started surprise inspections at the offices of various companies. According to reports, officials say they "have reason to believe" that those companies now under investigation are "abusing their dominant positions in the marketplace by illegally delaying the launch of generic competitors‖. However, the suspicions include backhand deals with makers of cheaper copycat versions of branded medicines that keep them off the market; a practice which is thought could cost healthcare systems in Europe billions of euros. The EC‘s report, published earlier this year, notes how at least 200 settlement agreements between generic and originator companies were known, and that ―a good number‖ of these were formed to restrict generic entry onto the market. 392 The Protection of IPRs in the Pharmaceutical Market after Patent Expiration. An Analysis of the Reverse Payment Settlements in Light of Competition Law ________________________________________________________________________________ In that occasion, the Commission took the initiative to scrutinise the sector more closely and -where appropriate- to prosecute specific companies for alleged violation of competition law; to focus on enforcing deadlines for evaluating safety, quality and efficacy of medicines and granting them pricing and reimbursement status; to help the European Medicine Agency and National agencies to assess how to solve resources and capacity problems. At the same time, EU countries were required to take actions against misleading campaigns questioning the quality of generic medicine, to introduce mechanisms to accelerate approval procedures for generic medicines and streamline trials that test the added value of medicine and improve