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Last Updated: 12 June 2008
Melbourne Law School
Research Series
Can Substantive Law Harmonisation and Technology Provide Genuine Alternatives to Conflicts Rules in Intellectual Property?
Kimberlee Weatherall
(2006) 11(4) Media & Arts Law Review 393
(At the time this article was published in the Media & Arts Law Review, the author was a member of the Faculty of Law, University of Melbourne.)
Can Substantive Law Harmonisation and Technology Provide Genuine Alternatives to Conflicts Rules in Intellectual Property?
Kimberlee Weatherall[∗]
[393] This article investigates whether there could be practical alternatives to relying on private international law to solve legal boundary issues in cross-border communications contexts, especially those involving IP rights. It points out that certain developments would seem to be tending in this direction — first, with significant moves to remove the legal boundaries (or make them undetectable) through harmonisation of IP law; second, with advancements in technology that seek to ‘reimpose’ geographic borders. Developments in both fields proceed apace, and it is worthwhile to explore what difference, if any, they will make. The conclusion is that, although both contribute at some level, perhaps unsurprisingly, neither provides a complete response.
Introduction
Unlike many communications and transactions over digital networks, intellectual property (IP) laws do not, in general, cross borders.[1] According to the premise of territoriality which forms the framework of international IP law, global IP rights do not exist as such; instead, we have a complex patchwork made up of bundles of rights defined by the laws of each country and applicable, in general, to acts within that country’s territory. These separate IP rights are woven together by a principle of national treatment, which dictates that each country must give the same IP rights to foreign nationals as it does to its own artists, inventors, and other copyright owners.[2]
This situation can lead to some confusion and potential conflicts between legal systems in even the simplest internet communication. Imagine Alan, sitting in Freedonia, uploads a series of photographs, copied from magazines or other websites, onto a server sitting in Freedonia, and makes that website accessible to the world at large. Chris, a resident of Ruritania, is the original photographer for one of the photos uploaded, and considers bringing proceedings for copyright infringement. How is the law to project onto this [394] supra-national exploitation its own national rules?[3] Thus follows a series of inquiries familiar in private international law analyses: first, the question of subject matter or personal jurisdiction: does the court in Ruritania have jurisdiction at all over Alan? Then choice of law: whose laws, for example, determine ownership of copyright in the photographs?[4] What law should apply to determine whether there has been infringement: the law of the place of upload? Download? What if exceptions to copyright infringement differ, such that Alan would be protected by fair use in Freedonia, but not in Ruritania? Which of the many potentially infringing acts will the court seek to remedy?[5] If a court in Ruritania decides there is an infringement, does it order the removal of the photograph, despite the obvious extraterritorial effects such a ruling will have? Finally, there is enforceability of judgments — in this case, of any Ruritanian judgment in Freedonia.
On one level, the answers to these ‘dilemmas’ are obvious. As Zittrain once summarised: ‘C can sue (and A can be prosecuted) wherever a jurisdiction decides it cares to exercise its power — and can realistically make the defendant’s life worse for failing to show up to contest the case, or for showing up and losing.’[6]
In other words, if the Ruritanian parliament has written its copyright law so as to capture Alan’s activities, and if Alan has sufficient assets in or connections with Freedonia so as to make any Ruritanian judgment bite, then Chris is in luck.
However, not every transborder communication on digital networks is so simple. If we introduce choice of law clauses hidden in website terms of use, or additional parties — intermediaries such as web publishers based in third countries, writers of peer-to-peer software, or technology entrepreneurs whose businesses and partners are geographically dispersed — the situation rapidly gains ever more headache-inducing complexities. Moreover, ignoring the issue — legislating broadly, allowing inconsistent laws, and permitting all kinds of litigation be brought applying even to overseas conduct — can have deleterious effects. It can encourage forum-shopping, increase uncertainty for [395] transnational actors, and reduce incentives for settlement of multi-jurisdiction disputes.[7] It contravenes basic principles of fairness to defendants, by potentially subjecting them to the laws of any country where their website can be accessed. Finally, it breaches principles of public international law, in particular, the demands of international comity, which encourages governments of individual countries to impose some limits on the extraterritorial reach of their laws in order to avoid conflicting with, and imposing on the sovereignty of, other sovereign nations.[8]
Courts and legislatures faced with these issues have adopted a range of approaches. In some areas of law, countries have reached agreement regarding the territory in which jurisdiction resides.[9] In other cases, courts and legislatures have developed doctrines for limited extraterritorial application of local law.[10] In some cases, courts conscious of the problematic extraterritorial aspects of the case have tried to frame a limited remedy, albeit with limited success.[11] In some cases, the issues are not resolved: instead, we witness multiple proceedings in multiple jurisdictions on the same basic issues: for example, the ongoing trade mark conflicts between US brewing giant Anheuser-Busch and Czech brewery Budejovicky Budvar, Národní Podnik. As of September 2003, there were 40 lawsuits and 40 administrative cases pending worldwide — in addition to the numerous cases already determined in jurisdictions as diverse as the US, UK, Nigeria, Argentina, Australia, Denmark, Finland, Italy, New Zealand, Spain, and Sweden.[12] The laissez faire approach also has a role: in a number of cases where some local connection can be found, sovereigns have legislated, perhaps preferring overreach of their laws, rather than coverage which is too [396] limited.[13] Courts have adopted the simple, but conceptually unsatisfactory expedient of ignoring or downplaying extraterritorial implications of a case.[14]
One thing is clear: while the legal system has hardly experienced the jurisdictional meltdown some foretold in the early days of the World Wide Web, no single, clear solution has emerged in the body of private international law to these issues in relation to cross-border IP transactions and infringements.
Perhaps however we can bypass the expensive spectacle of multiple proceedings, and the difficult issues of private international law. Since we call on that body of law when communications cross borders and a series of different laws apply, we should not need it if the legal boundaries are removed, or the flow — particularly the accidental flow — of transactions across boundaries is stopped. What is more, certain developments would seem to be tending in exactly that direction. There are significant moves, at present, to remove the legal boundaries (or make them undetectable) through harmonisation of IP law.[15] Simultaneously, advancements in technology are ‘reimposing’ geographic borders: ‘the answer to the machine [may be] in the machine’.[16] Developments in both fields proceed apace, and it is worthwhile to explore what difference, if any, they will make. As we will see, although both contribute at some level, perhaps unsurprisingly, neither provides a complete response.
Harmonisation of Substantive Intellectual Property Law
Why substantive legal harmonisation might help: avoiding the conflict by reducing legal difference
First, let us consider the role of substantive legal harmonisation. The question is simply stated: to what extent can harmonisation be of assistance in avoiding, or resolving, the conflicts which lead to a need for the rules of private international law where cross-border IP transactions are involved?
It should be obvious that the mere fact that law is similar from jurisdiction to jurisdiction does not in fact remove legal boundaries. It is not the same, for [397] example, as having a single supranational law of copyright, or a global patent or trade mark. No matter how similar the American and Australian law of patent, it will still not be possible to bring proceedings in a Queensland court against a small Ohio retailer selling infringing products in Cleveland. Only a truly unified system could achieve removal of boundaries. Without such a system, a plaintiff will still have to choose where to litigate, and may need to litigate more than once to stop conduct in several places. There once was talk of a unified system in copyright,[17] and in Europe there is a unified trade mark system.[18] However, realistically, we are not likely even in the longer term to see global IP rights:[19] substantive (and procedural) legal harmonisation is the second best, but more realistic, option.
Nevertheless, if substantive IP law can be harmonised — if the rules and rights do not vary as between jurisdictions — then where an action is brought, and what law a court applies will not matter — or at least will matter far less — to the outcome of the case. As Zittrain has put it, ‘[a]ttempts to bind sovereigns’ laws substantively more closely together in a world with burgeoning transborder activity continue, and to the extent they succeed some of the structural jurisdictional tensions recede.’[20]
Where law is harmonised, a court can with less compunction ignore the extraterritorial aspects of a case. It can apply a remedy with extraterritorial effects with less unfairness to the defendant.[21] Nor does such a court seriously risk comity with other sovereign nations.[22] Where the law is similar across jurisdictions, too, a court could have some confidence that a judgment will be enforced outside its territory. It will be hard for a defendant to argue, for example, that it is contrary to public policy to enforce a judgment identical to that which would have been rendered by a local court.[23] If IP rules did not vary, too, it might be expected that a treaty on enforcement of IP judgments would be relatively easy to negotiate.[24] At a more informal level, if courts worldwide render similar results, incentives for forum-shopping are reduced.[25] Chances for settlement of multi-jurisdictional IP disputes would be [398] enhanced: there is no point litigating in multiple jurisdictions where the results will be the same each time.
So close? Evidence of substantive harmonisation in IP law
It cannot be doubted that there have been significant moves towards harmonisation of substantive IP law in recent times. Starting from a relatively low base,[26] we have seen the ‘rise and rise’ of IP treaties; the international framework of IP law has become broad in its scope and detailed in its proscriptions.[27]
The foremost element of this international framework is TRIPS — the Agreement on Trade-Related Aspects of Intellectual Property Rights. TRIPS is ‘the most significant milestone in the development of intellectual property in [the 20th] century’[28] owing to a number of factors. Most importantly for present purposes, it covers a much larger group of countries than were bound to the minimum standards in IP law of the Berne and Paris Conventions in the past.[29] It also created mechanisms to enforce those standards.[30] TRIPS imposes detailed rules in all the main areas of IP: copyright, patent, trade mark, unfair competition and confidential information/trade secret, as well as other, less well-known areas such as geographical indications, industrial designs, and integrated circuit layouts.
Post-TRIPS, more multilateral treaties have been negotiated, particularly in copyright. The WIPO Copyright Treaty (WCT) and WIPO Performances and Phonograms Treaty (WPPT), both concluded in 1996, aimed at updating copyright in the digital environment. There is a further multilateral treaty currently in negotiation concerning the rights of broadcasters.[31] The upshot is that many of the essential substantive elements of copyright law, including the key rights of the copyright owner, the protected subject matters, and the rules under which exceptions are allowed, are now firmly ensconced in [399] international law. At a regional level, too, copyright has been the subject of several European Directives, dealing with term,[32] protection of computer programs, compilations of fact and the protection of databases,[33] copyright in a digital context,[34] and some aspects of civil enforcement.[35] These directives, like TRIPS, are enforceable against EU members.
Most recently, we have seen a new trend towards even more detailed proscriptions via bilateral treaties.[36] Beginning in 2000, the US has negotiated bilateral and plurilateral[37] Free Trade Agreements (FTAs) with 15 countries,[38] with more said to be in negotiation.[39] Each of these FTAs includes an IP chapter based on the same underlying ‘template’, thus ensuring that the obligations vary little from FTA to FTA. The template is ‘TRIPs-plus’ — that is, it (a) imposes higher minimum standards of IP protection than those required by the TRIPs Agreement, and (b) removes some of that Agreement’s flexibility to provide for exceptions and derogations from its standards. Moreover, the template, and resulting agreements, are very detailed. There are provisions on copyright term, the relationship with contract, the responsibility of Internet Service Providers for copyright infringements, and provisions which deal with technological measures in considerably more detail than in the WCT itself.[40] Most IP chapters in the recent FTAs extend to close to, or even more than 30 close-typed pages of provisions, specifying obligations to a level of detail more often seen in domestic legislation. The US Trade Act requires that the US Trade Representative negotiate provisions which ‘reflect a standard of protection similar to that found in United States law’, and it would appear that instruction has been taken literally, with US legislation [400] forming the underlying model for the treaty provisions.[41]
Given this level of detail, it might be assumed that the US FTAs will ‘facilitat[e] the development of common positions among participating countries’.[42] In addition, due to the ‘Most Favoured Nation’ provision in TRIPS, each country which provides higher levels of IP protection under one of these FTAs provides that protection to all IP owners, not just those from the other party to the Treaty.[43] More than one commentator has speculated that eventually, the US will move to have these bilateral provisions made multilateral, particularly once enough countries are bound by these rules so as to reduce resistance to such a move.[44] In copyright, then, a casual observer could be forgiven for thinking that we were, indeed, moving to a ‘supranational code’ of copyright.[45]
Our casual observer, however, might turn to industrial property and note less rapid progress towards substantive harmonisation at a treaty level. TRIPS is less comprehensive in these areas for a number of reasons, including differences on matters of substance between the developed countries,[46] and the fact that in patent law, harmonisation started from a lower base.[47] TRIPS leaves significant matters unharmonised, both in patentability[48] and in the rights of the patent owner.[49] Post-TRIPS, while there have been successful multilateral negotiations to streamline procedure,[50] progress on the concept of a ‘substantive patent law treaty’ has been slow. Most recently, the developed countries appear to have abandoned attempts to move forward multilaterally, forming a smaller group to seek integration.[51] Even in the bilateral sphere, the US FTA provisions on substantive patent law are strikingly less uniform across FTAs than the copyright provisions,[52] although some of the US FTAs [401] do seek to answer the questions left unanswered by TRIPS.[53]
As for trade mark, if we were drawing a spectrum of harmonisation through treaty, it might lie somewhere in between patent and copyright. TRIPS is quite specific on what can be registered as a trade mark, and on the rights of a trade mark owner. Supplementing these treaty provisions are soft law instruments developed by WIPO designed to offer guidance on how certain terms in trade mark ought to be interpreted;[54] some of these have been elevated to the status of binding treaty obligations through the US bilateral FTAs.[55] There remain, however, some significant differences in substantive law, for example on the question of whether use is required before trade marks can be acquired, and in the area of trade mark dilution which is a doctrine not found in all jurisdictions or in international treaty.[56] Interestingly, the US FTA provisions have not really sought to harmonise such differences: they appear to focus on making systems of registration more efficient and accessible.[57]
Particularly in systems of registered rights such as patent and trade mark, however, it would be a serious mistake to look only at treaties for legal concordance. An important part of harmonisation in such areas is practice within patent and trade mark offices which examine and grant such rights.[58] Here, too, there has been progress towards harmonisation. In patent, for example, the ‘Trilateral Offices’ — the three most important patent offices, that is Japan, Europe and the US — are cooperating on examination, search, and other matters, and have entered into a formal Memorandum of Understanding to facilitate greater integration and cooperation.[59] In trade [402] mark, we have not actually seen such explicit cooperation,[60] although a common jurisprudence is being developed by the European Court of Justice in Europe. And in both patent and trade mark, the availability of a centralised system for applying for rights — the Madrid Protocol in trade mark,[61] and the Patent Cooperation Treaty[62] — is likely particularly over time to lead to closer practice, through the force of practice and the submission of similar applications across a range of countries.
In summary, then, we have seen significant moves towards harmonisation of IP law: through treaties, both multilateral and bilateral; and through the development of common practice in patent and trade mark offices. This survey is necessarily incomplete: to be comprehensive we would need to look also to more informal mechanisms of harmonisation, for example, through courts citing overseas judgments, or through informal influences in the profession and among judges. Here too, no doubt, we could find moves towards common legal standards and understandings.[63]
But no cigar: why substantive legal harmonisation will not remove the problem
Despite the evidence in the last section, there are two reasons to be sceptical that these developments will remove the need for private international law in dealing with trans-border IP disputes.
We cannot reach true substantive harmonisation of IP law in the foreseeable future
The first problem is the evidence of harmonisation. The fact is that many gaps in the coverage of IP treaties remain. Despite its radical comprehensiveness,[64] TRIPS was still a compromise between countries with very different prior-existing systems. As a result, it is both incomplete and abstract in its language, leaving considerable ‘room to manoeuvre’ in domestic implementation.[65] On its own, TRIPS does not, and cannot harmonise laws sufficiently to allow parties or courts to ignore legal boundaries.
[403] Even taking other multilateral treaties, and bilateral treaties into account, there are still gaps in the international prescriptions: particularly at a multinational level, and even in the most detailed bilateral treaties. Differences are not confined to minor issues — they include, for example:
This list is only a sample of areas where there is as yet no real agreement on a set of common rules even in the most detailed of the bilateral treaties.
In relation to practice, too, anecdotal evidence and research indicates that we have a long way to go yet. For example, it is well known that patent claim formats vary as between jurisdictions: some jurisdictions even require certain claim formats that are specifically not recommended, even not permitted in other jurisdictions.[71] At the more scientific end of the spectrum, one recent large-scale study of granting decisions by the European, US and Japanese Patent Offices by a group of economists gives us reason to believe that in fact different decisions are being made regarding patentability in relation to the same invention.[72] These differences are notable even before we descend to looking at differences in reasoning and interpretation of these rules at the level of the courts.
Moreover, there is good reason to believe that this condition of difference is a permanent, rather than a temporary one, for a number of reasons. First, as [404] a number of commentators have traced, periods in IP law have tended to follow an almost cyclical pattern, with periods of ‘multilateralism’ and moves towards harmony interspersed with periods of differentiation and conflict.[73] Claims that we are seeing an inexorable trend towards harmonisation in this context are profoundly ahistorical.
Second, as long as IP is a matter of economic and social policy, there will be areas where agreement between nations with different economies is difficult.[74] As even Professor Jane Ginsburg has acknowledged, in copyright at least, there are good justification for nations to have flexibility in areas such as (a) exceptions, where copyright law interacts with social policies, such as the encouragement of education and free speech and (b) ownership, where IP law interacts with cultural policy, such as the aim of supporting individual creators.[75] Similarly, there are strongly held views between countries on what kinds of things should be patentable, particularly in relation to newer areas for patent such as business methods.
Third, harmonisation of IP law, and the negotiation of further common standards in IP, have become intensely political issues, making multilateral negotiations more difficult. In short, as Yu has put it, there is a ‘demand for diversification’, and for laws which reflect the diverse economic interests of different kinds of countries.[76] Within WIPO, where such negotiations ordinarily occur, there is significant conflict over moves to further ‘harmonise’ and strengthen IP law. Developing countries are less uninformed, and perhaps less divided, than they were when TRIPS was negotiated.[77] In 2004, for example, Brazil and Argentina introduced a ‘Development Agenda’ into WIPO, calling for greater consideration of development interests and ‘user’ interests.[78] Further discussion of the Development Agenda has revealed significant splits between countries on its legitimate scope and ‘what should be done’: the Agenda has also been used as a reason not to move forward on other harmonising initiatives until it is addressed. This is likely at least in the short term to make further multilateral harmonisation through WIPO more difficult. Negotiations within the WTO have already broken down with the recent collapse of the Doha round.
One response from the US in particular has been to ‘regime-shift’ — to turn [405] to bilateral (or regional) negotiations where multilateral ones fail.[79] And yet here, too, there is some reason to be sceptical that it is a complete answer. First, such agreements are not likely to be negotiated with every country. One of the reasons why the US has been successful in obtaining consent by various countries to an extensive IP chapter is owing to the importance of its market: representing, as it does, some 20% of the world economy, it has the most to offer less developed countries in terms of market access and investment opportunity in other areas which are of importance to developing country economies. And yet, some countries with different views on IP (for example, India and China) have sufficiently large local economies as to render this temptation less compelling. Moreover, the US approach is not likely to be successful with Europe, which has a highly developed comprehensive and notably different IP system of its own negotiated over a long period of time through a series of detailed Directives.[80] Negotiations between these two blocks would, we can expect for the moment, have to lead to compromise, and likely, high level language and gaps similar to those we see in TRIPS. Difference, in other words, will remain.[81]
Furthermore, there is some evidence that even the highly detailed provisions of the US bilateral FTAs lead to different rules once implemented into legislation, as local legislators seek to ‘adjust’ provisions to local palates, or resist identical implementation. It is beyond the scope of this article to examine these situations in detail: suffice it to point to the area of performers’ rights in copyright, where Australian law which was originally quite similar to US law became very different post-FTA: a phenomenon I have explored extensively elsewhere.[82] While there are mechanisms which the US can use to ‘counter’ such resistance,[83] there are differences in local [406] implementation,[84] and these stand as strong evidence that no matter how detailed the treaty provisions, full harmonisation cannot be achieved by these means.
Substantive legal harmonisation cannot remove the need for private international law
Even if we could reach a common set of rules, implemented in a common way, there would still be a problem with the premise: that strong harmonisation can reduce the arena for private international law. There are two key reasons to doubt this is true.
One issue is that an assumption about what it means to ‘harmonise law’ underlies the rosy predictions outlined earlier. ‘Harmonisation’ is an easy word to bandy about, but we need to be quite specific about what we mean by the word lest we elide different kinds of legal concordance. One definition is offered by Braithwaite and Drahos: ‘the prescription that different levels of government and different governments should set the same rules’.[85] This simple definition, however, is unclear: what exactly constitute ‘rules’ for these purposes? Are the ‘rules’ the law as written and published: that is, legislation and regulations? Or does the definition extend include the practices of bureaucracies (themselves partly written, partly unwritten) and the legal approaches and developments which constitute the unwritten law as developed by courts?
To be blunt: for harmonisation to remove the need for private international law, we need not just the same rules, but the same results on identical facts. Only then can a court apply local law to extraterritorial parts of a case without risking unfairness to a defendant or international comity. Only if results are the same will incentives for forum-shopping or multiple proceedings be removed.
Most of the ‘evidence’ of harmonisation considered above related to statements of rules at the level of treaty. However, as any comparative law expert will gladly tell you at considerable length,[86] it is simply not enough to look at ‘the rules’ as such, since even where two countries apparently have the same rules (that is, they have rules written in the same terms), courts in those two countries may still generate different results on the same facts, as a result of different interpretive approaches or the impact of other elements of the legal [407] system.[87] This will be true no matter how close the similarity of language in the rules. In fact, we know very little about just how harmonised IP laws presently are, because we have not done the detailed comparison of results across jurisdictions that would be required. And if as researchers we do not know how harmonised laws are — neither do courts, nor parties to disputes. This uncertainty will remove most of the touted benefits of harmonisation: parties will be likely to forum shop and refuse to settle multi-jurisdictional disputes even after one unfavourable result, in the hope that it will be ‘better luck next time’.
A second issue is that to obtain the same results, even on the same rules, we need identical facts. And yet in many cases, the facts will vary from jurisdiction to jurisdiction, making it worthwhile to litigate in multiple places, or protest the simple application of one set of rules by one court. In the Budweiser disputes referred to earlier, there are differences of fact (in particular, the timing of applications for rights) that have led to different results in the various cases.[88] In trade mark and passing off cases, the existence of local reputation and the characteristics of local consumers can be important — and again, will vary.[89] In patent, the level of the local ‘common general knowledge’ may be important to the validity of a patent. And the divisibility of copyright rights — rights may be assigned to different people in different geographic areas — means that the owner of copyright may vary from jurisdiction to jurisdiction even where the basic rules of ownership are the same.
Concluding comments on substantive legal harmonisation
The preceding arguments are intended to highlight that substantive legal harmonisation is a highly complicated phenomenon, which must, to be effective, reach far beyond the statement of IP rules at the level of treaty. Importantly, while there have been very significant moves towards harmonisation across the range of types of IP, still, the coverage of treaties is limited, and likely to remain so. Moreover, even detailed treaty provisions may not have a truly harmonising effect, as local implementations vary and local legislators and stakeholders resist full assimilation. True harmonisation sufficient to remove conflicts requires identical methods of interpretation and results: there is reason to doubt these are present. Finally, local facts matter.
This is not to say that legal harmonisation has not had some effect. The increasing number of common rules does to some extent make ignoring or avoiding conflicts issues easier and more supportable. However, the hard cases will continue to require resolution through conflicts rules — and the number of gaps and differences identified above ensure that there will continue to be numerous hard cases. On this basis alone, private international law will not be out of a job just yet.
Technology
Why technology might help: avoiding the conflict by avoiding slippage across borders
[408] The second of the two parallel developments which, it has been argued, might reduce the need for the rules of private international law is the advance of ‘bordering’ technologies — that is, technologies that can re-impose geographical borders in a digital networked environment. As with substantive legal harmonisation, the argument here is a deceptively simple one: if the problem in a digital context is that communications slip easily across borders, and that courts and legislatures may as a result impose liability where it is unfair or inappropriate to do so, that calculus changes if there is technology to reimpose geographic boundaries, and prevent such ‘slippage’.
Such technology could have three key effects. First, it could reduce the slippage of communications across geographical and legal boundaries in the first place: to go back to the example that commenced this article, if access to Alan’s Freedonian website from Ruritania can be prevented, Chris will have no reason to sue in Ruritania. Second, such technologies could remove the unfairness of imposing liability on Alan in Ruritanian courts: if the tools for preventing access were readily available, but not used by Alan, it is less arbitrary to hold him responsible under Ruritanian law. Third, developments in technology may give governments and courts regulatory tools to determine the application and reach of their own law, and in particular, to limit the effects of laws and court orders according to the legitimate scope of their jurisdiction.[90] A Ruritanian court might, for example, require Alan to limit access in Ruritania rather than ordering the complete takedown of the material.
In some senses, the effect of technology is opposite to that of substantive legal harmonisation: where the latter might remove the significance of geographic borders, the former might reimpose them in a digital context from which it may have seemed they had disappeared forever with the rise of the World Wide Web. At least one commentator has gone so far as to put the two as simple alternatives: either private international law will impose borders, or technology will.[91]
Can technology be effective to solve the issues of private international law? There are two questions: first, can technology re-impose borders, and second, assuming it can do so to some extent, will this solve the private international law problems?
What can the technology do?
The most obvious question that needs to be answered in this connection is: what can the technology do? For obvious reasons of length and expertise, it [409] is not possible to offer here a complete treatment of the available technologies, and their capabilities. In any event, it is dangerous to try: anything written today is bound to be incorrect tomorrow, next week, or next month. What the following discussion can do is offer a brief survey of the types of technology which may be relevant, and some general comments on the state of the art. Three areas of development are most relevant here: geolocation technologies, which work at the point of dissemination of a communication; filtering technologies which operate at the point of receipt; and the rise of networked services and products which can be updated long after their release.
A further area of technology which might be considered relevant is digital rights management, also known as ‘DRM’. To overly generalise and simplify a number of areas of technology and a large literature, DRM covers technologies which are used to control access to, and use of, copyright-protected content. Under theoretically perfect DRM, only those uses allowed by a copyright owner are possible. Some forms of DRM do have a relation to geographical boundaries: region-coding of DVDs, for example, is designed to control the geographic areas within which copyright is accessed. Since DRM is a catch-all category covering all kinds of different technologies, this article does not attempt to offer any comprehensive treatment. Suffice it to say that where effective, DRM aims effectively to ‘opt out’ of legal systems by using technology to define rights and so would tend to avoid legal issues including private international law.[92] At least at this point, however, and in the short term, there are significant doubts as to the effectiveness of DRM technology.[93]
Geolocation Technologies
Geolocation technologies can be defined, broadly, as those technologies used to deduce the geographic location (geographic location) of a party, for example on the internet. Many internet users would be familiar with the visible effects of filtering.[94] Type www.google.com into a web browser in a country other than America and you will be re-routed to a ‘local’ Google (for example, www.google.com.au) which offers benefits such as the ability to search ‘Australian content only’. Users may be less familiar with the disadvantages of local versions: they may block search results which are accessible via ‘American Google’.[95]
The concept of geolocation is a broad one, which at its crudest, covers technologies which ask a user to identify their location (for example, through a drop-down menu, or additional webpage), or identify the location of a user by the address at which their credit card is registered or the language of choice of the browser software used. In general, however, when people refer to geolocation technologies today, they are referring to technologies, such as [410] software which can automatically identify the location of a user from their IP Address, or Internet Protocol Address. An IP Address is a unique number that devices, such as personal computers and servers, use in order to identify and communicate with each other on a computer network which uses the Internet Protocol standard for communication. It is, in effect, the ‘post office box’ to which internet communications are sent, and plays a key role in any internet transaction.[96] To take a simple example: the viewing, by Chris in Ruritania, of Alan’s Freedonian website, involves a series of technical steps:[97]
The key to effective geolocation is this: if Chris’ IP address can be linked to a particular geographical location by the Freedonian server, then the server can be programmed to refuse requests from certain geographical locations, or accept only requests from one geographical location. Undesired slippage across borders can be significantly reduced.
Very early in the life of the World Wide Web there were strong commercial incentives to develop geolocation tools.[98] Hosts of websites are interested in knowing where their traffic comes from: for interest, information, to allow better ‘tailoring’ and importantly, to allow targetting of advertisements. As the technology has become more sophisticated, it has been used for more and more ‘critical’ applications. So, for example, a number of organisations now make copyright-protected material available for free download online, in circumstances where it is intended that only people living in one country will be able to access the material.[99] The BBC, for example, provides material through its ‘Creative Archive’ website for download for manipulation. It was considered important, when this initiative was taken, to limit the use of the material to the British taxpayers who had funded its creation. Thus today, a foreign user who attempts to download material will be met with a page stating that they appear to be visiting from outside the UK, and that material is only licensed for download in the UK. Similarly the American broadcast company ABC provides free downloads of popular [411] television series episodes such as Lost or Commander in Chief only for American consumption. Once again, a foreign user who attempts to download such material will be met with the error message noting that the site is intended for American audiences only.
Such technologies are not 100% effective. The databases on which geolocation tools are based have been created from a series of different information sources, and, while they have improved over time, do not claim to be wholly accurate, although according to recent literature, current databases can determine location with over 99% accuracy at a country level.[100] In addition, such technologies can be avoided using various technical methods. A user may for example route their communications through an ‘anonymizer’ which strips their communication of such identifying information as the original IP address, or through a proxy server which causes the communication to appear to be from the ‘right place’.[101] There are countermeasures to such avoidance techniques, but to some extent, this is always a ‘cat and mouse’ game: there will be commercial incentives for better geolocational tools at the same time that there will be people seeking tools to protect their privacy, to ‘mask’ their location and identity (and, sometimes, to gain illegitimate access to material!). It is worth noting, however, that the potential does exist for more effective geolocation tools over time — particularly as the internet becomes more ‘wireless’ and more mobile and other technologies, such as Global Positioning System (GPS) are integrated into internet-connected devices.
An important limitation of geolocation technologies, however, is that they must be used by person initiating a communication. Communicators may choose not to use such technologies, or be insufficiently literate in technologies to use them. As a technical answer to avoiding private international law issues, therefore, geolocation technology is incomplete.
Country-level and ISP-level Filtering
The second form of technology which is relevant in avoiding private international law issues is filtering. Filtering may be relevant because, like geolocation software, it can be used to reimpose geographical boundaries to internet communications, although in this case, filtering occurs after a communication is initiated: at the ‘receipt’ end of a communication or at some intermediate point.
Briefly, filtering refers to a range of technologies which are used to block communications based on their point of origin, or, more usually, their content. Filtering may vary according to:
Filtering, like geolocation technology, has been used in commercial or ‘private’ contexts. British Telecom, for example, developed the CleanFeed system to block communications with known sources of child pornography.[103] Google routinely blocks access to sites about which it has received private complaints regarding, for example, copyright infringement.[104] Filtering has also famously been employed by certain authoritarian governments which seek to exercise control over internet communications from general websites to chatroom postings and search results: most famously, by China and Saudi Arabia, but increasingly by other countries such as Vietnam also.[105]
Country-level filtering, of the kind implemented by China or Saudi Arabia is not obviously related to issues of private international law: rather than limiting particular spillovers or communications, it operates at the level of blunt ‘wall’ against every type of communication of a particular class (for example, politically threatening communications, or pornography). On the other hand, filtering out of content at an intermediary level, such as at the level of local search engine or local ISP, could be used to prevent particular communications reaching an audience located in a particular geographical area. For example, if the Australian version of Google.com.au, in response to a local letter of complaint, drops from its list of search results an overseas, IP-infringing website, then once again, we can say that a transborder communication has been prevented, and the need to consider whether to apply local law to overseas conduct in local courts is averted.[106]
Like geolocation technology, filtering, even at the sophisticated level [413] imposed by China, can be avoided by the technically savvy user[107] or content provider.[108]
Automatic and forced updating of technology
The final technological development which should be noted here is the rise of automatic, or forced, updating of software products or software embedded in consumer electronics. This rather obscure phrasing seeks to highlight a notable development in recent electronic products, both software per se and electronic products with ‘embedded’ software, to take advantage of ‘always on’ internet connections to update, whether automatically or as a requirement, well after the initial purchase of the product. Consumer products are replete with recent examples, including:
The importance of a shift towards technology which can be updated after it is released is that it significantly increases the capacity of governments and courts to make orders requiring changes to technology. The trend towards such [414] capacity is an important part of making technologies such as geolocational tools or filtering effective: if technology can be changed, courts can take active steps to stop infringements.
Again, these kinds of technology are not perfect: it is well known that both TiVo and iTunes have been frequently ‘hacked’ or modified by technologically savvy users.[112]
Why technology is not a panacea
Despite the significance of the technological developments outlined above in reimposing geographical borders in an online environment, there is reason, once again, to doubt the most sanguine of the predictions outlined above regarding the ability of technology to ‘solve’ the private international law ‘problem’.
The technologies are imperfect and avoidable
One common theme which emerges from the brief discussion above, and the more extended literature on technical tools to control internet communications, is that such technologies are not — at this stage or for the foreseeable future — perfect in their regulation: in reality, they can be avoided by users with some skill and some determination. This would not, in itself, be complete rebuff to the arguments outlined above — because in reality, in law, perfection is generally unnecessary. In many areas of law in many countries, courts have developed ‘targetting’ tests: tests which will find jurisdiction only where the online communicator has in some way ‘targetted’ the jurisdiction of receipt.[113] Even in areas of ‘strict liability’, remedies may be much reduced if the number of accidental communications to a particular jurisdiction can be limited.
Using technological capacities can be controversial and difficult for courts and legislatures alike
The second potential issue that arises in relation to technology as a solution to private international law issues is that it is highly unlikely that a majority of communicators will adopt such technologies entirely voluntarily. Thus utilising the capacity of technology to impose borders on communications will often require some government involvement: positive obligations either in legislation, or in court order, requiring geographical borders to be technologically imposed or that certain communications be blocked.
While some commentators have referred to this development as both useful and inevitable,[114] and while, in addition, court orders requiring changes to products are not really exceptional in the law, nevertheless, it is important to be aware of the potential difficulties involved where a court or legislature makes such an order. While not directly a private international law case, the [415] difficulties here are well illustrated by the orders given in the Sharman/Kazaa litigation.
In this Australian Federal Court case, owners of copyright in sound recordings sued Sharman Networks (Sharman) for authorising copyright infringement (inter alia). Sharman was a company which controlled and distributed the Kazaa software, a popular peer-to-peer file-sharing application. The Federal Court found that Sharman Networks, and a number of other respondents, were liable for such authorisation.[115] The details of the case are unimportant here, and are, in any event, discussed by Graeme Austin in his related contribution to this symposium. For present purposes, the interesting point is the order which Wilcox J made in the case. Wilcox J made two key orders:
What was interesting about this combination of orders was that it evinced a willingness by the judge to become involved in (a) technology design and (b) ongoing supervision of the technology redesign (through the requirement of ‘court approval’ of any protocol). It did not take long for problems with this approach to reveal themselves. Two key issues emerged. First, the judge’s orders were criticised by a number of technologists for evincing poor understanding of the technology.[117] Whether such criticism was justified is beyond the scope of this article: it is sufficient to point out that there are real issues when ‘lay’ courts decide to order particular technological fixes. Wilcox J was not the first judge to encounter such problems: the trial judge in the Napster litigation encountered similar issues over the ineffectiveness of filtering technologies used by Napster.[118] Second, the particular technological ‘tweaks’ required by the judge clearly involved cooperation between the parties in the case. That Wilcox J was willing to make such an order was perhaps surprising, given the clear animosity between the parties, and the traditional reluctance of the courts to grant injunctive relief that will involve forcing parties into an ongoing relationship, which will require ‘ongoing [416] supervision’ by the court of the order.[119] Problems soon emerged, with the parties unable to cooperate. In December 2005, the applicants in the case filed contempt proceedings, leading to dispute over whether contempt was possible of such an order.[120]
Similar issues are likely to arise where a court orders that geolocational technologies be applied, or that action be taken to prevent communications to a given country. How effective must the technology be? Who is to be the judge of how effective it must be? How relevant is the expense of technology to be used? How is cooperation, where necessary, to be ensured, particularly in the longer term? While it is right to be sympathetic to the intentions of Wilcox J in framing his order, and the care he took in doing so, subsequent events are testament to the difficulties involved in such orders.
The machine giveth, and it taketh away: technological advances may complicate private international law questions
The final difficulty with technology as a solution to private international law issues is that in some cases, the availability of ‘bordering’ technologies may actually complicate the task of a court, by requiring a court to confront the private international law aspects of its order. Once again, this issue was highlighted by recent events in the Kazaa litigation.
As noted above, Wilcox J made an order restraining authorisation of infringement and effectively suggesting technological means for achieving this end. What happened next was interesting: Sharman chose, instead of applying filtering to all its technology, to block the ability of Australians to download the Kazaa software.
In the particular circumstances of the case, it was arguable that such a move was not compliance with the order of the court, because it did nothing to end the authorisation of infringement by existing users of the Kazaa system in Australia. But this step by Sharman highlights a potential dilemma for an Australian court. What if Sharman’s step had limited infringements within Australia (for example, if filtering was imposed only on Australian users of the software). Would this be sufficient? As Austin has elsewhere noted, the Australian court effectively adopted the technique of ignoring the extraterritorial aspects of its order, by making a general order regarding filtering which appeared to be aimed at all Kazaa users. Just as parties may be required to use geolocational and other technological tools — are courts also required to use such tools to limit the extraterritorial effects of their orders? If so, will this reduce the enforceability of IP law generally?
Concluding comments on technology
The preceding discussion shows that, just as the efficacy of substantive legal harmonisation in avoiding private international law issues is a complex question, so too is the efficacy of technology. Certainly, as many commentators have noted, technology is developing in a direction which is enabling the re-erection of geographical boundaries which many believed lost [417] in the first fervour of the internet phenomenon. Geolocational tools, filtering at the level of intermediaries, and the availability of technological ‘updates’ to products all conspire together to make the internet more obviously regulable by governments, and enable governments, and courts, to apply their law with less compunction.
And yet problems remain. There are always questions about the effectiveness of such technologies. More importantly, however, the involvement of courts in technological design raises difficult questions: of expertise, and of the limits of the courts’ or governments’ own power to adjudicate or legislate: given technological tools, will courts and governments, too, have to be more conscious of the limits of their power?
Conclusions
This article has examined the efficacy of two parallel developments which have been touted as providing means to avoid private international law problems in relation to cross-border communications. We have considered whether substantive legal harmonisation can remove, or technology reimpose, geographical boundaries in IP disputes in an online environment. The conclusion is — perhaps unsurprisingly — in the negative. Private international law will continue to be needed because neither substantive legal harmonisation, nor technology, is likely to be effective to remove the problem in the short to medium term. Indeed, both developments have many complexities; both are likely to continue to throw up new legal questions along the way. This is good news, perhaps, for private international lawyers and ‘cyberlaw’ academics: it is not so good, perhaps, for those hoping for a reduction in complexity. But perhaps in today’s integrated, technologically advanced world, simplicity is just too much to ask.
[∗] BA, LLB (Hons) BCL (Oxon) LLM (Yale); Associate Director, Intellectual Property Research Institute of Australia, Lecturer, University of Melbourne Faculty of Law.
[1] S Ricketson and J C Ginsburg, International Copyright and Neighbouring Rights: The Berne Convention and Beyond, Vol 2, Oxford University Press, Oxford, 2006, [20.17]. There are, of course, multiple exceptions to, and qualifications of the territoriality principle: see below n 65.
[2] J C Ginsburg, ‘International Copyright: From a “Bundle” of National Copyright Laws to a Supranational Code?’ (2000) 47 Journal of the Copyright Society of the USA 265. The principle of national treatment is found in all the key international treaties dealing with intellectual property, including Berne Convention for the Protection of Literary and Artistic Works (Berne Convention) art 5; Paris Convention for the Protection of Industrial Property (Paris Convention), art 2, and the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) art 3: see Ricketson and Ginsburg, ibid Vol 1, pp 295ff.
[3] J C
Ginsburg, ‘The Cyberian Captivity of Copyright: Territoriality and
Authors’ Rights in a Networked World’
(2003) 20 Santa Clara
Computer and High Technology Law Journal 185 at 187.
[4] Rules regarding
ownership of copyright vary between countries: see G W Austin,
‘Intellectual Property Politics and the Private
International Law of
Copyright Ownership’ (2005) 30 Brooklyn Journal of International Law
899; Ginsburg, ‘Supranational Code’, above n 2, 276–7. In the particular case of
the independent contractor creator, Australian law grants copyright to the
independent contractor
(Copyright Act 1968 (Cth) ss 35, 99, 100) —
subject to some exceptions for photographs, paintings, portraits (s 35), sound
recordings (s 97(3)), and films
(s 98(3)). On the other hand, under
‘work made for hire’ doctrine in the US, the
‘commissioner’ of many works
gains rights: see 17 USC §201(b)
and §101 (definition of ‘work made for
hire’).
[5] In the simple scenario outlined, there may be multiple infringements: reproductions in both Freedonia and Ruritania; a ‘communication to the public’ — perhaps in one country, perhaps in both. It would be possible for a court to seek to remedy only those infringements which are definitely ‘local’: alternatively it may craft a general remedy that seeks to end all the infringements: see further below.
[6] J
Zittrain, ‘Be Careful What you Ask For: Reconciling a Global Internet and
Local Law’ Harvard Law School Berkman Center For Internet and
Society, Research Publication No 2003–03 5/2003, available at
<http://cyber.law.harvard.edu/home/uploads/204/2003-03.pdf>
, at 2
(emphasis in original).
[7] Where there is
conduct, or assets, across jurisdictions, the laissez faire approach may
require multiple proceedings in various jurisdictions. In theory, if laws across
jurisdictions are similar, the first
judgment by a court will provide a basis
for a global settlement. The more uncertainty there is about a likely result,
the harder
settlement becomes: see G L Priest and B Klein, ‘The Selection
of Disputes For Litigation’ (1984) 13 The Journal of Legal Studies
1.
[8] For the rationales which motivate rules of private international law, see P E Nygh and Martin Davies, Conflict of Laws in Australia, 7th ed, LexisNexis Butterworths, Chatswood, 2002, ch 1.
[9] See, eg, Council Directive 93/83/EEC of 27 September 1993 on the coordination of certain rules concerning copyright and rights related to copyright applicable to satellite broadcasting and cable retransmission (OJ L 248, 6 October 1993, p 15).
[10] For a
survey of some of these doctrines in copyright, see G W Austin, ‘Importing
Kazaa — Exporting Grokster’ (2006) 22 Santa Clara
Computer and High Technology Law Journal 577. For a survey in the area of
trade mark law, see G B Dinwoodie, ‘Trademarks and Territory: Detaching
Trademark Law from the
Nation-State’ (2004) 41 Houston Law Review
885.
[11] The
most obvious example here is the case of Yahoo! Inc v La Ligue Contre Le
Racisme et L’Antisemitisme, in which a French court ordered
Yahoo! to prevent, so far as possible, French citizens’ access to auctions
of Nazi memorabilia.
Despite the efforts of the French court to limit the ruling
to French citizens, rather than seeking to ban the auctions outright,
the case
still led to ongoing conflict and proceedings in the US for a declaration of the
unenforceability of the judgment. The case
is discussed in Zittrain, ‘Be
Careful What you Ask For: Reconciling a Global Internet and Local Law’,
above n 6, and T Gerlach, ‘Using
Internet Content Filters to Create E-Borders to Aid in International Choice of
Law and Jurisdiction’
(2005) 26 Whittier Law Review
899.
[12] R M Terpstra, ‘Which Bud’s For You? An Examination of the Trademark Dispute Between Anheuser-Busch and Budejovicky Budvar in the English Courts’ (2004) 18 Temple International and Comparative Law Journal 479 at 479 (citations omitted).
[13] One example, given by Austin is Australian copyright law which extends the ‘right of communication to the public’ in copyright to a number of extraterritorial contexts: see Austin, ‘Importing Kazaa — Exporting Grokster’, above n 10.
[14] Ibid. This of course may be a perfectly viable technique where judgment rendered will not require enforcement in another jurisdiction. If enforcement overseas is required, extraterritorial application of law can be a potential reason for the overseas court to refuse to enforce.
[15] See, eg, P K Yu, ‘Five Disharmonizing Trends in the International Intellectual Property Regime’, Michigan State University College of Law Legal Studies Research Paper Series, Research Paper No 03–28, available at <http://ssrn.com/abstract=923177> , at 6.
[16] This famous phrase comes from Charles Clark, ‘The Answer to the Machine is in the Machine’, in P Bernt Hugenholtz (ed), The Future of Copyright in a Digital Environment, Kluger Law International, The Hague, 1996, pp 139–46. One author who has suggested that technology may have a role here is G B Dinwoodie, ‘The International Intellectual Property Law System: New Actors, New Institutions, New Sources’ (2006) 10 Marquette Intellectual Property Law Review 205 at 208 (noting that ‘technological measures have the capability to reterritorialize international knowledge markets and implement national norms’).
[17] Ginsburg, ‘Supranational Code’, above n 2.
[18] Council Regulation 3288/94 of 22 December 1994 Amending Council Regulation 40/94 of 20 December 1993 on the Community Trade Mark, 1994 OJ L 349, administered by the Office for the Harmonisation of the Internal Market (OHIM).
[19] Even in Europe, the Community Trade Mark sits beside local trade marks, and there is no single European patent — and this in a highly integrated region.
[20] Zittrain, ‘Be Careful What you Ask For: Reconciling a Global Internet and Local Law’, above n 6, at 10.
[21] Strictly, of course, there is still some unfairness: arising from factors such as convenience to witnesses and the inherent disadvantages a defendant may face litigating in an unfamiliar jurisdiction.
[22] See Austin, ‘Importing Kazaa — Exporting Grokster’, above n 10.
[23]
In the (more conceptually pure) alternative, a court seeking explicitly to
address the transnational aspects of a case could, perhaps,
apply a presumption
that the laws of any member country comply with international harmonised rules,
leaving proof of the contrary
to a defendant: Ricketson and Ginsburg, above n 1, 1314 at [20.32].
[24] On the
controversies in this area, see R C Dreyfuss and J C Ginsburg, ‘Draft
Convention on Jurisdiction and Recognition of
Judgments in Intellectual Property
Matters’ (2002) 77 Chicago-Kent Law Review
1065.
[25] Although not removed entirely: there are reasons other than law for strategic forum choices: for example, familiarity, convenience to significant witnesses, efficiency (or inefficiency) of a particular court system, or the expertise of judges.
[26] See G B Dinwoodie, ‘The Architecture of the International Intellectual Property System’ (2002) 77 Chicago-Kent Law Review 993 at 995.
[27]
Ginsburg, ‘Supranational Code’, above n 2.
[28] D Gervais,
The TRIPS Agreement: Drafting History and Analysis, 1st ed, Sweet &
Maxwell, London, 1998, p 3
[1.01].
[29] The WTO, as at 15 December 2005, had 149 members. All must comply with TRIPS, subject to ‘grace periods’ for less developed and least developed countries: TRIPS arts 65–6.
[30] Disputes under TRIPS may be brought through the Dispute Settlement Understanding, Annex 2 to the WTO Marrakesh Agreement. The DSU has advantages over past methods, including the availability of sanctions against a defaulting party — even in unrelated markets. The frequency with which parties have used the DSU is some testament to its effectiveness: in the first five years, the US initiated 11 disputes under TRIPS, most of which settled without a panel being convened; the EU also initiated five cases: W J Davey, ‘The WTO Dispute Settlement System: The First Ten Years’ (2005) 8 Journal of International Economic Law 17 at 21. Earlier treaties did allow the option, never used, of bringing disputes before the International Court of Justice.
[31] WIPO Standing Committee on Copyright and Related Rights, Draft Basic Proposal for the WIPO Treaty on the Protection of Broadcasting Organizations, WIPO SCCR/14/2 (8 February 2006), available at <http://www.wipo.int/edocs/mdocs/sccr/en/sccr_14/sccr_14_2.pdf> . This proposal is controversial, but currently expected to lead to a Diplomatic Conference later next year.
[32] Council Directive 93/98/EEC of 29 October 1993 harmonizing the term of protection of copyright and certain related rights, OJ L 290, 24 November 1993, pp 9–13.
[33] Directive 96/9/EC of the European Parliament and of the Council of 11 March 1996 on the legal protection of databases, OJ L 77, 27 March 1996, pp 20–8.
[34] Directive 2001/29/EC of the European Parliament and of the Council of 22 May 2001 on the harmonisation of certain aspects of copyright and related rights in the information society, OJ L 167, 22 June 2001, pp 10–19.
[35] Directive 2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the enforcement of intellectual property rights (OJ L 157, 30.4.2004) (with corrigendum) OJ L 195, 02 June 2004 pp 16–25.
[36] See P Drahos, ‘BITs and BIPs: Bilateralism in Intellectual Property’ (2001) 4 The Journal of World Intellectual Property 791; R Okediji, ‘Back to Bilateralism: Pendulum Swings in International Intellectual Property Protection’ (2003– 2004) 1 University of Ottawa Law and Technology Journal 125. As Drahos and Okediji note, the US is not the only user of bilateralism in this context, although it is arguably the most enthusiastic.
[37] ‘Plurilateral’ refers to the cases where the US has negotiated with a ‘bloc’ of other countries: CAFTA is one example of this (see following note).
[38] Jordan (2000), Singapore (2003), Chile (2003), Australia (2003), CAFTA (Costa Rica, The Dominican Republic, El Salvador, Guatemala, Honduras and Nicaragua) (2003), Bahrain (2004), Oman (2005), Peru (2005) and Colombia (2006). All of these FTAs are available (text, side letters, and some other documentation) at the US Trade Representative Website: <http://www.ustr.gov/Trade_Agreements/Bilateral/Section_Index.html> .
[39] Southern African Customs Union (Botswana, Lesotho, Namibia, South Africa and Swaziland), Panama, Thailand, Ecuador, Bolivia, United Arab Emirates, South Korea, and Malaysia are all in various stages of negotiation with the US at the time of writing.
[40] K Weatherall, ‘Locked In: Australia Gets a Bad Intellectual Property Deal’ (2004) 20 Policy 18.
[41] US Trade Act of 2002, §2102(b)(4)(A)(i)(II).
[42]
See P K Yu, ‘Currents and Crosscurrents in the International Intellectual
Property Regime’ (2004) 38 Loyola of Los Angeles Law Review 323.
[43] This is a
result of the Most Favoured Nation requirement under TRIPS art 4. MFN applies to
any intellectual property law rule enacted
by a TRIPS Member
country.
[44] See
Okediji, above n 36; Drahos above n 36; Drahos and Braithwaite below n 65. The latter in particular notes that
this technique of bilateral agreements was used to reduce resistance to TRIPS.
[45] Ginsburg,
‘Supranational Code’, above n 2.
[47]
The Paris Convention focused on placing foreign patent applicants on an equal
footing with domestic applicants, without harmonising
key parts of patent law
such as the requirements for patentability: ibid.
[48] TRIPS art
27(3) allows countries to choose some exclusions from patentability. In
addition, TRIPS did not attempt to harmonise the
meaning of such fundamental
concepts as novelty or inventive
step.
[49] In particular, the question of whether a patent owner has a right to prevent parallel importation was specifically left open by TRIPS: art 6.
[50] In particular, the Patent Cooperation Treaty (15 January 2004) and the Patent Law Treaty of 2000, 39 ILM 1047.
[51] IP
Australia, Press Release, ‘Australia to Chair New Working Group on
Substantive Patent Law Harmonisation’, 7 February
2005, available at
<http://www.ipaustralia.gov.au/resources/news_new_archived_2005.shtml#2>
.
[52] The full
extent of similarities and differences between FTAs is beyond the scope of this
article. Close comparison of the FTAs reveals
that they vary on the rules such
as those relating to patentable subject matter, parallel importation (the
Australia, Morocco and
Singapore FTAs regulate parallel importation, Bahrain,
Chile, CAFTA and Jordan do not); whether pre-grant patent opposition is allowed
(Morocco, Bahrain and Singapore agreements all ban pre-grant opposition); grace
period (not required by the Singapore or Jordan agreements).
It should be noted,
however, that there is less variation on those areas most important to the
pharmaceutical industry: the relationship
between patents and regulated
products, and patent term extension.
[53] Several of
the US FTAs deal with the meaning of such terms as sufficiency and fair basis
(Australia, CAFTA, Morocco and Bahrain)
and utility (Australia, CAFTA and
Morocco). Some deal also with parallel importation (Australia and Morocco,
Singapore to some
extent).
[54] Joint Recommendation Concerning Provisions on the Protection of Marks, and Other Industrial Property Rights in Signs, on the Internet (WIPO, 2001, Doc. 845(E)); Joint Recommendation Concerning Provisions on the Protection of Well-Known Marks (WIPO, 1999, Doc. 833(E)); Joint Recommendation Concerning Trademark Licenses (WIPO, 2000, Doc. 835(E)).
[55] In particular, compliance with the Joint Recommendation on the protection of Well-Known Marks is required under some US FTAs.
[56] Additional protection for famous marks is required by the Paris Convention, art 6bis, TRIPS art 16. This level of protection however falls short of dilution as understood in US law.
[57] See, eg, AUSFTA art 17.2.7 (requiring, for example, electronic systems for application). Some matters of substance are dealt with however, including matters relating to licenses, and whether marks must be ‘visually perceptible’.
[58] It is interesting to note that the Australia–US Free Trade Agreement actually includes provisions requiring the parties to ‘endeavour to reduce differences in law and practice’: arts 17.8.2 (designs); 17.9.14 and 17.9.15 (patent, including framework for cooperation between patent offices), 17.2.11 (trade mark). These are not found however in other US FTAs.
[59] United
States Patent and Trademark Office, Press Release, ‘Leaders of the
Worlds’ Three Major Patent Offices Sign Memorandum
of Understanding’
(19 November 2004),
<http://www.uspto.gov/web/offices/com/speeches/04-31.htm>
Trilateral
Co-operation, Summary of 23rd Trilateral Conference (18 November 2005)
<http://www.trilateral.net/conf_sum/2005.pdf>
.
[60] Perhaps
because the inquiry in grant of a trade mark is more linked to individual
territories and markets than is true in patent,
where the questions to be
addressed are more
‘universal’.
[61] Madrid Agreement Concerning the International Registration of Marks, WIPO Doc 204(E) (27 June 1989).
[63] Graeme Dinwoodie, in particular, has been a significant proponent of other forms of harmonisation: through the courts developing common jurisprudence, and through more informal practices: see his published work, including above nn 10, 16 and 26. For an in-depth consideration of harmonisation at the level of practice, see P Leith, Harmonisation of Intellectual Property in Europe: A Case Study of Patent Procedure, Sweet & Maxwell, London, 1998.
[64] TRIPS is much more wide-ranging than the original proposals to deal with counterfeiting: see, eg, Gervais, above n 28, p 3.
[65] On the inevitability of ‘broad’ language in treaties, see Peter Drahos with John Braithwaite, Information Feudalism: Who Owns the Knowledge Economy?, Earthscan, London, 2002, pp 139–40. On TRIPS ‘gaps’ and flexibilities in patent, see C Lawson, ‘“Flexibility” in TRIPs: using patented inventions without the authorisation of the rights holder’ (2004) 15 Australian Intellectual Property Journal 141; A Sommer, ‘Trouble on the Commons: A Lockean Justification for Patent Law Harmonization’ (2005) 87 Journal of the Patent and Trademark Office Society 141 at 148. In copyright, see generally Ricketson and Ginsburg, above n 1. On trade mark, see Dinwoodie, ‘Trademarks and Territory’, above n 10, at 908–32.
[66] This area is discussed by Ginsburg, in ‘Supranational Code’, above n 2. See further above n 4.
[67] Exceptions to infringement are not dealt with specifically in the US FTAs (except in the limited area of anti-circumvention law: see, eg, AUSFTA art 17.4.7). The only generalised rule is the ‘three step test’ which sets boundaries on the kinds of exceptions that are not allowed — but not their form. Even in Europe, the Information Society Directive (above n 34) provided an exhaustive list of optional exceptions: see art 5.
[68] ‘Originality’ means a quite different thing in Australian law (Desktop Marketing Systems Pty Ltd v Telstra Corp Ltd (2002) 119 FCR 491) from, for example, US law (Feist Publications Inc v Rural Telephone Service Co Inc [1991] USSC 50; (1991) 499 US 340).
[69] Consider, for example, the many ‘per se’ prohibitions on patentability under European law, or the allowable exceptions in TRIPS art 27(3). Fundamental differences remain between Europe and the US on, for example, the patentability of business methods.
[70] Australian law contains no explicit right to prevent ‘dilution’ (but see M Gonsalves and P Flynn, ‘Dilution Down Under: the Protection of Well-Known Trade Marks in Australia’ (2006) 28 European Intellectual Property Review 174). Even as between European jurisdictions there are differences regarding the meaning of dilution: see J Thomas McCarthy, ‘Dilution of a Trademark: European and United States Law Compared’ (2004) 94 The Trademark Reporter 1163.
[71] Sommer, above n 65, at 164.
[72] P H Jensen, A Palangkaraya, and E Webster, ‘Disharmony in International Patent Office Decisions (2006) 15 Federal Circuit Bar Journal 679.
[73] See Yu, above nn 15, 42; Okediji, above n 36.
[74] One commentator has argued that the linking of trade and IP has actually made differences in the long term more likely, as it legitimises a perspective where, instead of seeking overall conceptual coherence and the furthering of ‘author interests’, instead countries seek to promote strictly economic interests, which vary depending on a country’s particular export strengths: Simon Fitzpatrick, ‘Prospects of Further Copyright Harmonisation’ (2003) 25 European Intellectual Property Review 215 at 222–3.
[75] Ginsburg, ‘Supranational Code’, above n 2. See generally G W Austin, ‘Valuing “Domestic Self-Determination” in International Intellectual Property Jurisprudence’ (2002) 77 Chicago-Kent Law Review 1155.
[76] Yu, ‘Five Disharmonizing Trends in the International Intellectual Property Regime’, above n 15, at 5–14.
[77] Ibid, at 10. There is room for argument regarding how ‘divided’ developing countries are. Drahos, for example, has argued that the US use of bilateral agreements involving IP utilises a ‘divide and conquer’ technique specifically aimed at reducing the coherence of groups of developing countries in trade negotiations: see Drahos, above n 36.
[78] Proposal by Argentina and Brazil for the Establishment of a Development Agenda for WIPO, WO/GA/31/11, 27 August 2004.
[79] L R Helfer, ‘Regime-Shifting: The TRIPs Agreement and New Dynamics of International Intellectual Property Lawmaking’ (2004) 29 Yale Journal of International Law 1; Okediji, above n 36.
[80]
Indeed, there are provisions in the US FTAs which look like they are
specifically designed to stand opposed to elements of the European
system, such as the focus in copyright law on protection of individual authors
through
such mechanisms as ‘unwaivable’ rights to remuneration. The
US FTAs specifically require that all economic rights in copyright be
transferable via contract: AUSFTA art 17.4.6.
[81] Of course,
harmonisation is not necessarily an ‘all or nothing’ thing: some
provisions of the US FTAs might be able to be raised to a multilateral level
without protest from
Europe.
[82] K Weatherall, ‘Pretend-y Rights: On the Insanely Complicated New Regime for Performers’ Rights in Australia, and how Australian Performers got Ripped Off’ in F MacMillan (ed), New Directions in Copyright Law, Vol II, Edward Elgar Press, Cheltenham, 2006.
[83] One way in which resistance may be subject to discipline is through ‘holding out’ against bringing the agreement into effect until ‘suitable’ laws are passed. In the case of the US–Australia Free Trade Agreement, the US required changes to the original implementing legislation in copyright (US Free Trade Agreement Implementation Act 2004 (Cth), assented to 16 August 2004, sch 9) prior to bringing the agreement into effect: Diplomatic Note No. 270/2004. The exchange of notes is available at <http://www.dfat.gov.au/trade/negotiations/us_fta/final-text/letters/dip_note.pdf> . The Copyright Legislation Amendment Bill 2004 (Cth) was passed on 9 December. A second method for countering ‘resistance’ in implementation is through US involvement in the process of drafting implementing legislation. AUSFTA art 20.2.2 provides that to the extent possible, parties should publish in advance any ‘laws, regulations, procedures, and administrative rulings that it proposes to adopt’ respecting any matter covered by the FTA, and ‘provide interested persons and the other Party a reasonable opportunity to comment on such proposed measures’ — thus giving the other party a chance to intervene — and object — before legislation is passed.
[84] See, eg, the Singaporean implementation of the anti-circumvention provisions of its FTA, which are worded quite differently, in some respects, from US law (17 USC §1201) — despite the highly detailed nature of the treaty provisions in that area: Singapore Copyright Act, pt XIIIA.
[85] J Braithwaite and P Drahos, Global Business Regulation, Cambridge University Press, Cambridge, 2000, p 25.
[86] As Sir Basil Markesinis has recently pointed out, ‘[t]he ability to read a foreign text does not mean that the reader will understand foreign law ... It is thus one of the primary functions of the comparatist to warn national lawyers against the danger of thinking that they can understand foreign law simply because they have mastered a foreign language’: B Markesinis, ‘National Self-Sufficiency or Intellectual Arrogance? The Current Attitude of American Courts Towards Foreign Law’ (2006) 65 Cambridge Law Journal 301 at 305–6.
[87] For example, a legal system may incorporate a Bill of Rights which overrides other rights in the case of a conflict: leading to a different result on some sets of facts from that in other legal systems.
[88] See Terpstra, above n 12.
[89] For an examination of which elements of trade mark law are inherently local, see Dinwoodie, ‘Trademarks and Territory’, above n 10, at 908–32.
[90] As a French court did early on in the development of jurisdictional disputes in relation to the internet, by limiting its order to preventing French citizens from accessing Nazi memorabilia online: see generally J Reidenberg, ‘States and Internet Enforcement’ (2003– 2004) 1 University of Ottawa Law and Technology Journal 213.
[91] See, eg, D Svantesson, ‘Borders on, or border around: the future of the Internet’ (2006) 16 Albany Law Journal of Science and Technology 343 at 344.
[92] See Yu, ‘Five Disharmonizing Trends in the International Intellectual Property Regime’, above n 15.
[93] F von Lohmann, ‘Measuring the Digital Millennium Copyright Act Against the Darknet: Implications for the Regulation of Technological Protection Measures’ (2004) 24 Loyola of Los Angeles Entertainment Law Review 635.
[94] See generally D Svantesson, ‘The Impact of Geo-location Technologies on Internet Content Licensing — Let the “Cat and Mouse” Game Begin’ (2005) 63 Intellectual Property Forum 24.
[95] See generally J Goldsmith and T Wu, Who Controls the Internet?: Illusions of a Borderless World, Oxford University Press, New York, 2006, pp 75–6.
[96] IP Addresses may be ‘static’ (that is, assigned to one computer alone, as with ‘always on’ connections like those of servers) or ‘dynamic’ (assigned by session only while in use, and then reassigned to someone else — as occurs with, say, dial-up internet connections). The distinction is relatively unimportant for present purposes, because ISPs will generally keep logs recording the individual to whom an IP address is assigned at any given time, enabling identification, and the IP address will still be assigned to one entity, like an ISP. Most ISPs would not be reassigning IP addresses to people in different countries.
[97] These steps are necessarily simplified; the technically-inclined could quibble with details.
[98] Eg Goldsmith and Wu, above n 95, pp 58ff.
[99] Such treatment is often dictated by the requirements of international licensing contracts which confine rights of exploitation to particular territories.
[100] Goldsmith and Wu, above n 95, p 61.
[101] A
‘proxy server’ is a computer that allows clients to make
indirect network connections to other servers and internet services. A
client connects to the proxy server, then requests a file available
on a third
server. The proxy makes the connection with the third server (or serves the
client from a memory, or cache) — thus
ensuring that the third server
cannot identify the IP address of the original requester or their location.
[102] On the
range of intermediaries whose conduct may be controlled and hence who may be
required to impose filtering, see J Zittrain,
‘Internet Points of
Control’ (2003) 44 Boston College Law Review 653; Goldsmith and Wu,
above n 95, ch 5.
[103] For a
technical description of CleanFeed, see R Clayton, ‘Failures in a Hybrid
Content Blocking System’, available at
<http://www.cl.cam.ac.uk/~rnc1/cleanfeed.pdf>
.
[104] Goldsmith and Wu, above n 95, pp 75–6.
[105]
For details of the Chinese systems imposing filtering at a country level, see
the Congressional-Executive Commission on China,
Annual Report 2005, available at
<http://www.cecc.gov/pages/annualRpt/annualRpt05/CECCannRpt2005.pdf>
see
also OpenNet Initiative, Internet Filtering in
China in 2004–2005: A Country
Study, available at
<http://www.opennetinitiative.net/studies/china>
see also Goldsmith and Wu, above n 95,
ch 6 p 87ff. Regarding Saudi Arabian filtering, see OpenNet Initiative,
Internet Filtering in Saudi Arabia in 2004, available at
<http://www.opennetinitiative.net/studies/saudi>
. Other countries imposing
filtering at a significant level as recorded by the OpenNet Initiative include:
Vietnam, Yemen, Tunisia,
Myanmar (Burma), Iran, and the United Arab Emirates,
see
<http://www.opennetinitiative.net>
.
[106] Such
actions may be particularly subtle, too: a user may not be aware of search
results than never show up, although the practice
of Google at least in the US
appears to have been to send letters of demand to Chilling Effects.org, and
include a link from the
list of search results to that website in order to alert
users to the absence of certain results:
[107] See
Goldsmith and Wu, above n 95, pp
103–4.
[108] For a convenient summary of methods for avoiding the CleanFeed system, see Clayton, above n 103, p 6 Table 1.
[109] This example is explored by J Zittrain in ‘The Generative Internet’ [2006] HarvLawRw 65; (2006) 119 Harvard Law Review 1974 at 2014ff.
[110] Zittrain reports that: ‘TiVo is in the process of implementing a new feature that will allow content distributors to insist that a TiVo not save a recorded program for very long, allowing only time-shifting of the content by the consumer, not long-term librarying’: ibid, at 2015.
[111] T
Harlan, ‘Apple Forcing Users into iTunes Upgrade’, 4 November 2004,
available at
<http://macnewsworld.com/story/37877.html>
.
[112] For some
sense, type ‘TiVo hacks’ or ‘iTunes hacks’ into the
Google search
engine.
[113] M Geist, ‘Is there a There There? Toward Greater Certainty for Internet Jurisdiction’ (2001) 16 Berkeley Technology Law Journal 1345. For an example under Australian law where a ‘targetting’ test has been referred to in an IP context, see Ward Group Pty Ltd v Brodie & Stone Plc [2005] FCA 471; (2005) 143 FCR 479.
[115] Universal Music Australia Pty Ltd v Sharman License Holdings Ltd [2005] FCA 1242; (2005) 220 ALR 1.
[116] Note that this required the court to take advantage of automatic and forced updating of software, as described above.
[117]
See, eg, the comments by computer scientist and Princeton Professor Edward
Felten, ‘Aussie Judge Tweaks Kazaa Design’,
Freedom-to-Tinker
blog, 8 September 2005, available at
<http://www.freedom-to-tinker.com/?p=892>
.
[118] See, eg,
A&M Records, Inc v Napster, Inc. Not Reported in F Supp 2d, 2001 WL 227083 (ND
Cal, 5 March 2001) (orders elaborating on steps required to be taken by Napster
post
the finding of liability). There were ongoing disputes about the order: in
July 2001, for example, US District Judge Marilyn Patel
ordered Napster to stay
offline until it could provide 100% effectiveness in its song-screening
technology: causing some controversy.
[119]
Patrick Stevedores v MUA [1998] HCA 30; (1998) 195 CLR 1 at
46–7.
[120] Universal Music Australia Pty Ltd v Sharman Networks Ltd [2006] FCAFC 41.
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