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Published on May 7, 2008

Author: Rainero


IIP TREATIES:  IIP TREATIES TRIPS Trade Related Aspects of Intellectual Property The modern day starting point for International Intellectual Property coverage is the TRIPS agreement. TRIPS sets a global standard for minimal intellectual property coverage worldwide. This is a relatively new treaty which only became effective in 1995 IIP TREATIES:  IIP TREATIES TRIPS has been signed by nearly 200 nations. Lesser and least developed countries have been extra time to meet the standards. IIP TREATIES:  IIP TREATIES TRIPS refers to and incorporates other important intellectual property treaties that have been in effect for more than 100 years. These include the Berne Convention which relates to copyrights, but was not originally supported by the US. The US only recently signed on to Berne, still maintaining some reservations, and the Berne Implementation Act took effect in the US in 1989. The US originally supported the Paris Convention which relates to patents, trademarks, and unfair competition, and it became effective in the US in the late 19th century. IIP TREATIES:  IIP TREATIES TRIPS seeks to effectively balance the public social concerns of the lesser developed countries with the private business concerns of the most developed countries. TRIPS is a joint effort of the WTO and the WIPO. --See e.g. The TRIPS Preamble noting the private nature of IP rights and the underlying public policy objectives involved in establishing intellectual property systems. IIP TREATIES:  IIP TREATIES Although the Paris and Berne Conventions were well established intellectual property treaties, TRIPS was widely heralded due to its perceived ability to fill in various gaps left by those treaties. These gaps included questions concerning definitions, scope of protection, and issues of rights enforcement. TRIPS fills many of the gaps left by prior treaties by adding to the language of the prior treaties, clearly identifying the minimal standards that all signatories should have in effect, and providing for specific enforcement mechanisms. IIP TREATIES:  IIP TREATIES TRIPS does not attempt to dictate how the various nation states should achieve the goals and objectives of the treaty. Because TRIPS respects the sovereignty of each nation state there is deference to the domestic intellectual property laws of each signatory. IIP TREATIES:  IIP TREATIES TRIPS is premised on the concept of national treatment. A citizen can expect to receive the same treatment as other citizens of whatever signatory state they are in. See TRIPS Article 3 IIP TREATIES:  IIP TREATIES TRIPS Articles clearly provide notice of the substantive minimums each nation should maintain for IPR protection. See Article 41 TRIPS also provides mechanisms that allow nation states to challenge each other when they feel that a signatory is not in compliance. See Article 64 IIP TREATIES:  IIP TREATIES Article 64 of TRIPS refers to the Dispute Settlement Understanding of WTO/GATT of 1994 that guides all trade conflicts including those emanating from IP disputes. For a review of the process see the Dispute Resolution Training Module IIP TREATIES:  IIP TREATIES TRIPS provides for enforcement of decisions by the WTO Dispute Resolution Body in the rare case that a nation state should refuse to voluntarily comply with a decision. See WTO Understanding on Rules and Procedures Governing the Settlement of Disputes These enforcement mechanisms are not meant to override national sovereignty however as TRIPS also sets forth guidelines for nation states legislative and judicial systems to resolve conflicts within their own borders. See Articles 41-61 IIP TREATIES:  IIP TREATIES The treaties incorporated in TRIPS also have provisions to some extent that support enforcement. However these provisions are not mandates to domestic judicial systems. For example See; IIP TREATIES:  IIP TREATIES The options posed by TRIPS re an IIP dispute basically break down to a choice between; Filing a case in the country where the dispute or damage occurs and accepting national treatment; Filing with the WIPO in order to have the matter arbitrated or mediated; Filing with the WTO Dispute Settlement Body if the matter involves a dispute between nations; IIP TREATIES:  IIP TREATIES In determining how to apply TRIPS and reconcile it with any applicable and available domestic laws, the Dispute Settlement Body and Appellate Body will; Apply the plain meaning of TRIPS Look at applicable decisions, procedures, and customs of GATT. Look to any applicable decisions of courts from other respected jurisdictions. Review treatises, drafts, and other scholarly works. TRIPS & COPYRIGHT LAW:  TRIPS & COPYRIGHT LAW TRIPS Copyright Provisions are found in Section 1, Articles 9 – 14. The Articles address Copyright and Related Rights some of which are expressly at odds with the scope of US Copyright protection such as rights involving compilations of data, and producers of sound recordings, as well as the term of copyright protection. TRIPS & COPYRIGHT LAW:  TRIPS & COPYRIGHT LAW Article 9 of TRIPS expressly incorporates Articles 1-21 of the Berne Convention, except for Berne’s Article 6bis relating to “moral rights”. Moral rights are independent of copyright and include rights to proclaim/disclaim authorship (attribution), and rights to prevent modification or other disturbances of the integrity of a work. TRIPS & COPYRIGHT LAW:  TRIPS & COPYRIGHT LAW Article 10 of TRIPS states that computer programs and databases are protectable. While the EU protects databases the US has been reluctant to expressly protect databases although compilations of data may be protectable. TRIPS & COPYRIGHT LAW:  TRIPS & COPYRIGHT LAW TRIPS recognizes “free use” based on Berne’s Articles 10 & 10bis The tests for free use is not the same as the 4 factor approach found in Section 107 of the US Copyright Act. TRIPS & COPYRIGHT LAW:  TRIPS & COPYRIGHT LAW TRIPS/Berne also differs from US Copyright law substantively by tying the rights of an author to the type of subject matter involved. The determination of authorship is left up to domestic law. TRIPS & COPYRIGHT LAW:  TRIPS & COPYRIGHT LAW Authorship and Ownership is not necessarily synonymous. An author may decide to assign their rights to another. TRIPS & COPYRIGHT LAW:  TRIPS & COPYRIGHT LAW Even without assignment ownership determinations can be complicated by failure to clearly characterize working relationships. For instance are individuals working together co-authors, employee/ers, or individual contractors. These questions are generally answered by domestic law principles in each country. TRIPS & PATENT LAW:  TRIPS & PATENT LAW TRIPS Patent provisions are found in Section 5 beginning with Article 27 outlining Patentable subject matter. TRIPS also incorporates the Paris Convention patent Articles. See TRIPS Article 2 specifically mentioning Articles 1 through 12 and Article 19 of Paris. TRIPS & PATENT LAW:  TRIPS & PATENT LAW TRIPS is broad enough to be interpreted as supporting the patenting of living subject matter as well as mathematical algorithms. The latter requires some application in a tangible fashion where the math, the function, and the vehicle are so merged that no separability exist. TRIPS & PATENT LAW:  TRIPS & PATENT LAW The TRIPS/Paris provisions do not define what a patent is nor specify the process for filing for patent protection. The particulars are left up to domestic law. TRIPS does require novelty, though it does not specify as to absolute or relative novelty. Most nations use the latter standard. TRIPS & PATENT LAW:  TRIPS & PATENT LAW TRIPS requires that a patent applicant be able to prove that the claimed invention shows an inventive step and is capable of industrial application. These requirements are akin to the US requirement that an invention be novel (not anticipated) and non-obvious. TRIPS & PATENT LAW:  TRIPS & PATENT LAW TRIPS allows nation states to refuse protection on moral grounds or on related basis. Thus patents granted in one country are decided independently of patent applications elsewhere. TRIPS & PATENT LAW:  TRIPS & PATENT LAW TRIPS also allows for limitations on the rights conferred as well as compulsory licensing of certain patented subject matter under Articles 30 and 31. TRIPS & PATENT LAW:  TRIPS & PATENT LAW Priority rights are important in patent law for determining novelty and non-obviousness. The effective filing date/priority date is the date used to see if what was known prior to that time should bar an applicant from receiving a patent. The priority date triggers the start of the priority year which is the time an applicant has to file for patent protection in other nations at a later date while relying on the earlier filing time. TRIPS & PATENT LAW:  TRIPS & PATENT LAW TRIPS establishes 20 years as the minimum term of patent protection. Article 28 of TRIPS sets forth the minimum rights that a successful patent applicant will receive. These rights are very similar to those granted to a patentee under the US Patent Act. The Paris Convention does not have a comparable lists of rights. TRIPS & TRADEMARK LAW:  TRIPS & TRADEMARK LAW TRIPS Trademark provisions are found in Section 2 beginning with Article 15 which sets forth the protectable subject matter. TRIPS inclusion of Paris also covers Paris Trademark Articles 6 through 10ter. Marks must be distinctive to receive protection. Generic marks are not protectable. TRIPS & TRADEMARK LAW:  TRIPS & TRADEMARK LAW TRIPS forbids unfair competition which includes wrongfully passing off goods as those of another. TRIPS protects those with distinctive marks from the likelihood of confusion whether that likelihood arises from a similarity in look, sound, or meaning. Wagamama vs. Rajamama Starbucks vs. Xingbake Golden rabbit vs. Chocolate rabbit Smirnoff vs. Smirnov TRIPS & TRADEMARK LAW:  TRIPS & TRADEMARK LAW Famous marks enjoy a greater scope of protection than non-famous marks under TRIPS/Paris. Marks are normally limited to protection in certain territorial boundaries and within their designated international class. TRIPS & TRADEMARK LAW:  TRIPS & TRADEMARK LAW Famous marks enjoy an enlarged status and can become “supermarks” transcending territorial and classification boundaries. TRIPS & TRADEMARK LAW:  TRIPS & TRADEMARK LAW Expanded protection of certain marks raises difficult questions; How do you determine fame? How much fame do you need? Will protection stifle or stimulate domestic growth? Should time run against the so-called famous in terms of their expansion into a market for the benefit of domestic citizens? TRIPS & TRADEMARK LAW:  TRIPS & TRADEMARK LAW TRIPS allows domestic law to fill certain gaps and thus can be used in conjunction with domestic laws that recognize principles such as the anti-dissection rule, the trademark independence doctrine, and fair use. TRIPS specifically addresses coverage for geographic indicators (GI’s) in Section 3 beginning with Article 23. The US recognizes GI’s domestically as well international efforts to protect them. TRIPS & TRADEMARK LAW:  TRIPS & TRADEMARK LAW TRIPS establishes 7 years as the initial term for trademark protection but permits renewal in perpetuity. Article 16 is written broadly enough to be interpreted as allowing for the consideration of dilution in addition to confusion as a basis for a cause of action. TRIPS & INDUSTRIAL DESIGN:  TRIPS & INDUSTRIAL DESIGN TRIPS addresses industrial designs in Section 4, Article 25. TRIPS does not specify the type of IPR that should be used to protect an industrial design although it does use copyright law as an example. TRIPS & INDUSTRIAL DESIGN:  TRIPS & INDUSTRIAL DESIGN In the US applied art is copyrightable but industrial designs are not. To determine the difference between the two requires utilization of physical or conceptual separability. Functional expressions are not copyrightable thus for copyright protection one must be able to show the expression is not dictated by function. TRIPS & INDUSTRIAL DESIGN:  TRIPS & INDUSTRIAL DESIGN Industrial designs that result from slavish copying or non-creative variations on works who’s copyrights have expired are not protectable. Copyright can not be used to wrongfully extend expired patent protection. TRIPS & INDUSTRIAL DESIGN:  TRIPS & INDUSTRIAL DESIGN TRIPS requires that industrial designs be new and original and allows domestic law to refuse protection on the basis of technical and functional considerations. US law allows for industrial design protection potentially in the areas of; Copyright law Trademark law Design patent law TRADE SECRETS & IIP:  TRADE SECRETS & IIP TRIPS deals with trade secrets in Section 7 beginning with Article 39 which addresses the protection of undisclosed information. TRIPS Article 39 refers directly to Article 10bis of the Paris Convention. These sections require parties to act in a manner that is not contrary to honest business practices. What constitutes honest business practices depends on domestic law. TRADE SECRETS & IIP:  TRADE SECRETS & IIP Protection requires that; Information be relatively secret as opposed to generally known, Commercial value arises from its secrecy, Reasonable steps be taken to maintain its secrecy. TRADE SECRETS & IIP:  TRADE SECRETS & IIP Trade secret disputes arise often in the employer/ee context. Employees have access to 3 main types of information; Trivial easily accessible info that can’t realistically be regarded as protectable. Information that may be confidential when initially divulged but that becomes part of an employee’s mindset and goes with the employee when he leaves the job. Information that is expressly labeled confidential or is obviously so due to its nature and thus leads to a conclusion that confidentiality must be implied even after the employee moves on to another job. TRADE SECRETS & IIP:  TRADE SECRETS & IIP Trade Secrets should be expressly protected. This can be done through the use of one or more documents via; Employment contracts Confidentiality agreements Non-competition agreements TRADE SECRETS & IIP:  TRADE SECRETS & IIP While trade secrets can’t be protected if the information is in the public domain, there is no obviousness standard in trade secret law. Strong argument exists to support the policy of trade secrets being used as a mechanism of protection outside the normal IPR scheme. Issues of fiduciary duty also arise in trade secret litigation however the definition of this type of duty is generally left to domestic law. CULTURAL RIGHTS & IIP:  CULTURAL RIGHTS & IIP Harmonization of intellectual property rights can often conflict with the recognition and preservation of cultural heritage. CULTURAL RIGHTS & IIP:  CULTURAL RIGHTS & IIP The minimization of conflict between IP and cultural rights is addressed by a number of treaties and declarations Intellectual Property issues in Cultural Heritage The Bellagio Declaration UNESCO CULTURAL RIGHTS & IIP:  CULTURAL RIGHTS & IIP Cultural heritage, a/k/a Folklore covers a wide variety of subject matter and thus can be potentially protected or exploited in any area of IP. These concerns cover the ancient (aboriginal design of Morning Star Poles) as well as the modern (EU limitations on US motion picture and video production importation). CULTURAL RIGHTS & IIP:  CULTURAL RIGHTS & IIP Difficult questions arise when applying traditional IP standards to cultural heritage. These include; The type of IPR’s that are applicable Who should hold the IPR Who should be compensated for IPR exploitation Whether a viable alternative to traditional IP exist or whether some sui generis right is necessary IIP & TECHNOLOGY:  IIP & TECHNOLOGY Technological innovation has profoundly affected society generally and particularly in intellectual property as a result of instantaneous global communication and trade. The Internet questions the standard application of IP in each area as it encompasses inventions, privacy, expressions, identification, and competition. IIP & TECHNOLOGY:  IIP & TECHNOLOGY Internet growth has been phenomenal over the last quarter century. IIP & TECHNOLOGY:  IIP & TECHNOLOGY The Internet allows parties to stake out a location in cyberspace. The address of that place is their domain name. Domain names may or may not be trademarks, and vice-versa. Domain names consist of 3 parts. A host name, a domain name, and a top level domain. IIP & TECHNOLOGY:  IIP & TECHNOLOGY Domain names can be anything a person wants but top level domains are (tld’s) limited. Countries have their own codes such as .us, and .de(Germany) Tld’s include .com, .net, .org, .gov, .edu IIP & TECHNOLOGY:  IIP & TECHNOLOGY Domain names can be selected easily and cheaply through the use of an accredited domain name registrar. All registrars are regulated by ICANN and all parties who select a domain name agree during the registration process to ICANN’s Uniform Dispute Resolution Policy (UDRP). IIP & TECHNOLOGY:  IIP & TECHNOLOGY ICANN’s UDRP process allows for arbitration of disputed incidences of cybersquatting. US Trademark law also specifically addresses cybersquatting. IIP & TECHNOLOGY:  IIP & TECHNOLOGY Domain names are generally registered on a first come, first serve, basis but the trademark status of a domain name, and/or the fame associated with a mark can affect registration. Standard trademark concerns arise in domain name disputes such as likelihood of confusion and dilution. IIP & TECHNOLOGY:  IIP & TECHNOLOGY Copyright issues arise on the Internet due to the ease of reproduction, distribution, and display that computer usage facilitates. Computers also allow for easy changes to be made to works and thus call into question the right to adapt and derivate. In Tasini v. NY Times the SCOTUS found that electronic publishers violated the reproduction and distribution rights of authors by allowing their works to be viewed in response to certain search engine inquiries. The electronic reproductions were not privileged under copyright provisions addressing collective works but were more akin to unauthorized derivatives. IIP & TECHNOLOGY:  IIP & TECHNOLOGY Slavish copying of public domain works will not give rise to copyright protection, but new artistic renderings of works in the public domain will, even if the goal is to make the work look as much like the original as possible. IIP & TECHNOLOGY:  IIP & TECHNOLOGY Deep linking to the internal pages of another's copyrighted material may give rise to copyright infringement. Accessing encrypted data may give rise to an action for violation of trade secrets or unfair competition. The US has no overriding federal law on encryption but certain federal organizations and some states have encryption laws. IIP & TECHNOLOGY:  IIP & TECHNOLOGY Jurisdictional issues on the internet are tricky. In the US courts have used a variety of approaches to answer the question of whether jurisdiction is proper. These include; Long arm jurisdiction statutes Minimum contacts theory Passive vs. Active website evaluation IIP & TECHNOLOGY:  IIP & TECHNOLOGY Courts in other jurisdictions have used similar approaches domestically but looked to international statutes on jurisdiction when the parties and problems have transcended national boundaries. These include; The Brussels Convention The Lugano Convention The Hague Convention on Jurisdiction… Note; none of the above apply globally yet

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