IPRs 3.0 Intellectual Property Rights

Law is backed by the coercive power of the Nation-State. Sovereignty, at root, is the State’s monopoly of force. As suggested by John R. Commons (1934), the probability of the State (or rather its officials) exercising this monopoly to enforce contracts (rule of law) is a primary concern of all business enterprise everywhere. At the international level sovereignty is expressed otherwise.

International relations breaks out into bilateral and multilateral affairs. Bilateral refers to relations between only two parties. There are, therefore, many, many bilateral agreements. Multilateral refers to relations between three or more actors - Nation-States and/or international organizations. I will be considering only the multilateral dimension of international affairs regarding intellectual property rights (IPRs).

Jus cogens

Between Nation-States Law relies on jus cogens or the presumptive norms of international law, arguably the most elemental of which is pacta sunt servanda: meaning ‘agreements must be kept’. Such “higher law” may not be violated because it serves the interests of the entire international community, not just the needs of the individual State. There is, however, no definitive statement by any authoritative body of what constitutes jus cogens. Rather they tend to arise out of case law as well as changing social and political attitudes Such norms can be both affirmative as with pacta sunt servanda or prohibitions against aggressive war, crimes against humanity, war crimes, maritime piracy, genocide, slavery and torture.

The extensive use of Latin concepts, phrases and terms (see Annex E: Multilateral Lexicon) in contemporary international law reflects the role of the Roman Catholic Church during the European Middle Ages. The Church often acted as mediator between rival and sometimes warring States and Latin was the lingua franca of its day. Thus while different States used different languages their elites all knew Latin. In turn the Church adopted many of the ideas and practices of ancient Roman and Greek diplomacy.

According to pacta sunt servanda, all instruments in force are binding on Parties to them who, in turn, must perform them in good faith. Thus Parties cannot invoke domestic law in the case of a State, or internal rules in the case of an International Organization, as justification for failure to perform. The only legal exception is when this norm conflicts with another, e.g., the prohibition against slavery, in which case, according to Article 53 of the 1969 Vienna Convention on the Law of Treaties, such instruments are void.

If a State fails to perform there may or may not be legal recourse for other parties to an agreement, e.g., WTO dispute panels or appeal to the International Court of Justice. Only at the extreme will the Security Council of the United Nations ‘legitimize’ coercive force against a treaty-breaker.

Accordingly the complex web of global and regional agreements, conventions and treaties that constitutes the multilateral intellectual & cultural property rights regime rests on the ‘good faith’ of Nation-States (see Annexes A-D). Each comes to the table with its distinct legal tradition as well as wants, needs and desires. To ratify an instrument, however, usually requires a State to adjust domestic laws that conflict with treaty obligations.

In this regard, it is important to note that the multilateral ICPR regime pre-dates the current world-order of Nation-States (a term that did not enter American English until 1919). The first attempts to establish intellectual & cultural property at the multilateral level was at the height of the once great global economy of European colonial empires on which the sun never set. With respect to the cultural property regime, it arguably began in 1874 with Article 8 of the Declaration of Brussels (Annex B). The Paris Convention for the Protection of Industrial Property was signed in 1883 (Annex C & D) and the Berne Convention for the Protection of Literary and Artistic Works in 1886 (Annex A).

Common Law, Civil Code & Roman Law

While Law is increasingly nation-specific, there are two Western legal traditions from which most national systems evolved - Anglosphere Common Law and European Civil Code. While procedural differences attract popular attention, e.g., the jury versus inquisitorial systems respectively, there are also substantive differences affecting evolution of the multilateral ICPR regime.

First, Anglosphere Common Law is based on precedent. Thus, on the one hand, the first Republican Revolution of 1776 overthrew an ancient regime of subordination by birth and created the United States of America. On the other, however, the U.S.A. adopted British Common Law with all its precedents and prejudices concerning intellectual & cultural property – with a vengeance.

Article I, Section 8 of the 1788 U.S. Constitution (known as the Intellectual Property or Copyright Clause) states, in Natural Rights terms:

The Congress shall have Power ... To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries;

Two years later, however, Congress passed the first U.S. Copyright Act of 1790 entitled: An Act for the Encouragement of Learning, by securing the Copies of Maps, Charts and Books, to the Authors and Proprietors of such Copies, during the Times therein mentioned. The key change is the term “Proprietors’ also used in the first English copyright act – the 1710 Statute of Queen Anne.

The U.S., from the beginning, looked upon copyright as an instrument of industrial warfare with Britain, specifically in the printing trades. It was not and arguably still is not seen primarily as an incentive for creators in the Natural Rights tradition. Rather it is a Mercantalist concept fostering the competitiveness of American industry over all others. Thus no royalties were paid to foreign authors (generally British) whose works were cheaply re-printed. Copies were then sold legally in the U.S. and illegally, at very low prices, elsewhere in the English-speaking world including Canada. American printer/publishers had a field day while Canadian competitors languished under royalties imposed by the Imperial Copyright Act. While this piratical U.S. regime ended with the Chace Act of 1891, the fact remains that until 1984 no book written by an American author could be sold in the United States unless printed there. This was known as the ‘Manufacturing Clause’. It should be noted that Austria-Hungary was also a major pirate State during the 1800’s (Woodmansee 1984, 439).

The second Republican Revolution of 1789 in France, however, not only overthrew the ancient regime it also overturned the Common Law. This was replaced by the Civil Code rooted in principle rather than precedent, specifically Natural Rights including the “inalienable, unattachable, imprescriptable and unrenouncable rights” of creators (Andean Community, Common Provisions on Copyright and Neighboring Rights, Article 11, 1993). In turn, the Civil Code drew heavily on the old Roman law especially the Institutes of Justinian from which, ironically, Justice Yates established the Common Law precedent in 1769 that ideas are not protected because they are like wild animals – ferae naturae - belonging to everyone and no one. It is only their fixation in material form commonly called ‘a work’ that receives protection (Sedgwick 1879).

Second, there is a fundamental difference in the treatment of Natural and Legal Persons. Under Common Law, all intellectual property rights of a Natural Person are transferable (or can be waived) by contract to a Legal Person, i.e., a Proprietor. Under Civil Code the Natural Person enjoys rights that a Legal Person cannot claim. In effect they are ‘human rights’. This difference has fueled ongoing trade disputes between the United States and France with the U.S. demanding such rights be extended to American media corporations. It is ironic that the American Revolution starting with the Boston Tea Party overthrowing the power of the corporation – the East India Company – should in the mid-19^th century place such bodies corporate on an equal legal footing with the individual citizen. This question is explored in Ted Nace’s The Gangs of America (2005).

Third, under Common Law a patent is justified by growth of the commonwealth while copyright is justified to foster “the encouragement of learning”. The titles of both the 1710 Statute of Queen Anne –the first modern copyright act - and the first U.S. Copyright Act of 1790 are dedicated to ‘the encouragement of learning’. The concept of the public domain, however, only entered “Anglo-American [legal] discourse through the French of the Berne Convention” in 1886 (M. Rose 2003, 84). The public domain is where private intellectual property goes after monopoly protection runs out and where it becomes a true ‘public good’: free to all. In the Anglosphere tradition it might be called the ‘intellectual commons’.

Unlike a natural commons, however, such as the air and oceans which tends to abuse through overuse, the more the public domain is accessed the faster it grows; your taking does not decrease my share; or, paraphrasing Isaac Newton’s aphorism: “We all stand on the shoulders of giants”. Knowledge feeds on knowledge. Thus another difference between the two legal traditions is that the Civil Code justifies IPRs not primarily as a reward to the creator but rather growth of the public domain, i.e., it has a cultural focus; the Common Law has a primarily economic one (Vaver 1987, 82-83).

Fourth, as previously noted, there has been a lack of interest in common property during the last three hundred years of Anglosphere legal evolution. In effect Common Law has been dominated by questions of private not public property (C. Rose 2003). Introduction of the concept of the public domain from the Civil Code is one example. Others include concepts of national patrimony and cultural property both of which are essentially French/European in origin.

With the emergence of ecology, the tragedy of the commons, global warming, et al, Common Law is returning to questions about common property. The argument, in economic terms, is that if a public good belongs to everyone but to no one then one way to solve the problem of overuse and abuse is to assign ownership to someone. That someone will then have a vested interest to ‘conserve’ the resource. This is the approach taken in the Convention on the Law of the Seas (1982), the Convention on Biodiversity (1992) and the Kyoto Protocol (1997). In the case of all three ownership is vested in the Nation-State. In the case of Kyoto some States have transferred ownership to private agents – both Natural and Legal Persons, e.g., through carbon auctions and credits.

The Civil Code, however, has more concepts of common property. Thus there are five categories of public property under Roman law: res nullius, res communes, res publicae, res universatitis and res divini juris. To begin, the Latin word res means ‘thing’. Res nullius refers to things that are unowned or have simply not yet been appropriated by anyone such as an unexplored wilderness. Res communes refers to things that are open to all by their nature, such as oceans and the fish in them or what under Common Law is called ‘the commons’. Res publicae refers to things that are publicly owned and made open to the public by law. Res universitatis refers to things that are owned by a body corporate, i.e., within the group such things may be shared but not necessarily outside the group. Finally, res divini juris (divine jurisdiction) refers to things ‘unownable’ because of their divine or sacred status (Kneen 2004).

Development of the multilateral regime reflects ongoing tension between these two Western legal traditions. This, of course, ignores other legal systems such as Islamic Shar’ia and Native Heritage Rights. Furthermore, inter-market penetration by foreign firms into Hollywood and the American entertainment industry has also compromised the ‘European’ view.

International Regulatory Law

Unions

When Nation-States join a multilateral instrument they form a ‘Union’. To administer the instrument and further their common purpose they may designate one member, create a distinct international institution or ‘bureau’ or authorize another international institution to do so. The Member State, bureau or designated authority then assumes responsibility to accept deposit of instruments after being ratified or otherwise accepted by Member States. They also serve to mediate disputes and conduct research concerning the impact and improvement of the multilateral instrument.

An example of a Member State assuming administrative responsibility is the 1910 Agreement on the Circulation of Obscene Publications for which the Republic of France initially assumed responsibility. With the 1949 Protocol to the agreement, however, administrative responsibility was assigned to the United Nations. Examples of a bureau include the Paris Convention of 1883 and the Berne Convention of 1886 whose members created a separate bureau to administer each Convention. In 1893, these two small bureaux were united to form the United International Bureaux for the Protection of Intellectual Property. In addition to the designating the United Nations including UNESCO and the WTO as such designated agencies there is WIPO and sui generis or a one-of-a-kind bureau.

WIPO

A critical step in the evolution of the multilateral copyright regime took place in 1967 when the World Intellectual Property Organization (WIPO) was spun off from UNESCO. Like UNESCO, WIPO is a special service agency of the United Nations. It absorbed and assumed responsibility for the United International Bureau for the Protection of Intellectual Property set up in 1893 to administer both the Berne and Paris Conventions. Since its creation WIPO has assumed responsibility for a number of existing treaties as well as initiating a many new ‘global’ IPR agreements. It has also become the designated agency to administer WTO’s TRIPS. WIPO administered treaties are listed below by each type of IPR. In many ways WIPO is primarily responsible for the economic aspects of IPRs while UNESCO remains focused on their cultural, educational and scientific implications. The hostility of the United States to UNESCO was arguably a contributing factor in this cultural/economic split in UN responsibility for IPRs.

Sui Generis

With respect to IPRs there are two major one-of-a-kind bureau. The first manages the 1992 Convention on Biodiversity and its 2000 Cartagena Protocol on Biosafety. The CBD Secretariat is based in Montreal operating under the United Nations Environment Programme. It organizes meetings, drafts documents, assists member States, coordinates with other international organizations and collects and disseminates information. Similarly, the Council and Office of the Union are the administrative arms of the Union for the 1961Convention on the Protection of New Varieties of Plants.

Intellectual Property

Traditionally, intellectual property breaks out into two distinct classes: industrial property and literary & artistic works. Industrial property includes patents, registered industrial designs and trademarks (inclusive of marks of origin). These were the subject of the first multilateral IPR agreement: the Paris Convention for the Protection of Industrial Property of 1883. Literary & artistic works were the subject of the second multilateral agreement: the Berne Convention for the Protection of Literary & Artistic Works of 1883. Protection of literary & artistic works under Common Law is called copyright; under the Civil Code, ‘rights of the author’. They are not the same. In general, industrial property involves utilitarian goods and services (knowledge tooled as function) and:

[t]hough copyright is expressed in terms of property, it is not directly analogous to industrial property (patents, trademarks and industrial designs), where the major concern is with the circulation of goods that have economic value apart from their intellectual content. As it deals with purely intellectual matter, copyright can never interfere with a person’s physical well-being. (Keyes & Brunet 1977, 3)

With respect to jus cogens, presumptive norms or heuristics of the multilateral IPR regime, one is ‘national treatment’ and another is lex fori. Lex causae is Latin for ‘law of the cause’. It refers to which law has precedence when there is a conflict of laws in an action, e.g., infringement of a patent granted in one State but infringed in another. There are two possibilities – lex fori and lex loci.

With respect to procedure, the applicable law will always be the law of the court (lex fori) hearing the case. With respect to substantive law, however, it may be that of the State granting the right, or lex loci. Thus the 1889 Montevideo Treaty on Literary and Artistic Property (unlike the Paris or Berne Conventions) adhered to lex loci meaning that the rights of an author were to be determined by the laws of the country of origin where the work was first published not where the infringement took place.

When one moves to the multilateral level one must therefore accept that: “Law has become nation-specific; lawyers no longer form an international community” (Merryman 1981, 359). Thus under the multilateral intellectual property regime, States provide only ‘national treatment’ to citizens of other States, i.e., the same rights are extended as if they were nationals but the rights so extended are defined by each national legislature. This means, for example, that Canada must extend to foreign authors and copyright owners the same rights as granted to Canadian nationals. These rights, however, need not and are generally not the same between countries. For example, the term of copyright in Canada is life of the artist plus fifty years. In the U.S., it is life of the artist plus seventy years. This means a work of an American artist will enter the Canadian public domain twenty years earlier than in the U.S. While a subject of controversy this treatment contrasts with ‘harmonization’ characteristic of other WTO efforts, e.g., the definition of subsidies.

Industrial Property

Patents were the centerpiece of the Paris Convention of 1883 which also treated industrial design and trademark. The Convention represented the triumph of the patent movement led by the United States against the anti-patent movement led by Germany. The first U.S. Patent Act: “An act to promote the Progress of Useful Arts”, was passed in 1790 more than 60 years before Great Britain passed its first act. The U.S. had developed over that period a system for treating applications, assessing claims and granting patents. This experience informed and shaped the Paris Convention. Success led one American observer to call the Convention “the most perfect example of a multilateral convention affecting economic matters” (Kronstein & Till 1947, 765). Ironically, after Germany acceded to the Paris Convention in 1901 (the last major industrial power to do so) it engaged in ‘patent pooling’ with the United States in key industries especially chemicals and pharmaceuticals effectively dividing up world markets between them.

Patents

A summary index of global and regional instruments making up the multilateral patent regime is displayed in Annex C. The general problems associated with multilateral patent agreements involve disclosure and national registration. With respect to national registration, while a patent granted in another country may serve as evidence of ‘prior art’ and hence stop a patent being granted the ‘claims’ made in patent applications can confuse the matter. This is a major reason for filing in as many countries as possible.

Problems associated with disclosure rest on the requirement that all knowledge necessary for anyone normally skilled in the arts be disclosed. If, however, the application is in a foreign language and one’s citizens cannot read it the knowledge is not disclosed. The failure of the European Union to ratify, after two attempts (1975 & 1989), a community-wide patent agreement highlights one critical difficulty with any ‘single’ global patent, i.e., language.

In particular the time delays for translating the claims and the authentic text of the claims in case of an infringement remained problematic issues throughout discussions and in the end proved insoluble (Wikpedia, Community Patent, 2008)

In 2000 a compromise was found with issuance of a Community Regulation establishing a Community Patent.

The aim of creating a Community patent is to give inventors the option of obtaining a single patent which is legally valid throughout the European Union. The creation of such a patent could enable a substantial reduction in patenting costs (in particular those relating to translation and filing), simplified protection of inventions throughout the European territory as the result of one single procedure, and the establishment of a single centralised system of litigation.

Controversy remains, however, because such patents must be filed in English, French or German. Other linguistic Member States of the Community continue to protest. Review the WIPO Patent Agreement Summaries for an understanding of major WIPO agreements:

1883 - The Paris Convention for the Protection of Industrial Property

1970 - The Patent Cooperation Treaty (PCT/WIPO)

1971 – International Patent Classification (Strasbourg Agreement)

1980 – The Budapest Treaty on the International Recognition of the Deposit of Microorganisms for the Purposes of Patent Procedure

2000 - The Patent Law Treaty

Registered Industrial Designs & Trademarks

A summary index of global and regional instruments making up the multilateral trademark and industrial design regime is displayed in Annex D. Please review the WIPO Trademark & Registered Industrial Design Agreement Summaries for an understanding of major WIPO agreements:

1886 - Paris Convention for the Protection of Industrial Property

1891 Madrid Agreement Concerning the International Registration of Marks

1925 – Hague System

1957 – Classification of Marks (Nice Agreement)

1958 – Appellation of Origin (Lisbon Agreement)

1968 - Classification of Industrial Designs (Locarno Agreement)

1973 Figurative Elements of Marks (Vienna Agreement)

1981 – Olympic Symbol (Nairobi Treaty)

1989 - Protocol Relating to the Madrid Agreement

1994 – Trademark Law Treaty

2006 - Singapore Treaty on the Law of Trademarks

The history of the Berne Convention of 1886 is radically different from the Paris Convention of 1883 which was inspired by the American example. Led by Victor Hugo, European artists and writers in 1878 organized the International Artistic & Literary Association (Association Littéraire et Artistique Internationale). First in Paris it then met annually in different European capitals. In 1882, at Rome it agreed to organize an international conference of States about copyright, or rather author’s rights. At the Berne conference of September 1883, a draft convention was prepared and brought to the attention of the community of nations by the Swiss Federal Council (Kampelman 1947, 410-411). The Berne Convention of 1886 was the result.

Three years after the Berne Convention the same authorial rationale gave birth, in 1889 to the second major multilateral copyright agreement: the Treaty on Literary and Artistic Property done at Montevideo, Uruguay during the South American Congress on Private International Law. This was the first step in development of the Pan-American copyright system. Unlike subsequent agreements, however, it was open to non-American states. It was ratified by Argentina (1891), Bolivia (1903), Paraguay (1889), Peru (1889), and Uruguay (1892) and agreed to by France, Spain, Belgium, Italy, Germany, and Austria. It was, as noted above, also lex loci in nature.

It is important to note that Latin American Nation-States had all gained independence from Spain and Portugal by the late 1820s following the third wave of the Republican Revolution lead by Simon Bolivar. All began and continue to operate under variations on the Civil Code. Accordingly they do not recognize copyright but rather author’s rights.

Whether due to the Monroe Doctrine by which the United States asserted an obligation to protect the Americas from foreign influences or for economic reasons, a distinct Pan-American copyright regime emerged to challenge the Berne Convention and complicate multilateral copyright relations. The first formal Pan-American copyright convention was signed at the Second International Conference of American States at Mexico City in 1902. The Inter-American Literary and Artistic Property Convention was ratified by Guatemala, Salvador, Costa Rica, Honduras, Nicaragua and the United States. It was followed by the Buenos Aires Convention on Literary and Artistic Copyright of 1910 and its revision in 1928. The system was finalized with the Pan American Copyright Convention of 1946, or formally the Inter-American Convention on the Rights of the Author in Literary, Scientific and Literary Works.

In effect this development split the world into two competing multilateral regimes. First, the Berne Convention is an open treaty, i.e., open to all nations. The Pan American Convention, on the other hand, is a closed treaty open only to countries in the Americas. Second, Berne requires no special procedures such as registration to obtain protection in a participating State, i.e., national treatment is automatic. On the other hand, the Pan American Convention allows for special procedures including use of the ‘©’ symbol on any work claiming protection in a participating State. Third, Berne extended ‘courtesy’ protection to works if simultaneously published in a Berne Convention country whether or not they originated in a participating State. Under the Pan American Convention, on the other hand, protection was restricted to works from participating nations. In a sense Berne focuses on the artist/author/creator no matter citizenship while the Pan American Convention protects only works by resident creators.

Before and after the First and Second World Wars various attempts were made to reconcile these two regimes. It was not, however, until the UNESCO inspired Universal Copyright Convention of 1952 that an overarching instrument, however flawed, was erected to span the gulf between the two regimes. Arguably, it did not succeed.

Finally in 1989 the U.S. acceded to the Berne Convention and Congress took steps towards recognizing moral rights, e.g., the Visual Artists Protection Act of 1990 which eventually became Section 106A of the U.S. copyright act. However, rights of paternity and integrity of one’s work is available only to artists of ‘recognized’ reputation. Recognized by whom? By the Courts! Similarly, the Architectural Works Copyright Protection Act, Pub. L. 101-650 was passed in 1990. Its moral rights provisions, however, are so weak that it has not been incorporated into the U.S. copyright act. It is an open question whether the United States has in fact fulfilled its obligations under the Berne Convention. A summary index of global and regional instruments making up the multilateral copyright regime between 1883 and 2008 is displayed in Annex A.

The American Era

Development of statutory and case law in the United States arguably defines the current digital era of copyright and patent protection. These have served as legal precedent in other jurisdictions and established techno-economic path dependency in many industries. I will now review the five major legislative developments in the United States over the last 35 years that define it as the American digital era of copyright protection.

(i) 1976 Amendment of the U.S. Copyright Act

Amendment in 1976 ended the traditional requirement that a work must be published before copyright is granted. This was complimented by introduction of a new electronic or digital transmission right adding to traditional print copyright and performance rights for musical and dramatic works introduced in the late 19th century.

As with the printing press conversion of old works to new media - old wine into new bottles – is initially the most profitable avenue for proprietors. A major reason it took until 1710 (the moveable type printing press was invented in 1440) to recognize the rights of contemporary authors was the backlog of public domain works from the ancient and medieval worlds being profitably converted into print from hand written sources. Works by contemporary authors, then as now, represented a small part of the national knowledge-base.

A prescient entrepreneurial example was Ted Turner’s 1986 purchase of the MGM film library for transmission on his TV network. Conglomerate cross-media ownership allowing the conversion of copyrighted and increasingly public domain works from analog to digital formats and vice versa has in fact become the norm – content is king. This raises the question of media ownership concentration which is not, however, further considered in this policy research note.

(ii) 1980 Computer Software Copyright Act

In 1980 Congress added computer program as a work subject to protection under the Copyright Act (17 U.S.C. § 101). Extension to computer software means that software is now treated as if an artistic or literary work for purposes of the Berne Convention. Thereby distinction between human-readable and machine readable code and between utilitarian and non-utilitarian purpose was extinguished. Copyright in effect became industrial property.

Together with the 1976 amendment granting copyright protection to unpublished works this development has significant implications for the competitive ability of software proprietors to keep critical code from competitors and complimentary or application creators.

Furthermore in the 1981 U.S. case of Diamond v. Diehr the Supreme Court ordered the Patent & Trademark Office to grant a patent on an invention even though computer software was used. This precedent established that software can, under certain circumstances, also qualify for patent protection. Thus software is the only type of work subject to copyright, patent and trade secret protection. In this sense, as I have argued elsewhere (Chartrand April 23, 2008), software is sui generis and deserving of its own unique form of intellectual property right protection as do integrated circuit topologies today.

In Canada, software gained copyright protection in 1988 (S.C. 1988, c. 15). Inclusion as an artistic or literary work was accompanied by extension of protection to unpublished works. Previously the price of copyright was publication; afterwards protection became available without publication.

With respect to patenting software in Canada, since the 1981 case of Schlumberger Canada Ltd. v. Commissioner of Patents such protection has effectively been available, again under certain circumstances. The question of ‘soft’ patents, however, remains a matter of commercial and legal controversy, e.g., the Amazon dotcom ‘one click’ purchase program.

(iii) 1988 Berne Convention Implementation Act

In 1989, following Congressional passage of the Berne Convention Implementation Act in 1988, the United States acceded to the Berne Convention. This ended a century long schism in the multilateral copyright regime between the European-backed author-based Berne Convention of 1886 and what finally became the mercantilist-based Pan American Copyright Convention of 1947 backed by the United States (Chartrand March 2007).

It should be recalled that until the Chace Act of 1891 no American royalties were paid to foreign authors whose works were cheaply re-printed in the U.S. Copies were then sold legally in the U.S. and illegally, at very low prices, elsewhere in the English-speaking world including Canada. Similarly until 1984 no book written by an American author could be sold in the United States unless printed there. This was known as the ‘Manufacturing Clause’. Multilaterally the U.S. treated the Americas, under the Monroe Doctrine, as their sphere of influence and actively resisted the imperial aspirations of European states with the Berne Convention. The UNESCO sponsored Universal Copyright Convention of 1952 failed to heal the rift.

Congress, after accession, also took steps to satisfy requirements of the Berne Convention including recognizing, for the first time under federal law, moral rights of creators. Initiatives included the Visual Artists Protection Act of 1990 which eventually became Section 106A of the U.S. Copyright Act. However, rights of paternity and integrity (two of many moral rights available in Civil Code countries) became available only to American artists of ‘recognized’ reputation. Recognized by whom? By the Courts! Similarly, the Architectural Works Copyright Protection Act, Pub. L. 101-650 was passed in 1990. Its moral rights provisions, however, are so weak that it has not been incorporated into the U.S. Act.

Patterson & Birch write that this change was:

… prompted by the adherence of the United States to the Berne Convention. The moral right is not a right of the copyright owner, but of the creator of the work - a personal right that enables the author to protect the integrity of the work and his or her reputation in conjunction with it. A feature of copyright in European countries, moral rights have been given only limited recognition in the United States, presumably because such rights are inalienable personal rights of the author to which the property right of the copyright holder may be subject. Moral rights, for example, might give the author of a novel the right to reject a movie producer's film treatment of the novel, although the producer had purchased the right to make the novel into a film. This fact probably explains why the statute limits the moral right to works of visual art, reflecting the disagreement as to the desirability of the doctrine between authors as creators and copyright holders as entrepreneurs. (Patterson & Birch 2009, 270)

It is an open question, however, whether the United States has fulfilled its obligations regarding moral rights of creators under the Berne Convention. To this point in time, to my knowledge, no member state of the Convention has challenged the U.S. on this question

Accession to the Berne Convention led to, among other things, increased industry lobbying, especially by the Disney Corporation, to extend the term of copyright. Thus in 1998 what has been called by critics the Copyright Theft Act or Mickey Mouse Copyright Act became Public Law 105-298 - the Sonny Bono Copyright Term Extension Act.

This Act extended the copyright term by twenty years for pre-existing works and extended it from life of the author plus 50 to 70 years for new works as permitted under the Berne Convention. As Paterson & Birch note:

…This term of protection is the equivalent of three generations, or perhaps now four. While a copyright for multiple successive generations is not perpetual, it feels very much like a way-station on the road to infinity and thus presents a problem in view of the constitutional requirement that copyright be granted only for limited Times. (Patterson & Birch 2009, 273)

In 1998 Congress passed and President Clinton signed the Digital Millennium Copyright Act or the DMCA. In fact the DMCA consist of five distinct acts:

Title I: WIPO Copyright and Performances and Phonograms Treaties Implementation Act of 1998;

Title II: Online Copyright Infringement Liability Limitation Act;

Title III: Computer Maintenance Competition Assurance Act;

Title IV: Miscellaneous Provisions; and,

Title V: Vessel Hull Design Protection Act.

For purposes of this third policy research note I consider only the first: the WIPO Copyright and Performances and Phonograms Treaties Implementation Act of 1998. This contains the most controversial aspect of the DMCA – provisions concerning circumventing technological measures to control access to protected works and digital rights management systems. I consider only the first – technological measures - in this note.

This Act arguably began the current digital era of copyright protection, an era of what I call ‘private law’ including rights of search and seizure not seen since the high days of the Stationer’s Company of London in the 17th century. It was provisions of the DMCA that allowed the Recording Industry Association of America (RIAA) and Motion Picture Association of America (MPAA) and now independent film studios to initiate legal action against not just those financially benefiting from copyright infringement but also against individual users including students and grandmothers as well as internet service providers.

The DMCA has become the primary internationally recognized norm defining current digital era copyright protection and, as we shall see, authorizing private law prosecution of those engaged in the circumvention of effective technological measures of protection.

TRIPS

In 1995 the World Trade Organization (WTO) began operations and a new global economy was born. Today, virtually all member states of the United Nations (UN) belong to the WTO with the notable exception of the Russian Federation. Put another way, global regulation of political and military competition by the UN beginning in 1945 was extended to global regulation of economic competition by the WTO fifty years later. This was possible only because of the triumph of the Market over Marx.

For the first time virtually all Nation-States agreed to abide by common rules of trade recognizing the WTO as final arbitrator of disputes and authorizing it to sanction countervailing measures against offenders of its rules. Given the historical role of trade disputes fueling international conflict, the WTO compliments the UN as a bulwark of international peace, law and order.

It is important to note that after the Second World War the United States was primarily responsible for erecting a new architecture for international affairs including the United Nations, the World Bank, the International Bank for Reconstruction and Development and the General Agreement on Tariffs and Trade (GATT). Similarly, formation of the WTO occurred at the height of post-Cold War American power and influence. Not surprisingly the structure of and the multilateral agreements underlying the WTO reflect American influence and interests.

As a multilateral instrument, the WTO is a ‘single undertaking’, i.e., it is a set of instruments constituting a single package permitting only a single signature without reservation. One of these instruments is the Trade-Related Intellectual Properties and Services Agreement (TRIPS) that constitutes, in effect, a global treaty on trade in knowledge, or more precisely, in intellectual property rights (IPRs) such as copyrights, patents, registered industrial designs and trademarks. TRIPS, however, is only one part of a complex WTO package that includes the General Agreement on Tariffs and Trade (GATT) and twenty-six other agreements.

With respect to the multilateral ICPR regime TRIPS is, however, only the tip of the iceberg (Annex A-D). Below is a dense web of other relevant global and regional agreements, conventions and treaties including those administered by the World Intellectual Property Organization (WIPO) as well as other international organizations including UNESCO. WIPO, like UNESCO, is a special subject agency of the United Nations.

TRIPS requires accession to some but not all WIPO instruments. TRIPS also explicitly excludes ‘non-trade-related’ intellectual & cultural property rights, e.g., aboriginal heritage rights including traditional ecological knowledge or (TEK), collective or community-based intellectual property in general (Shiva 1993) as well as the moral rights of the Natural Person.

Furthermore WIPO (an International Organization) has a formal agreement with the WTO (an International Organization) to administer TRIPS as it does the Paris, Berne and many other multilateral instruments. Such agreements are the subject of the 1986 Vienna Convention on the Law of Treaties between States and International Organizations or Between International Organizations. Thus it is no longer just the laws of nations but also the internal rules of international organizations that shape the multilateral regime, i.e., treaties between international bureaucracies.

The effects of TRIPS on the multilateral ICPR regime are four-fold: First, by excluding moral rights of the Natural Person TRIPS effectively converted copyright or ‘protection of literary and artistic works’ into industrial property. As demonstrated these are historically two separate classes of intellectual property.

In this regard, Victor Hugo must have turned over in his hallowed Parisian Pantheon crypt when computer software was accepted as ‘a work’ subject to his 1886 Berne Convention on the Protection of Artistic and Literary Works. Until then copyright protected only artistic and literary works of words, images, shapes and/or sounds, i.e., human-readable code. In effect, Common Law economics trumped Civil Code culture in TRIPS.

Second, TRIPS opened up a new division within the multilateral regime similar to the Berne and Pan American Copyright Conventions. Thus while the 2003 UNESCO Convention on Intangible Cultural Heritage and its 2005 Convention on Cultural Diversity explicitly state they do not conflict with other agreements, the geo-political-economic reality is otherwise. Any attempt by the U.S. to seek countervail in a WTO panel against measures to protect national cultural industries will be answered by reference to these UNESCO conventions.

Third, TRIPS, a WTO initiative, energized countries like Canada, France and Sweden to use UNESCO as a vehicle to counter its perceived economic bias (Chartrand 2002). TRIPS, however, is administered by WIPO (a UN special subject agency). Therefore together with UNESCO (also a UN special subject agency) the split between Culture and Commerce, between Common Law and Civil Code traditions, has, in effect, been institutionalized in the multilateral intellectual & cultural property regime.

Fourth, the intellectual property rights regime is a critical policy instrument for the competitiveness of nations in a global knowledge-based economy. Preferential public support for production of traditional goods & services such as cars is subject to harmonization under the rules of the WTO. Intellectual property rights under TRIPS, however, remain subject to national treatment. This allows a Nation-State to design an ICPR regime best suited to its purposes – commercial and/or cultural.

ACTA

Initial ACTA – the Anti-Counterfeiting Trade Agreement – negotiations began between Japan and the United States in 2006 with Canada, the European Union (and its member states) and Switzerland subsequently joining preliminary talks. Formal negotiations began in June 2008 expanding to include Australia, Mexico, Morocco, New Zealand, the Republic of Korea and Singapore. Mexico subsequently withdrew leaving Morocco as the only developing country. ACTA deals primarily with trademarks and copyrights with passing reference to patents and no mention of registered industrial designs or ‘design patents’ as they are called in the U.S.

An advisory committee of multinational corporations was established including the Pharmaceutical Research and Manufacturers of America and the International Intellectual Property Alliance whose membership includes the Business Software Alliance, Motion Picture Association of America, and Recording Industry Association of America. It is important to note that members of the advisory committee include Canadian, European, Japanese and other foreign corporations operating in the United States such as Alliance (Canadian) Bertelsmann (German), Hachette (French) and Sony (Japanese). This reflects significant cross market penetration with U.S. firms active in foreign markets and foreign firms active in the United States –the largest single market in the world. The final draft of the treaty was published on April 15, 2011.

International controversy surrounding ACTA has focused on copyright while trademark provisions appear, to my knowledge, to have aroused no public protest. With respect to copyright, three issues have risen to public attention. These are: Secrecy, Access to Information/Freedom of Expression and Privacy. I will briefly review each of these concerns and then raise another – moral rights of creators– which lays hidden beneath seemingly innocuous wording as in the treaty’s Preamble:

Intending to provide effective and appropriate means, complementing the TRIPS Agreement for the enforcement of intellectual property rights, taking into account differences in their respective legal systems and practices.

Woodrow Wilson, president of the United States, crafted the peace ending the ‘War to End All Wars’ in 1919 with his 14 points. The very first declared no more secret treaties. It was directed especially at new Nation-States (a term entering American English in 1919) emerging from fallen European empires of subjugated Czechs, Poles, Slovaks, Ukrainians, etc. as well as their overlords – the Austro-Hungarians, Germans and Russians.

Before official publication in 2011 only beginning with a May 2008 Wikileaks was the public made aware of the nature of the negotiations. In brief, ACTA was negotiated outside ‘normal’ diplomatic channels such as the WTO (World Trade Organization) and WIPO (World Intellectual Property Organization). Such channels subject multilateral negotiations to significant public transparency and engage all Member States, not just a coalition of the commercially self-interested. ACTA negotiations, however, were declared a national security issue by Presidents Bush and Obama. Negotiating States and advisory committee members were subject to strict non-disclosure provisions. Furthermore, the advisory committee included no ‘user groups’ such as libraries and educational institutions or ‘creator groups’ representing artists, authors, performers, etc. Only rights holders were consulted during negotiations.

Furthermore, the treaty was drafted to be enabling rather than prescriptive. By this I mean participating Member States need not change domestic law and arguably need not subject the agreement to legislative review or formal ratification.

Arguably it was for this reason that Kader Arif, European rapporteur for ACTA, resigned on 26 January 2012 saying "I want to send a strong signal and alert the public opinion about this unacceptable situation. I will not take part in this masquerade.” Shortly thereafter politicians including the former prime minister of Romanian observed that they did not know why they had even signed the treaty as protests broke out and continue across Europe and online.

With respect to Access to Information/Freedom of Expression and Privacy ACTA enables Member States to conscript internet service providers (ISPs) to enforce IPRs on behalf of rights holders. There are also border measures that allow computer searches of laptops and other computing devices.

While most European countries have repudiated their signature of ACTA, among others, Canada, the United Kingdom and Australia (despite a recommendation by a Parliamentary Committee to delay ratification) are going forward. In Canada this is embodied in Bill C-56 An Act to amend the Copyright Act and the Trademarks Act and to make consequential amendments to other Acts, a.k.a., the Combating Counterfeit Products Act of 2013.

Cultural Property

As noted above, traditionally the relationship between intellectual and cultural property is Time. In this view, cultural property is private intellectual property that has, over time, fallen into the public domain and then, in effect, been ‘nationalized’. Similarly, the term has been generally restricted to a limited range of things distinguishable from the ordinary by their special cultural significance and/or rarity. Such cultural property constitutes a Nation-State’s patrimony.

Globally, there have been three periods in the evolution of the multilateral cultural property rights regime: to World War II, Cold War and Post-Cold War periods. I will outline each.

To World War II (1874-1945)

To World War II (1874-1945) attention focused on protecting traditional cultural property in times of war. It began in Brussels during July 1874 when delegates from 15 European States met to examine a draft international agreement about the laws and customs of war. This was the Brussels Declaration. It was submitted by Czar Alexander II who had previously emancipated the serfs in 1861. In effect, delegates recognized cultural property belongs to all humanity, not just combatants in a conflict. While adopted by the conference the Declaration was not subsequently ratified.

Later in 1874 the Institute of International Law appointed a committee to study the Declaration. This led in 1880 to the Institute’s adoption of the Manual of the Laws and Customs of War at Oxford. In turn, the Brussels Declaration and the Oxford Manual became the basis for the Hague Conventions on land warfare in 1899 and on land and sea warfare in 1907. Both include provisions extending protection to cultural property in times of armed conflict. In 1923, these provisions were extended to war in the air.

Following the 1935 Pan American Roerich Pact for the protection of artistic, scientific and historic institutions and monuments attempts were made for a more global convention. In 1939 a draft convention prepared by the International Museums Office of the League of Nations was submitted by the Netherlands but due to the outbreak of World War II no further action was taken.

Cold War (1945-1990)

In the Cold War period (1945-1990) attention focused on finalizing the Hague Convention and regulating the flow of cultural property between countries. Accordingly in 1954 a dedicated Hague Convention for the Protection of Cultural Property in Times of Armed Conflict was signed and subsequently ratified.

In 1945, however, the United Nations Educational, Scientific and Cultural Organization (UNESCO) was created as branch of the United Nations. Article 1 of its Constitution calls for protection and preservation but also for the free flow or exchange of cultural property between nations. Nonetheless, in 1947 the General Agreement on Tariffs and Trade (GATT) was signed and subsequently ratified. It not only exempted traditional cultural property from free trade requirements but extended the exemption to contemporary cultural property initially motion pictures but subsequently other cultural industries, e.g., broadcasting and publishing.

UNESCO then established a regulatory framework for the international exchange of contemporary cultural property through its 1948 Beirut Agreement on visual and auditory materials and its 1950 Florence Agreement on educational, scientific and cultural materials. In 1970 UNESCO’s Convention on the Illicit Import, Export and Transfer of Cultural Property attempted to stem the growing illegal flood of traditional cultural property between nations. The only other binding instrument created during this period was UNESCO’s 1972 Convention on the Protection of World Cultural & Natural Heritage. This was the first multilateral instrument to reflect the American tradition of linking human-made and natural heritage.

Post-Cold War (1990-2008)

In the Post-Cold War period (1990-2008) the international flow, preservation and production of cultural property became the focus of attention. As will be demonstrated in more detail below the WTO’s 1995 Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) radically altered the multilateral intellectual property rights regime by, among other things, effectively converting copyright into industrial property. This has had significant implications for multilateral cultural property rights and the international flow of contemporary cultural property. Also in 1995 the UNIDROIT Convention on Stolen or Illegally Exported Cultural Objects was signed coming into force in 1998 thereby reinforcing the 1970 UNESCO Convention to stem the theft and illegal export of traditional moveable cultural property.

Preservation and protection was also the intention of UNESCO’s 2001 Convention on the Underwater Cultural Heritage arguably reflecting technological change that eased access to another source of traditional cultural property. It was also arguably the intention of UNESCO’s 2001 Convention for the Safeguarding of Intangible Cultural Property. In this case, however, it was arguably a response to TRIPS implicit exemption of such rights rather than technological change.

Similarly UNESCO’s 2005 Convention on the Protection and Promotion of Cultural Diversity was a response to TRIPS but this time to promote production of contemporary cultural property by domestic cultural industries rather than to protect and preserve traditional property. It was an assertion of cultural sovereignty on the part of 148 nations with only 2 opposed – the United States and Israel - with 4 abstaining.

To 5.0 Uses & Abuses

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