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From Minimum Standards to Maximum Rules

  • Chapter
TRIPS plus 20

Part of the book series: MPI Studies on Intellectual Property and Competition Law ((MSIP,volume 25))

Abstract

Partly born out of frustration about the incessant demands for increased intellectual property (IP) protection in the post-TRIPS era, calls for the introduction of mandatory limits for such protection have become vibrant over the last decade, leading to a number of initiatives and, recently, to the adoption of the first international IP treaty that is primarily geared towards limitations and exceptions. This chapter gives an overview on the background and current state of the movement towards maximum rules, discusses the potential benefits and drawbacks of the approach, the relationship with obligations resulting from previous IP treaties, and possible ways forward.

Prof. Dr. Dr. h.c. Annette Kur is Senior Research Fellow at the Max Planck Institute for Innovation and Competition, Munich, and Associate Professor at the University of Stockholm.

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Notes

  1. 1.

    Such as the USA which was characterized by Senator Jonathan Chace, promoter of the 1891 Copyright Act, as “the Barbary coast of literature” and its people as “the buccaneers of books”; Golan v. Holder, 609 F. 3d 1076 (10th Cir. 2010), fn. 2, quoting from S. Rep. No. 622, 50th Cong., 1st Sess., p. 2. A well-known episode from the period preceding the legislation concerns the complaints by Charles Dickens over the income lost through cheap unauthorized reprints of his works, escalating during Dickens’ US reading tour in 1842 and leading to both sides bitterly begrudging each other’s conduct. See also J. Ginsburg & J.M. Kernochan (2004), One Hundred and Two Years later: The US joins the Berne Convention, in R. Merges & J. Ginsburg (Eds.), Foundations of Intellectual Property, pp. 298 et seq.

  2. 2.

    Accounts of those practices are many; see e.g. J. Lerner (1999), 150 Years of Patent Protection, NBER Working Paper Series Vol. 7478 of August 1999, p. 15; E. Schiff (1971), Industrialization without National Patents – The Netherlands, 1869–1912, Switzerland, 1850–1907, in particular at pp. 85 et seq.; B.Z. Khan & K.L. Sokoloff (2009), Historical Perspectives on Patent Systems in Economic Development, in N. Weinstock Netanel (Ed.), The Development Agenda, pp. 232 et seq.

  3. 3.

    Paris Convention for the Protection of Industrial Property (1883; last revised in Stockholm 1967); Berne Convention for the Protection of Literary and Artistic Works (1886; last revised in Paris 1971).

  4. 4.

    Article 4 Paris Convention. Due to the priority principle a person filing an application for an industrial property right in a Paris Union member state can invoke an earlier filing date from another member state if the subsequent filing takes place within 12 months (patents, utility models) or six months (trademarks, industrial design) from the earlier date.

  5. 5.

    Obviously the principle makes sense primarily for countries following a “first to file” approach to registered rights. It is indeed so that both the Paris and the Berne Convention are heavily influenced by the concept underlying industrial property resp. copyright protection in civil law (continental European) countries.

  6. 6.

    Meaning that if a trademark is validly registered in its country of origin the proprietor is entitled to request that the mark be registered “as is” in other member states of the Paris Union, unless the registration is rejected for one of the grounds listed in part B of the provision.

  7. 7.

    Article 2 Berne Convention provides an open catalogue of works for which protection must be granted, while leaving it to the Member States to define the threshold for protection.

  8. 8.

    Article 8 Berne Convention.

  9. 9.

    Article 10 Berne Convention.

  10. 10.

    Article 11bis Berne Convention.

  11. 11.

    Berne Convention revision conferences where held in Berlin (1908), Berne (1914), Rome (1928), Brussels (1948), Stockholm (1967) and Paris (1971). The Paris Convention was revised at Brussels (1900), Washington (1911), The Hague (1925), London (1934), Lisbon (1958) and Stockholm (1967).

  12. 12.

    The same applies to the Paris Convention.

  13. 13.

    Articles 2(1) and 9(1) TRIPS.

  14. 14.

    For an in-depth account of the history of TRIPS see D. Gervais (2012), The TRIPS Agreement – Drafting History and Analysis; ICTSD/UNCTAD (2005), Resource Book on TRIPS and Development.

  15. 15.

    See e.g. R.M. Sherwood (1993), Why a Uniform Intellectual Property System Makes Sense for the World, in M.B. Wallerstein, M.E. Mogee & R.A. Schoen (Eds.), Global Dimensions of Intellectual Property Rights in Science and Technology, p. 75; see also J. Straus & N. Klunker (2007), Harmonisierung des internationalen Patentrechts, GRUR Int. 2007, 97. For a comprehensive study resulting in a more differentiated view see K. Maskus (2000), Intellectual Property Rights in the Global Economy.

  16. 16.

    In particular measures taken by the USTR based on Sec. 301 of the U.S. Trade Act of 1974, 19 U.S.C. § 2411. Further on the effect of such measures on the TRIPS negotiations see R. Dreyfuss & G.B. Dinwoodie (2012), A Neofederalist Vision of TRIPS, p. 33.

  17. 17.

    This is also shown in the analysis by K. Maskus (2000), Intellectual Property Rights in the Global Economy, Ch. 5.

  18. 18.

    See in particular S. Sell (2010), The Global IP Upward Ratchet, Anti-Counterfeiting and Piracy Efforts: The State of Play, PIJIP Research Paper No. 15 of October 2010. See also R. Dreyfuss & G.B. Dinwoodie (2012), A Neofederalist Vision of TRIPS, p. 178, with reference to P. Drahos (2001), BITs and BIPs – Bilateralism in Intellectual Property, 4 J. W. Intell. Prop. 2001, 791.

  19. 19.

    As far as can be seen, the term “substantive maxima” and the concept to which it refers was first used by R. Dreyfuss (2004), TRIPS – Round II: Should Users Strike Back, 71 U. Chi. L. Rev. 2004, 27; see also G.B. Dinwoodie (2006), The International Intellectual Property Law System: New Actors, New Institutions, New Sources, 10 Marquette Intell. Prop. L. Rev. 2006, 214. In the following, the terms “ceilings” and “substantive maxima” are used alternately.

  20. 20.

    The concept of maximum standards and its potential implementation in the different areas of IP law figured as a central issue in the project “IP in Transmission” (IPT) that resulted in the book by A. Kur & M. Levin (2011), IP in a Fair World Trade System; see also A. Kur & M. Levin (2014), The IPT Project – Proposals to Reform the TRIPS Agreement, in G. Ghidini, R.J.R Peritz & M. Ricolfi (Eds.), TRIPS and Developing Countries – Towards a new World Order?, pp. 167 et seq.

  21. 21.

    B. Hugenholtz & R. Okediji (2008), Conceiving an International Instrument on Limitations and Exceptions to Copyright, Final – Report of 6 March 2008; see also A. Kur & H. Grosse Ruse-Khan (2011), Enough is Enough – The Notion of Binding Ceilings in International Intellectual Property Protection, in A. Kur & M. Levin (Eds.), Intellectual Property in a Fair World Trade System, pp. 378 et seq.

  22. 22.

    See J. Blomqvist (2011), The Consistency of Mandatory Exceptions Treaties with International Conventions in the Field of Copyright and Related Rights (paper presented at the 2011 ALAI Congress in Dublin), arguing against A. Kur & H. Grosse Ruse-Khan (2011), Enough is Enough – The Notion of Binding Ceilings in International Intellectual Property Protection, in A. Kur & M. Levin (Eds.), Intellectual Property in a Fair World Trade System, with reference to the (French, authoritative) wording of the provision and the legislative history; however, J. Ginsburg & S. Ricketson (2006), International Copyright and Neighbouring Rights, para. 6.111, argue with regard to both the exclusion of news of the day and the quotation right that although member states may be free to grant unrestricted protection to their own nationals, the Berne Convention requires “that member states preserve the freedom of these excluded elements when the works that contain them traverse borders”.

  23. 23.

    See SAS Institute Inc v. World Programming Ltd. [2010] EWHC 1829 (Ch), para. 204, where the judge (Lord Justice Jacob) argued that computer program language must remain excluded from Copyright due to Article 2 WCT while the CJEU confirmed the exclusion in ECJ, SAS Institute, C-406/10, EU:C:2012:259, without commenting on the WCT. It is another question to what extent protection of such items under other regimes (e.g., sui-generis protection of mere data) would be considered as violating TRIPS. This depends in particular on the interpretation of Article 1(1) 2nd sentence TRIPS; see A. Kur & H. Grosse Ruse-Khan (2011), Enough is Enough – The Notion of Binding Ceilings in International Intellectual Property Protection, in A. Kur & M. Levin (Eds.), Intellectual Property in a Fair World Trade System, p. 395.

  24. 24.

    This interpretation as well is not uncontested; see J. Blomqvist (2011), The Consistency of Mandatory Exceptions Treaties with International Conventions in the Field of Copyright and Related Rights (paper presented at the 2011 ALAI Congress in Dublin), favouring a different interpretation; for a different opinion (cogent character of quotation rule) see J. Ginsburg & S. Ricketson (2006), International Copyright and Neighbouring Rights.

  25. 25.

    The same applies with regard to parts of aircraft protected by patents or industrial design, according to Art. 27 of the Convention on Civil International Aviation (Chicago Convention) 1944.

  26. 26.

    See e.g. Article 41(1), 52 TRIPS. On the possible implications of Article 52 for the possibility to seize goods in transit see H. Grosse Ruse-Khan & Th. Jaeger (2009), Policing Patents Worldwide – EC Border Measures against Transiting Generic Drugs under EC and WTO Intellectual Property Regimes, 40 IIC 2009, 533–34. India and Brazil have invoked Articles 52 and 41(1) TRIPS in their complaints to the WTO about measures taken by Dutch customs authorities against medicaments in transit; see Request for Consultation by India, European Union and a Member State seizure of generic drugs in transit, WT/DS408/1 (May 19, 2010), at 3 and corresponding request by Brazil, WT/DS409/1, at 4.

  27. 27.

    The potential of that clause as a door-opener for maximum standards is thoroughly explored by H. Grosse Ruse-Khan (2009), Time for a Paradigm Shift? Exploring Maximum Standards in International Intellectual Property Protection, 1 Trade, L. and Dev. 2009, 66 et seq.

  28. 28.

    EC – CARIFORUM Economic Partnership Agreement (EPA) signed on 15 October 2008. For more details concerning the ceiling rules contained in the EPA provisions on trademarks (fair use of descriptive terms), industrial designs (exclusion of functional features from protection) and competition (prohibition of competition distorting use of intellectual property), see A. Kur & H. Grosse Ruse-Khan (2011), Enough is Enough – The Notion of Binding Ceilings in International Intellectual Property Protection, in A. Kur & M. Levin (Eds.), Intellectual Property in a Fair World Trade System, p. 383.

  29. 29.

    The literature on the topic is very rich. For an overview, see e.g. P.K. Yu (2007), Reconceptualizing Intellectual Property Interests in a Human Rights Framework, 40 UC Davis L. Rev. 2007, 1039; Ch. Geiger (2006), ‘Constitutionalizing’ Intellectual Property Law? The Influence of Fundamental Rights on IP in the European Union, 37 IIC 2006, 371; see also P. Torremans (2008), Intellectual Property and Human Rights (enhanced edition of Copyright and Human Rights). Although the superior dignity of Human Rights norms as compared to trade regulations is basically uncontested, this will not frequently lead to Human Rights norms forming an absolute barrier to protection of intellectual property rights, mainly for structural reasons, concerning the degree of specificity of the respective regulations.

  30. 30.

    See Max Planck Institute (2013), Copyright, Competition and Development (Report mandated by WIPO).

  31. 31.

    Employing the term “users’ rights” isn’t always a fortunate choice because its correctness may depend on the legal system in relation to which it is applied. Notwithstanding the details, however, it would appear justified to talk about users’ rights in a situation when legal safeguards are installed in order to ensure that use can actually be made, i.e. when the right holder is legally obliged to provide access to content otherwise locked through technical protection measures, and when the permission to use cannot be abrogated by contract; see also below.

  32. 32.

    Standing Committee on Copyright and Related Rights, SCCR/16/2 of 17 July 2008.

  33. 33.

    Proposal by Brazil, Ecuador and Paraguay, Relating to Limitations and Exceptions: Treaty Proposed by the World Blind Union (WBU), SCCR/18/5 of 23 October 2008.

  34. 34.

    M.J. Ficsor (2013), Commentary on the Marrakesh Treaty on Accessible Format Copies for the Visually Impaired, Copyright See-Saw of 11 October 2013; an account of the history of the negotiations is given by A. Scheinwald (2012), Who Could Possibly Be Against a Treaty for the Blind, 22 Fordham Intell. Prop. Media & Ent. L.J. 2012, 445.

  35. 35.

    M.J. Ficsor (2013), Commentary on the Marrakesh Treaty on Accessible Format Copies for the Visually Impaired, Copyright See-Saw of 11 October 2013. Introduction para. 19 emphasizes that the title shows that, in contrast to other international copyright treaties, the Marrakesh treaty is “format-centric”, thus having an “exceptional and unique objective and subject matter”.

  36. 36.

    For a more far-reaching initiative which is equally centred on substantive maxima in copyright (and patent) protection, and even included mandatory limitations regarding the extension in time, see Draft Treaty on Access to Knowledge (A2K) of 9 May 2005.

  37. 37.

    See e.g. P.D. Harpur & N.P. Suzor (2013), Copyright Protections and Disability Rights: Turning the Page to a New International Paradigm, 36 UNSW L.J. 2013, 745; for the echo on blogs see e.g. V. Franz, The Miracle in Marrakesh: Copyright Reform to End the “Book Famine”, Open Society Foundation of 28 June 2013; C. Saez (2013), Over 50 Countries Sign Marrakesh Treaty On Copyright Exceptions And Limitations For The Blind, Intellectual Property Watch of 1 July 2013.

  38. 38.

    For an actual account of the state of accessions and membership to the Marrakesh Treaty see WIPO-Administered Treaties, available at http://www.wipo.int/treaties/en/ShowResults.jsp?lang=en&treaty_id=843.

  39. 39.

    Until this time (4 August 2015) the Treaty has been ratified by 7 countries (Argentina, El Salvador India, Mali, Mexico, Paraguay and Uruguay), while accession was declared by Singapore and the United Arab Emirates.

  40. 40.

    The expression was allegedly coined by William Rowland, former president of the WBU; A. Scheinwald (2012), Who Could Possibly Be Against a Treaty for the Blind, 22 Fordham Intell. Prop. Media & Ent. L.J. 2012, 448, fn. 2.

  41. 41.

    According to the WBU’s press release on 20 April 2014 announcing the conclusion of the Marrakesh VIP Treaty, “only some 7 % of published books are ever made accessible (in formats such as Braille, audio and large print) in the richest countries, and less than 1 % in poorer ones”. It would be short-sighted, however, to blame the situation primarily on copyright, in particular as the figures also include material that is in the public domain.

  42. 42.

    A. Scheinwald (2012), Who Could Possibly Be Against a Treaty for the Blind, 22 Fordham Intell. Prop. Media & Ent. L.J. 2012, 487 et seq.; P.D. Harpur & N.P. Suzor (2013), Copyright Protections and Disability Rights: Turning the Page to a New International Paradigm, 36 UNSW L.J. 2013, 761 et seq.; see also the emphasis placed by proponents of traditional copyright norm-making such as M.J. Ficsor (2013), Commentary on the Marrakesh Treaty on Accessible Format Copies for the Visually Impaired, Copyright See-Saw of 11 October 2013, on the exceptional and unique character of the treaty.

  43. 43.

    IFLA is the International Federation of Library Associations and Institutions. See Treaty Proposal on Limitations and Exceptions for Libraries and Archives Version 4.4, IFLA of December 2013.

  44. 44.

    For the current situation in regards of limitations and exceptions in favour of libraries and archives see K. Crews (2008), WIPO Study on Copyright Limitations and Exceptions for Libraries and Archives, SCCR/17/2 of 26 August 2008.

  45. 45.

    Another example for a rather far-reaching initiative centered on substantive maxima is the Draft Treaty on Access to Knowledge (A2K) of 9 May 2005. The draft is broader than the previously mentioned initiatives in that it covers copyright as well as patent law; furthermore, it not only addresses limitations and exceptions in the narrow sense, but also other aspects such as limitations regarding (retroactive) extension of copyright duration. Furthermore, catalogues of mandatory limitations and exceptions in all areas of IP law have been elaborated in the framework of the IPT project (supra, fn. 20); see A. Kur & M. Levin (2011), IP in a Fair World Trade, proposed amended versions of Articles 13, 14(6), 17, 26(2) and 30, with explanations at pp. 558–564, 568–574, 575–576, 584–596; for a brief account of the mandatory limitations proposed see A. Kur & M. Levin (2014), The IPT project – Proposals to Reform the TRIPS Agreement, in G. Ghidini, R.J.R. Peritz & M. Ricolfi (Eds.), TRIPS and Developing Countries – Towards a new World Order?, pp. 177 et seq. See Text of the Proposals, Agreement on Trade-Related Aspects of Intellectual Property Rights of May 2011.

  46. 46.

    See L. Bently et al. (2010), Experts’ Study on Exclusions from Patentable Subject Matter and Exceptions and Limitations to the Rights, SCP/15/3 of 2 September 2010.

  47. 47.

    Exceptions and Limitations to Patent Rights: Private and/or Non Commercial Use, SCP/20/3 of 15 November 2014.

  48. 48.

    Exceptions and Limitations to Patent Rights: Experimental Use and/or Scientific Research, SCP/20/4 of 18 November 2013.

  49. 49.

    Exceptions and Limitations to Patent Rights: Extemporaneous Preparation of Medicines, SCP/20/5 of 9 October 2013.

  50. 50.

    Exceptions and Limitations to Patent Rights: Prior Use, SCP/20/6 of 21 October 2013.

  51. 51.

    Exceptions and Limitations to Patent Rights: Use of Articles on Foreign Vessels, Aircrafts and Land Vehicles, SCP/20/7 of 16 October 2013.

  52. 52.

    The topic forms part of the program of the WIPO Intergovernmental Committee on Intellectual Property and Genetic Resources, Traditional Knowledge and Folklore. For an evaluation of the legal issues involved see WIPO (2004), Technical Study on Patent Disclosure Requirements related to Genetic Resources and Traditional Knowledge.

  53. 53.

    See e.g. Communication on a Proposal to Amend TRIPS, WT/GC/W/564 of 31 May 2006 (proposal for Art. 29bis TRIPS).

  54. 54.

    See UN Framework Convention on Climate Change (UHFCC), Ad Hoc Working Group on Cooperative Long-term Action under the Convention, FCCC/AWGLCA/2009/INF.1 of 22 June 2009, pp. 184–186.

  55. 55.

    The dangers involved in that development are highlighted in H. Grosse Ruse-Khan et al. (2013), Principles for IP Provisions in Bilateral and Regional Agreements, 44 IIC 2013, 878.

  56. 56.

    M.J. Ficsor (2013), Commentary on the Marrakesh Treaty on Accessible Format Copies for the Visually Impaired, Copyright See-Saw of 11 October 2013, Introduction, paras. 14, 15; A. Scheinwald (2012), Who Could Possibly Be Against a Treaty for the Blind, 22 Fordham Intell. Prop. Media & Ent. L.J. 2012, 481. It remains unclear, however, whether the option of importing copies can actually make a substantial contribution to the supply of markets that until now are badly underserved.

  57. 57.

    Article 6 TRIPS.

  58. 58.

    This depends inter alia on the understanding of what is meant by exhaustion: If the notion is confined to the situation that the proprietor of the right has authorized the first sale, importation of copies made under the operation of law would be illegal, even where the principle of international exhaustion applies. On this point see also below.

  59. 59.

    On this point see below.

  60. 60.

    It must be added, however, that all international IP treaties are by necessity “trade-related” to some extent, as they will always influence the way in which protected items form part of international trade flows.

  61. 61.

    For similar argumentation – concerning forum shifting between different organisations and institutional frameworks – see L. Helfer (2004), Regime Shifting: The TRIPS Agreement and New Dynamics of International Intellectual Property Lawmaking, 29 Yale J. Int’l L. 2004, 2.

  62. 62.

    It is very questionable indeed whether the same rules would have been achievable on the national level (e.g. in the USA) without the negotiations in the international arena having been used as a lever.

  63. 63.

    The close relationship between the Marrakesh treaty and human rights issues is obvious; see A. Scheinwald (2012), Who Could Possibly Be Against a Treaty for the Blind, 22 Fordham Intell. Prop. Media & Ent. L.J. 2012, 457 et seq.

  64. 64.

    To be clear: this is not to be criticized as such. It is a necessary and important feature of parliamentary democracies that treaties negotiated internationally must be submitted to the vote of the Parliament before they can proceed to ratification.

  65. 65.

    Whether that will also hamper the success of the Marrakesh treaty waits to be seen. It is not unusual that it takes several years from signature of a treaty to its ratification by a sufficient number of states to enter into force.

  66. 66.

    This concerns inter alia the at least theoretical possibility to instigate proceedings before supranational institutions such as the European Court of Human Rights (ECtHR): It is most unlikely e.g. that failure to properly implement the Marrakesh Treaty could be successfully invoked before that court.

  67. 67.

    For a discussion of this point see A. Kur & H. Grosse Ruse-Khan (2011), Enough is Enough – The Notion of Binding Ceilings in International Intellectual Property Protection, in A. Kur & M. Levin (Eds.), Intellectual Property in a Fair World Trade System, pp. 369 et seq.

  68. 68.

    For an overview see S.D. Franck (2005), The Legitimacy Crisis in Investment Treaty Arbitration: Privatizing Public International Law through Inconsistent Decisions, 73 Fordham L. Rev. 2005, 1521. The issue has drawn considerable political concern lately, within and outside the arena of IP, following the instigation of proceedings before the International Centre for Settlement of Investment Disputes (ICSID) by Philip Morris against Australia for “plain packaging” regulations, by Vattenfall against Germany for the decision to abandon atomic energy, and by Eli Lilly against Canada for allegedly overly restrictive patenting requirements.

  69. 69.

    An interesting model is provided by the Optional Protocol to the Convention on the Rights of Persons with Disabilities (CRPD) that foresees the possibility for individuals or groups of individuals claiming to be victims of a violation of the CRPD by a member state to address themselves to the Committee on the Rights of Persons with Disabilities, who will then initiate consultations with the Member State concerned and eventually issue recommendations. However, also that model is “imperfect” under enforcement aspects insofar as the Committee does not have the power to issue binding decisions or sanctions. The text of the CRPD and the Optional Protocol are available at http://www.un.org/disabilities/convention/conventionfull.shtml and http://www.un.org/esa/socdev/enable/rights/convtexte.htm#optprotocol respectively.

  70. 70.

    It has been argued that this a TRIPS- (and WCT-)plus provision because it extends the application of the three-step test to the Berne Convention that would otherwise only be subject to its own, pre-TRIPS standards. It shall not be discussed here whether that is actually correct. In any case, it is unlikely that it would make a difference in practice. At least regarding Article 11bis Berne Convention the WTO-Panel in US copyright found that the possibilities granted under the provision three-step test are the same as would result from application of the three-step test; see on this point A. Kur (2011), Limitations and Exceptions under the Three-Step Test, in A. Kur & M. Levin (Eds.), Intellectual Property Rights in a Fair World Trade System, p. 251.

  71. 71.

    Further on this issue see below Sect. 4.

  72. 72.

    Panel Report, Canada – Patent Protection of Pharmaceutical Products, WT/DS114/R, adopted 7 April 2000, DSR 2000:V, p. 2289, and Panel Report, United States – Section 110(5) of the US Copyright Act, WT/DS160/R, adopted 27 July 2000, DSR 2000:VIII, p. 3769.

  73. 73.

    Emphasis added.

  74. 74.

    It seems that in many countries the associations of blind and visually impaired persons (where they exist) are ready to assume the task so that no new infrastructure is needed. However, it then needs to be decided whether the activities of such organizations need to be supervised to some extent, and by whom, etc.

  75. 75.

    It is true that to grant “wiggle room” also enhances the probability of divergences of national law, which might become a problem in particular in the context of cross-border exchange; see below.

  76. 76.

    This might be the case e.g. for audio books that have a rather broad audience anyhow and are therefore likely to be available under normal market conditions.

  77. 77.

    Furthermore, Article 10(2) provides that “Contracting Parties may fulfill their rights and obligations under this Treaty through limitations or exceptions specifically for the benefit of beneficiary persons, other limitations or exceptions, or a combination thereof, within their national legal system and practice. These may include judicial, administrative or regulatory determinations for the benefit of beneficiary persons as to fair practices, dealings or uses to meet their needs consistent with the Contracting Parties’ rights and obligations under the Berne Convention, other international treaties, and Article 11” [i.e. the reference enshrined in that article to the three-step test].

  78. 78.

    Article 21 IFLA-P.

  79. 79.

    Article 22(1) IFLA-P; in addition, it is stipulated that the application of the treaty must be transparent, “taking into account the priorities and special needs of developing countries as well as the different levels of development of the Contracting Parties” (Article 22(2)) and that “Contracting Parties shall ensure that implementation of this Treaty allows for the timely and effective exercise of the limitations and exceptions it mandates, including expeditious procedures that are fair and equitable” (Article 22(3) IFLA-P).

  80. 80.

    Article 4(2) IFLA-P.

  81. 81.

    Article 6 IFLA-P – this is called the “Right to Acquire Works”.

  82. 82.

    Articles 7–14 IFLA-P.

  83. 83.

    Even though the proposal is certainly backed by sound considerations, it must be submitted that the current document, rather than representing a text that could realistically be adopted as an international instrument, appears to have been drawn up as an “entry bid” to international negotiations that must ultimately result in compromise.

  84. 84.

    However, where adherence to the WIPO Internet Treaties forms part of obligations incurred under bilateral agreements, this may eventually result in international arbitration proceedings, depending on the stipulations in the agreement.

  85. 85.

    See also J. Blomqvist (2011), The Consistency of Mandatory Exceptions Treaties with International Conventions in the Field of Copyright and Related Rights (paper presented at the 2011 ALAI Congress in Dublin). This result might already follow per se if an agreement in the area of copyright (or related rights) is qualified as a “special agreement” in the meaning of Articles 20 (resp. 22) of the Berne (and Rome) Convention(s). Otherwise, applying the rule of lex posterior the later treaty might prevail, which would lead, in case of genuine conflict, to a violation of obligations resulting from the earlier treaty.

  86. 86.

    Emphasis added.

  87. 87.

    As ceiling treaties such as the IFLA-P do not contain particular sanctioning mechanisms, the choice – where it needs to be made – would most probably be in favour of TRIPS.

  88. 88.

    The same principle governs conflicts between treaty obligations in general. As most treaties outside the area of intellectual property are of a programmatic or framework character rather than imposing specific duties this frequently means that in case of a potential conflict the “hard and fast” rules enshrined in IP treaties will prevail over the softer, more flexible character of others.

  89. 89.

    For a thorough elaboration of the matter see J. Pauwelyn (2003), Conflict of Laws in International Public Law – How WTO Law Relates to other Rules of International Law, pp. 158 et seq.

  90. 90.

    Regarding the integration of different objectives for the interpretation of treaty provisions in the WTO system see in particular Appellate Body Report, United States – Import Prohibition of Certain Shrimp and Shrimp Products, WT/DS58/AB/R, adopted 6 November 1998, DSR 1998:VII, p. 2755, para. 152; H. Grosse Ruse-Khan (2011), Assessing the Need for a General Public Interest Exception in TRIPS, in A. Kur & M. Levin (Eds.), Intellectual Property Rights in a Fair World Trade System, pp. 199 et seq.; H. Grosse Ruse-Khan (2013), A Conflict-of-Laws Approach to Competing Rationalities in International Law: The Case of Plain Packaging between IP, Trade, Investment and Health, Max Planck Institute for Intellectual Property & Competition Law Research Paper No. 13–05, pp. 13 et seq.

  91. 91.

    The argument is not even considered in the commentary on the Marrakesh treaty by M.J. Ficsor (2013), Commentary on the Marrakesh Treaty on Accessible Format Copies for the Visually Impaired, Copyright See-Saw of 11 October 2013; likewise J. Blomqvist (2011), The Consistency of Mandatory Exceptions Treaties with International Conventions in the Field of Copyright and Related Rights (paper presented at the 2011 ALAI Congress in Dublin).

  92. 92.

    Meaning that international obligations have no legal effect within the country unless there are transposed into national law. In contrast to that, in countries following a monistic approach international treaty obligations become directly valid after ratification (but are regularly also implemented through national legislation, in particular where the treaty norms are not clear and unconditional enough to be apt for direct interpretation). In both cases alike, the (in)validity of the international treaty has no direct impact on the validity of national provisions.

  93. 93.

    This does of course not exclude difficulties in regards of the core definitions being applied differently in different countries, etc.; see on this point M. Trimble (2014), The Marrakesh Puzzle, 45 IIC 2014, 768.

  94. 94.

    See above (this chapter), 2.c.

  95. 95.

    At least according to the notion of exhaustion applying in EU law, consent of the right holder to first marketing is crucial for the applicability of the concept, meaning that the initial authorization cannot be replaced by the operation of legal rules such as limitations and exceptions or compulsory licenses; see ECJ, Pharmon/Hoechst AG, 19/84, EU:C:1985:304. It is unclear whether the same concept also underlies Article 6 TRIPS, with the result that countries allowing import of protected subject matter manufactured in the source country under the operation of law would be in violation of the provisions determining the minimum scope of rights conferred, unless the option to import is limited to certain special cases meeting the (other) requirements of the three-step test. M. Trimble (2014), The Marrakesh Puzzle, 45 IIC 2014, 768, seems to submit that extending the principle of international exhaustion to all legally manufactured copies, irrespective of the owner’s consent, is possible in principle; however, she also postulates that the right to import must remain limited to privileged purposes.

  96. 96.

    The CJEU has confirmed that digital copies of software are subject to the principle of (regional) exhaustion in ECJ, UsedSoft v. Oracle, C-128/11, EU:C:2012:407. However, this solution may not be espoused in other countries, and even in the EU it is uncertain to what extent it applies to digital products in general.

  97. 97.

    For the complex questions arising in the context see M. Trimble (2014), The Marrakesh Puzzle, 45 IIC 2014, 768.

  98. 98.

    Ibid., suggesting that member states may choose in that regard between a number of options: applying their own law, that of the source country, or both; or a variation of those options may apply. However, the wording of the provision rather suggests that the law of the importing country shall determinative in the sense that import is only permitted if the making and distribution of copies would be legal under the law of that country, ceteris paribus. On the other hand, the law of the source country – or rather: the question whether the making of the copies was legal in the source country – cannot be ignored either. A different interpretation that might open the floodgates to importation of copies that were made illegally (as assessed under the source country’s law) would hardly be compatible with general international obligations, in particular the three-step test. It must therefore be excluded at least that copies are imported if in the source country there was no legal basis for their making.

  99. 99.

    Much will depend on the manner and spirit in which Contracting States cooperate to facilitate cross-border exchange, as envisaged in Article 9 Marrakesh treaty.

  100. 100.

    As Graeme Dinwoodie has pointed out there is a pertinent risk that by using the same kind of technical bars on contents distributed internationally, firms actually impose uniform “standard contracts” worldwide, which might translate into a de facto creation of international norms. G.B. Dinwoodie (2007), The International Intellectual Property System: Treaties, Norms, National Courts, and Private Ordering, in D. Gervais (Ed.) Intellectual Property, Trade and Development – Strategies to Optimize Development in a TRIPS-Plus Era, p. 111.

  101. 101.

    In the current version of the IICLE, a slightly different wording has been chosen: “Contracting Parties shall ensure that the enjoyment of the permitted uses provided for in this Treaty is not unreasonably impeded by technological protection measures.” If adopted in the final text, the provision would send a somewhat stronger signal than Article 7 Marrakesh treaty in that it targets the deployment of TPMs as such, and not only the provisions on circumvention.

  102. 102.

    Cf. B IV of the working document (precedence of permitted uses over conflicting/deviating contracts).

  103. 103.

    The term “users’ rights” is fraught with considerable dogmatic ballast and should rather be avoided where that leads into fruitless dogmatic debate. However, from a general, “non-technical” point of view its use appears appropriate when it concerns the situation addressed in the text above, i.e. with regards to privileged use that cannot be overridden by contract.

  104. 104.

    The original proposal launched by the WBU in October 2008 had contained in Article 7 a clause according to which “any contractual provisions contrary to the exception provided in article 4 shall be null and void”.

  105. 105.

    The same concept seems to underlie the proposed “Treaty on Access to Knowledge” (supra, fn. 46). The draft text foresees that the participating countries organize the administration, including the institutional framework, among themselves.

  106. 106.

    On that point see contribution by Ruse-Khan, H.G. (2015), IP and Trade in a Post-TRIPS Environment, in H. Ullrich, R.M. Hilty, M. Lamping & J. Drexl (Eds.), TRIPS plus 20: From Trade Rules to Market Principles, Heidelberg: Springer (this volume).

  107. 107.

    Ruse-Khan, H.G. (2015), IP and Trade in a Post-TRIPS Environment, in H. Ullrich, R.M. Hilty, M. Lamping & J. Drexl (Eds.), TRIPS plus 20: From Trade Rules to Market Principles, Heidelberg: Springer (this volume).

  108. 108.

    P.D. Harpur & N.P. Suzor (2013), Copyright Protections and Disability Rights: Turning the Page to a New International Paradigm, 36 UNSW L.J. 2013, 745.

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  1. Max Planck Institute for Innovation and Competition, Munich, Germany

    Annette Kur

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    Hanns Ullrich

  2. Max Planck Institute for Innovation and Competition, Munich, Germany

    Reto M. Hilty

  3. Max Planck Institute for Innovation and Competition, Munich, Germany

    Matthias Lamping

  4. Max Planck Institute for Innovation and Competition, Munich, Germany

    Josef Drexl

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Kur, A. (2016). From Minimum Standards to Maximum Rules. In: Ullrich, H., Hilty, R., Lamping, M., Drexl, J. (eds) TRIPS plus 20. MPI Studies on Intellectual Property and Competition Law, vol 25. Springer, Berlin, Heidelberg. https://doi.org/10.1007/978-3-662-48107-3_4

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