Intellectual Property on the Internet: Is there Life Outside of the Big Three?: Bios and Abstracts
Biographies (in speaking order)
Professor Rochelle Dreyfuss
Rochelle C. Dreyfuss is the Pauline Newman Professor of Law at New York University School of Law and co-Director of the Engelberg Center on Innovation Law and Policy at NYU. Research interests include international and domestic intellectual property law. Dreyfuss holds B.A. and M.S. degrees in Chemistry. She was a research chemist before entering Columbia University School of Law, where she served as Articles and Book Review Editor of the Law Review. She clerked for Chief Judge Wilfred Feinberg of the U.S. Court of Appeals for the Second Circuit and for Chief Justice Warren E. Burger of the U.S. Supreme Court. She is a member of the American Law Institute and was a co-Reporter for its Project on Intellectual Property: Principles Governing Jurisdiction, Choice of Law, and Judgments in Transnational Disputes. She was a consultant to the Federal Courts Study Committee, to the Presidential Commission on Catastrophic Nuclear Accidents, and to the Federal Trade Commission and served on the Secretary of Health and Human Services’ Advisory Committee on Genetics, Health, and Society. A past chair of chair of the Intellectual Property Committee of the American Association of Law Schools, she was a member of the National Academies Committees on Intellectual Property in Genomic and Protein Research and Innovation, on Intellectual Property Rights in the Knowledge-Based Economy, and on Science, Technology, and Law. She coauthored A NEOFEDERALIST VISION OF TRIPS: BUILDING A RESILIENT INTERNATIONAL INTELLECTUAL PROPERTY SYSTEM (Oxford University Press 2012) (with Graeme Dinwoodie) and BALANCING WEALTH AND HEALTH: THE BATTLE OVER INTELLECTUAL PROPERTY AND ACCESS TO MEDICINES IN LATIN AMERICA (Oxford University Press 2014)(with César Rodríguez-Garavito).
Professor Stacey Dogan
Professor Stacey Dogan is a leading scholar in intellectual property and competition law. Her recent articles explore cutting-edge topics in trademark, copyright, and right of publicity law, including questions of intermediary liability, the rights of trademark parodists, and evolving norms underlying trademark law. Professor Dogan has presented her research at numerous national and international conferences, and her writings have appeared in journals including the Stanford Law Review, Emory Law Journal, Iowa Law Review and Texas Law Review. She has served as chair of the Intellectual Property Section of the Association of American Law Schools, and was co-editor-in-chief of the Journal of the Copyright Society from 2008 to 2011. Dogan is an active participant in educational programs with the local bar, leading seminars and discussions for the Boston Bar Association, Massachusetts Continuing Legal Education and the Massachusetts Volunteer Lawyers for the Arts. Before joining the BU faculty, Professor Dogan taught for more than a decade at Northeastern University School of Law, where she focused on intellectual property and antitrust law. She came to teaching after several years of practicing law with the Washington, DC law firm of Covington & Burling, where she specialized in antitrust, trademark, and copyright law. After law school, she practiced with Heller, Ehrman, White & McAuliffe in San Francisco and served as a law clerk to the Honorable Judith Rogers of the US Court of Appeals for the District of Columbia.
Professor Megan Richardson
Megan Richardson is a Professor of Law and Co-Director of the Centre for Media and Communications Law at the Melbourne Law School, The University of Melbourne, Australia. Her main fields of research and publication are privacy and personality rights, intellectual property and law reform. Recent publications include Fashioning Intellectual Property: Exhibition, Advertising and the Press, 1789-1918 (Cambridge University Press, 2012), co-authored with Julian Thomas, and Breach of Confidence: Social Origins and Modern Developments (Edward Elgar, 2012), co-authored with Michael Bryan, Martin Vranken and Katy Barnett.
Professor Julian Thomas
Julian Thomas is Director of the Swinburne Institute for Social Research and Professor of Media and Communications at Swinburne University of Technology, Melbourne, Australia. His research interests lie in new media, information policy and the histories of communications technologies. Recent publications include Fashioning Intellectual Property: Advertising, Exhibition and the Press, 1789-1918(Cambridge University Press, 2012), co-authored with Megan Richardson, and The Informal Media Economy (Polity, 2015), co-authored with Ramon Lobato.
Dr Barbara Lauriat
Barbara Lauriat is a Lecturer in Law at King’s College London. She is also a Research Fellow at the Oxford Intellectual Property Research Centre (OIPRC) in the Oxford Law Faculty and an Academic Fellow of the Honourable Society of the Inner Temple. Before joining King’s, she was the Career Development Fellow in Intellectual Property Law, in the Faculty of Law and St. Catherine’s College, Oxford. She has also spent time as a Visiting Scholar at the University of British Columbia and as a Visiting Global Research Fellow at New York University School of Law.
Professor Irene Calboli
Irene Calboli is currently a Visiting Professor at the Faculty of Law of the National University of Singapore. She is also a Professor of Law at Marquette University Law School, and a Transatlantic Technology Law Fellow at Stanford University. She started her academic career at the Faculty of Law of the University of Bologna and held visiting research positions at the King’s College London, the University of California Berkeley, the University Complutense, and the Max-Planck-Institute for Intellectual Property Law. She has also been the CIPLIT Visiting Professor of Intellectual Property Law at DePaul University College of Law and a Visiting Professor at the TC Beirne School of Law, University of Queensland. Dr. Calboli has extensively written in the area of Intellectual Property Law. Her articles and chapters have appeared in leading volumes, peer reviewed journals, and student edited law reviews. She has authored a book on the regulation of misleading advertising in Italian and edited two books in English: TRADEMARK PROTECTION AND TERRITORIALITY CHALLENGES IN A GLOBAL ECONOMY (Edward Elgar, 2014, with E. Lee) and DIVERSITY IN INTELLECTUAL PROPERTY: IDENTITIES, INTERESTS, AND INTERSECTIONS (Cambridge University Press, forthcoming 2015, with S. Ragavan). Her works in progress currently focus on trademark law and policy, overlapping intellectual property rights, intellectual property exhaustion, and the protection of geographical indications of origin.
Dr Jessica Lai
Jessica Lai has been a postdoctoral researcher at the University of Lucerne since 2013. Between 2010-2012, she was a research fellow with Prof. Christoph B. Graber at the University of Lucerne, working on the International Trade in Indigenous Cultural Heritage (IT ICH) Project and for the i-call Research Centre. She completed her PhD (summa cum laude) as part of the IT ICH project. Prior to this, Jessica studied law and chemistry at Victoria University of Wellington, where she obtained an LLB Hons (First Class), MSc (First Class) and a BSc. For her studies, Jessica was awarded a Victoria Graduate Award, Victoria Masters Award, Curtis-Gordon Research Scholarships, New Zealand Institute of Chemistry 300-Level Prize and a prestigious New Zealand Vice-Chancellors’ Committee William Georgetti Scholarship. In Wellington, she was a Research Assistant for Prof. Susy Frankel and Meredith Kolsky-Lewis, from 2007 to 2009, at the Faculty of Law of Victoria University. She also spent some time as an editor for the Victoria University of Wellington Law Review. She was also a Research Assistant and Tutor for the School of Chemical and Physical Sciences, from 2005-2009. Jessica has focused her studies and research on the fields of Intellectual Property, particularly Patent Law, and International Trade Law. Starting in 2015, she will be an SNF-funded visiting researcher at the Max Planck Institute for Innovation and Competition Law in Munich.
Associate Professor Susan Corbett
Susan Corbett teaches law in the Business School at Victoria University. Her research is focused on copyright law and digital culture, online privacy law, and cyber-law more generally. She is also a solicitor (NZ and the UK), an Associate of the Arbitrators’ and Mediators’ Institute of New Zealand, and General Secretary of the Asian Pacific Copyright Society.
Associate Professor Alexandra Sims
Alexandra teaches commercial law in the Business School at the University of Auckland. Her primary areas of publication and research are copyright law and consumer law. She is on the board of Consumer NZ and the Governing Council of the Telecommunication Disputes Resolution Scheme.
Professor Bernt Hugenholtz
Bernt Hugenholtz is Professor of law and Director of the Institute for Information Law (IViR) at the University of Amsterdam. He is also a professor at the University of Bergen (Norway), and regularly teaches at the Munich Intellectual Property Law Center (Munich), Monash University (Melbourne) and Charles University (Prague). He is the co-author, with Prof. Paul Goldstein (Stanford University), of International Copyright Law (Oxford University Press, 2nd ed. 2012), and has written extensively on a range of copyright-related issues. He has acted as an advisor to the World Intellectual Property Organization, the European Commission, the European Parliament and the Netherlands Ministry of Justice. Recent publications are available at http://www.ivir.nl/staff/hugenholtz.html.
Professor Reto Hilty
Details to be added.
Professor Peter Yu
Peter K. Yu (余家明) holds the Kern Family Chair in Intellectual Property Law and is the founding director of the Intellectual Property Law Center at Drake University Law School. He has served as Wenlan Scholar Chair Professor at Zhongnan University of Economics and Law in Wuhan, China and a visiting professor of law at the University of Haifa, the University of Hong Kong, the University of Strasbourg and Washington and Lee University. Before joining Drake University, he founded the nationally-renowned Intellectual Property & Communications Law Program at Michigan State University, at which he held faculty appointments in law, communication arts and sciences, and Asian studies. Born and raised in Hong Kong, Professor Yu is a leading expert in international intellectual property and communications law. He also writes and lectures extensively on international trade, international and comparative law, and the transition of the legal systems in China and Hong Kong. A prolific scholar and an award-winning teacher, he is the author or editor of five books and more than 100 law review articles and book chapters. He serves as the general editor of The WIPO Journal published by the World Intellectual Property Organization (WIPO) and chairs the Committee on International Intellectual Property of the American Branch of the International Law Association. Professor Yu has spoken at events organized by WIPO, the International Telecommunication Union, the U.N. Conference on Trade and Development (UNCTAD), the U.N. Educational, Scientific and Cultural Organization (UNESCO), the Chinese, EU and U.S. EU governments and at leading research institutions from around the world. His lectures and presentations have spanned more than 25 countries on all continents except Antarctica. He is a frequent commentator in the national and international media. His publications have appeared in Chinese and English and have been translated into Arabic, French, Hausa, Japanese, Persian, Portuguese, Spanish and Vietnamese. They are available on his website at www.peteryu.com.
Professor Maggie Chon
Margaret Chon is the Donald & Lynda Horowitz Professor for the Pursuit of Justice, and formerly Associate Dean for Research at Seattle University School of Law, where she has been a member of the faculty since 1996. She is the author of numerous articles, book chapters and review essays on knowledge governance through intellectual property. Her current scholarship focuses on the role of institutional innovations such as public-private partnerships in the regulation of global intellectual property and human development. She has been affiliated with numerous academic institutions, including most recently New York University School of Law, where she was a 2011-12 Senior Global Emile Noël Research Fellow at the Jean Monnet Center for International and Regional Economic Law & Justice. She is a graduate of the University of Michigan (M.H.S.A. and J.D.) and Cornell University (A.B.).
Professor Sharon Sandeen
Professor Sharon K. Sandeen is an internationally recognized expert on trade secret law, having written (with E. Rowe) the first casebook on the subject in the United States (Cases and Materials in Trade Secret Law) and Trade Secret Law in a Nutshell, both published by West Academic Publishing. Her most recent project (also with E. Rowe) is a book on international trade secret protection to be published by Edward Elgar in late 2014. In addition to her books, Professor Sandeen has written numerous articles on intellectual property and Internet law topics, including detailed examinations of the drafting histories of the Uniform Trade Secrets Act and Article 39 of the TRIPS Agreement. A native of northern California, Professor Sandeen earned two degrees from the University of California Berkeley; a Bachelor of Arts degree in Political Science in 1980 and a Masters of Law degree from U.C. Berkeley School of Law (Boalt Hall) in 2002. She earned her Juris Doctorate from the University of the Pacific, McGeorge School of Law in 1985, graduating at the top of her class. Professor Sandeen’s teaching career began in 1996 when she was appointed as an adjunct professor at the University of the Pacific, McGeorge School of Law. Her full-time teaching career began in 2002 when she started work at Hamline University School of Law in St. Paul, Minnesota. Since 1996, she has taught an IP survey course at least once a year as well as a variety of other IP courses, including Trademark Law, Copyright Law, Computer & Internet Law, Trade Secret Law, and International Intellectual Property Law. Prior to becoming a professor, Ms. Sandeen practiced law for over 15 years in Sacramento, California, first as a general business and IP litigator at the largest law firm in Sacramento and later as an intellectual property specialist at a boutique firm. Throughout her legal career, Professor Sandeen has been an active member of local, state, and national Bar Associations. During her time practicing law, she was a founding member of the Sacramento Intellectual Property Law Association, a member of the Executive Committee of the Intellectual Property Law Section of the State Bar of California, and served on various Committees of the U.S. District Court for the Eastern District of California. Most recently, she served as the Chair of the IP Committee of the Business Law Section of the American Bar Association and as the Editor of the IP Deskbook for the Business Lawyer. Currently, she serves as the Vice-chair and incoming Chair of the Publications Board of the Business Law Section of the ABA. In recognition of her work for the ABA, she was elected as a Fellow of the ABA Foundation in 2012. An active member of the IP Scholars community and a founding member of the Trade Secret Scholars community, Professor Sandeen speaks frequently about intellectual property, Internet and information policy issues with a particular emphasis on trade secret law. Her interest in trade secret law stems from her experiences in private practice and her belief that it is the “Cinderella” of intellectual property law; the forgotten-stepchild of the IP family. Like Cinderella, she believes that trade secret law is deserving of more attention (and study).
Dr Ping Xiong
Dr Ping Xiong is a Senior Lecturer of the School of Law of the University of South Australia. Dr Xiong’s research interest is in the field of international economic law with a focus on intellectual property policy in international trade, and its implications for free trade agreements and for international human rights protection. Dr Xiong is also interested in comparative approaches to Chinese law and laws in other jurisdictions. Dr. Xiong is a member of the International Law Association and a member of the Australia and New Zealand Society of International Law.
Professor Susy Frankel
Susy is Professor of Law and Director of the New Zealand Centre of International Economic Law, at Victoria University of Wellington, New Zealand. She is also Chair of the Copyright Tribunal (NZ). She is president –elect of the International Association for the Advancement of Teaching and Research in Intellectual Property (ATRIP). In 2013-14 she was a Senior Fulbright Scholar and Senior Hauser Global Research Fellow at NYU Law School. She has been a visiting Professor at the University of Haifa, University of Iowa, University of Western Ontario and Fellow of Clare Hall and visitor to the Centre for Intellectual Property and Information Law, University of Cambridge (UK). She has published widely on the nexus between international intellectual property and trade law, and particularly focusing on international treaty interpretation and the protection of traditional knowledge. Susy’s research expertise extends to regulatory theory and particularly the impacts of international trade of regulatory autonomy over knowledge assets and innovation. She was Project Leader of the New Zealand Law Foundation Regulatory Reform Project (funded to NZ$2million) from 2011-2013. She was specialist intellectual property adviser to the Waitangi Tribunal on the WAI 262 claim. Susy qualified as Barrister and Solicitor of the High Court of New Zealand in 1988 and as a Solicitor of England & Wales in 1991 and has practised law in both jurisdictions.
Professor Daniel Gervais
Daniel J. Gervais is Professor of Law at Vanderbilt University Law School and Director of the Vanderbilt Intellectual Property Program, where he also serves as Faculty Director of the Master’s Program and Faculty Advisor to the Vanderbilt Journal of Entertainment and Technology Law. He is Editor-in-Chief of the peer-reviewed Journal of World Intellectual Property and editor of tripsagreement.net. Prior to joining Vanderbilt, he was the Acting Dean, University Research Chair in Intellectual Property and Osler Professor of Law at the Faculty of Law of the University of Ottawa (Common Law Section). Before he joined the Academy, Prof. Gervais was successively Legal Officer at the GATT (now WTO); Head of Section at the World Intellectual Property Organization (WIPO); and Vice-President, International relations of Massachusetts-based Copyright Clearance Center, Inc. (CCC). He also served as consultant to the Organization for Economic Co-operation and Development (OECD) in Paris and the author of several books, book chapters and articles published in six different languages. Dr. Gervais studied computer science and law at McGill University and at the University of Montreal, where he also obtained LL.B. and LL.M. degrees and received several awards. He received a Diploma summa cum laude from the Institute of Advanced International Studies in Geneva and a doctorate magna cum laude from the University of Nantes (France). He lectured as visiting professor at several universities in Europe (including CEIPI and Sciences Po Paris) and Israel. In 2012 he was elected to the Academia Europaea (Academy of Europe). Dr Gervais’ publications are available at: http://papers.ssrn.com/sol3/cf_dev/AbsByAuth.cfm?per_id=365485 and a full cv is available at http://works.bepress.com/daniel_gervais/ twitter: @DanielGervaisIP.
Abstracts (in order of programme)
Professor Rochelle Dreyfuss
Enforcing Intellectual Property Globally when Rights are Defined Territorially
During this conference, we will be hearing about a variety of substantive laws aimed at dealing with the advent of the internet. Some have long existed alongside the Big Three (copyright, patent and trademarks). Examples include trade secret and rights of publicity. But others stem from the inadequacy of the big three “silos” to deal with the new production and distribution methods the Internet makes possible. Some address new types of intellectual effort, such as the use of the big data the internet generates; others adapt old doctrines, such as unjust enrichment, or old enforcement mechanism, such as criminal law, to deal with novel cyber activities and capabilities. One question, however, is whether we are thinking boldly enough: intellectual property rights are traditionally territorial. Yet events on the internet are quintessentially global. Harmonized law could solve some of these problems. But harmonization is unlikely. In many respects, it is socially undesirable. And it would not solve all the problems. In this talk, I will discuss an alternative that has been debated in the United States, in Europe and throughout Asia and in organizations from the Hague Conference on Private International Law to the International Law Association: procedures for streamlining litigation and the recognition and enforcement of judgments.
Professor Stacey Dogan
The Right of Publicity: Harms, Benefits, and Justification
The United States “right of publicity” gives individuals the right to prevent third parties from commercial use of their name or likeness. Courts have defined “commercial use” liberally, to prevent everything from false endorsements to the use of celebrity images in video games. Although courts and commentators have questioned the right of publicity’s normative basis, the criticism has done little to slow its expansion. Unlike trademark and copyright law – whose utilitarian normative goals both justify and cabin the scope of protection – the right of publicity has no coherent guiding principles that would lead to internal doctrinal limits. Instead, any limits on the right of publicity come from external values, such as speech interests, that lawmakers may (or may not) find adequate to overcome the publicity interest in any particular case. As a result, in practice, any party that derives benefit from using celebrity identity has a burden to demonstrate the social value of its use. This paper examines the considerations that have moved courts to allow certain uses of celebrity identity, even by parties who have profited from the use. The paper identifies certain clusters of values that seem to resonate with courts, and suggests that the key to cabining the right of publicity’s continued expansion is to persuade judges of the social value of unauthorized uses.
Professor Megan Richardson and Professor Julian Thomas
Image Rights in the Digital Age
Debate continues as to the consequences of new digital technologies, and comparisons may be made with what Reinhart Koselleck calls the ‘futures past’ of earlier technological change, especially as we start to move into a period of an increasingly visual internet. Some commentators have observed that these digital technologies raise questions about the capacities and desires of individuals to exercise control over the use of personal images. Interestingly, we find that such views do not appear to be borne out by the behaviour of plaintiffs in actual cases. Rather, for now at least, what we see are arguments for further adaptation of traditional legal forms to fashion image rights for their protection. For their part, courts especially in Europe and the UK seem to be relying largely on principles developed for the protection of privacy balanced against freedom of expression to reach decisions about the legal protection of image in a range of settings. A focus will be recent cases RocknRoll v News Group, Weller v Associated Newspapers and Lillo-Stenberg and Sæther v Norway – and parallels will be drawn with the 19th century ‘etchings’ case Prince Albert v Strange which we suggest provides an early example of a nascent image rights case.
Dr Barbara Lauriat
Passing Off, the Internet, and the Global Marketplace
Despite its venerable past, passing off (or palming off, as it is known in some jurisdictions) has been effectively used for decades in cases of domain name disputes, arguably stretching the boundaries of some of its fundamental characteristics. But it is in the nature of the common law action of passing off to operate nationally, or indeed even very locally; it does not have the reach that the “big three” have through international instruments and transnational agreements. Nevertheless, websites do provide an opportunity for traders to establish—or harm—goodwill in a global context. The protean tort of passing off may be versatile enough to provide remedies for the appearance of internet browsers appropriated by foreign malware dealers or applied to the distribution of fan fiction to Kindle users internationally Beyond borders and straightforward domain name disputes, passing off may provide a remedy for foreign traders via websites in ways not previously imagined.
Professor Irene Calboli
Protection of Geographical Indications of Origin
Twenty years after the adoption of the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPs), controversy over the scope of protection of geographical indications of origin (GIs) continues strong. In this paper, I support GI protection because of the positive role that GIs can play in promoting local development and protecting culture-related interest of local communities. I also consider the role of the Internet in promoting worldwide awareness about GI-denominated regions and products. Yet, I partially share the concerns expressed by GI skeptics—notably that GI protection increases barriers to entry for competitors, and can easily turn into a monopoly on geographical names for marketing reasons, especially when GI-denominated products do not entirely originate from the GI-denominated regions. As a result, my approach to GI protection is narrower than mainstream GI advocates. Notably, I support that GIs should be protected only if GI-denominated products entirely originate from the GI-denominated areas. I additionally favor the unauthorized use of GIs for comparative and descriptive purposes by competitors and third parties. Based on these premises, I nonetheless favor a system of sui generis protection for GIs, as this system is better suited compared to existing laws (in particular trademark law) for the designing of and ad hoc legal framework to promote the above mentioned policy objectives of GI protection. Ultimately, I conclude this paper focusing on what, in my opinion, remains a fundamental yet still misunderstood, or too easily dismissed, point of contention in the GI debate—the “cultural roots” of GIs. More specifically, I note that the desire of protecting GIs does not only (even though perhaps largely) derive from the attempt of GI advocates to promote economic interests. Instead, GIs additionally reflect a mentalité that highly values a set of core values, which are deeply engrained in the societies advocating for GI protection—the importance of tradition, authenticity, and good quality products as a way of life also in the global economy. Precisely because of these deep cultural roots and the values associated with what I call “the culture of GIs,” I posit that the debate on GIs should focus more on the role of GIs under a cultural analysis (in which GIs are expressions of culture and tools to safeguard culture) in addition to the ongoing analysis (and controversy) based on property and market-based theories.
Dr Jessica Lai
Traditional Cultural Heritage and Alternative Means of Regulation: Issues of Access and Restrictions Online
Recent decades have witnessed the growth of non-permitted uses of traditional cultural heritage by third parties and the contemporaneous intensification of traditional communities’ discontent at such. Part of the reason why traditional cultural heritage is often considered to be misappropriated is connected to the fact that traditional communities’ understanding of their relationship with their cultural heritage is often holistic, in the sense that there is no differentiation between the intangible and its physical materialisation. Nevertheless, states and international organisations have found it convenient to discuss indigenous cultural heritage in the classical law fields of UNESCO-type cultural heritage and cultural property, and intellectual property. These discussions have seldom resulted in any binding resolution, or great practical effect. As a result, private ordering is often relied upon. This includes industry codes of conduct or institutional policies, practices and protocols, which may or may not have legal effect, but are not law. They nevertheless can have real practical effect. Whether this is the case online, as opposed to the “real world” is a difficult question. On one hand, the Internet offers ease of access, which may be desirable. On the other hand, indigenous peoples are not the first to experience that the online world is difficult to regulate or control – regardless of any policies, protocols or even law – because of the speed and the low cost at which change and transmission can take place. This paper will discuss New Zealand examples of private ordering, such as that of the Domain Name Commission and institutes with archival roles, focussing on their effectiveness in meeting the online interests of Māori. It will also ask if the only reasonable route to protect the online interests of indigenous peoples is the same as that which copyright owners are taking, namely, by targeting internet service providers.
Associate Professor Susan Corbett and Associate Professor Alexandra Sims
Sui Generis Protection for Sporting Emblems and Words: A Triumph of Pragmatism over Principle
Traditional intellectual property laws are no longer considered sufficient to protect the interests of commercial sponsors and managing bodies in sporting events such as the Olympic Games, the Paralympic Games, the Commonwealth Games, the FIFA World Cup and others. Sponsors and the sporting bodies now demand additional legal protections for the symbols, emblems and even words associated with such events. Countries eager to secure the events have no choice but to accede to such demands. The nature of the legal protections provided for sporting events, the numbers of emblems and words deemed (somewhat tenuously in many instances) to be associated with such an event, and the categories of events which receive the additional protections are developing in nation states on an ad hoc basis. Their one common feature being that these laws appear to be largely unconstrained by considerations of traditional law-making principles, such as the need for balance between individual freedoms, the public interest, and state coercion). The paper examines the protections afforded to sporting symbols, emblems and words-whether it is all-encompassing legislation, such as New Zealand’s Major Events Management Act 2007, or it is legislation limited to the protection of specific events - and argues that in truth such protections have created sui generis regimes. That being so, and acknowledging that many sporting events are now advertised and broadcast on the internet, we argue that international consistency should be an objective. We consider whether the Nairobi Treaty should be replaced by a more expansive international agreement which sets out minimum standards, as well as limiting boundaries, for the legal protection of symbols, emblems and words associated with major sporting events.
Professor Bernt Hugenholtz
Something Completely Different: Europe’s Sui Generis Database Right
According to the historic record, the EU’s sui generis database right has two distinct aims. One was to harmonize legal protection of databases throughout the EU, under uniform conditions that effectively protect the economic investment in database production – a protection that the author’s right regimes that are dominant in the EU could never guarantee. The other was to provide an incentive to the European database industry, which was (according to the European Commission) lagging behind its main competitors in the world, especially the United States. By creating a special IP right that would be available only to producers based in the EU, the European database industry would be given a boost allowing the Europeans to catch up on its competitors. Both goals explain the database right’s sui generis character – a right ‘untainted’ by national legal doctrine, and supposedly immune to national treatment under the existing IP treaties. This paper examines the sui generis database right’s historic roots, and queries to what extent the dual goals of the EU’s database right have been met.
Professor Reto Hilty
Are New Modes of Criminal and Civil Enforcement a New Form of IP?
Enforcement as a matter of principle presupposes the existence of an enforceable right (meaning a legally protected exclusive position). Once established, rights should be enforceable to their full extent – otherwise the intended function of the right fades. If the enforcement of a right leads to undesirable outcomes, then it may not be the enforcement that is the problem, but the right. In reality, however, enforcement may take place beyond the actual scope of a right – or an alleged right may not even exist. The latter is the case if a prima facie existing (and enforced) right turns out to be void. The former situation occurs if a right provides for exclusivity to a limited extent, but a third party, is sued for infringement of that right when acting outside the scope of exclusivity. Any right – and not only the “big three” – has the potential to be enforced beyond its actual scope. But not all over-enforcement has the same vigor to intimidate third parties. The potential threat is the harm a sued party potentially incurs – including (and in particular) legal expenses. The higher the risk of costs of risk is, the easier it is to over-enforce a right – irrespective of the actual infringement. Over-enforcement is not desirable because it monopolizes parts of the public domain, without any constitutional and democratic legitimation. Thus, the total volume of “intellectual property” gradually increases. In the short term this is possibly to the benefit of the enforcing parties, but in the long run it is most probably to the detriment of national economies. In order for the legal system to avoid over-enforcement, direct interventions of state authorities are not required (as in the case of anti-competitive behavior); the state hardly ever has sufficient information about market conditions. Rather, the legal system has to provide for equal arm’s length treatment of defendants when compared to (alleged) right holders. Plaintiffs suing based on (alleged) rights, however, are privileged in many respects. Preliminary injunctions are just one example how – lawfully acting – defendants may be harmed or pushed out of the market. Beneficiaries of exceptions or limitations, in contrast, have a hard time to defend their legal position; in particular, freedom of action cannot be enforced with immediate effect (e.g. compulsory license).
Professor Peter Yu
Enforcement: A New, Overlooked Member of the Intellectual Property Family?
This paper examines the recent developments concerning civil and criminal enforcement of intellectual property rights. It outlines the historical, economic, disciplinary and technological factors that have caused intellectual property enforcement to become an overlooked member of the family. Focusing on the continuous North-South divide over intellectual property enforcement standards and the recent global and regional efforts to strengthen these standards, this paper discusses ways to foster a pluralistic debate and advance discussion in this area.
Professor Maggie Chon
The Promises and Pitfalls of Information Governance in a Wireless World
What can global digital networks and other kinds of technologies (e.g., QR codes and other smart forms of information) contribute to regulation of goods and services in global value networks (aka supply chains)? Information is a public good, and verifiable information is arguably a public “better.” Yet digital information is increasingly generated (and often monetized) by the private sector through firms, consumers and so-called “prosumers.” It is not typically considered as a category of innovation by itself, with some exceptions such as the recognition of sui generis database rights. Nor is its verifiability and reliability managed in a consistent manner. At the same time, global administrative law scholars recognize the category of governance by information as one type of transnational regulation – a form of soft regulation within a global market environment that could be characterized as “wireless engagement” or “information capitalism” or even “cognitive capitalism.” If information has tremendous inherent value from both public and private angles, and innovation in reliable information ought to be encouraged, another question is how such information creation and distribution can be encouraged more intentionally in the direction of the public interest within a soft regulatory framework. For example, could the on-line environment be encouraged to create and shape greater consumer awareness of product qualities such as sustainability in manufacturing and distribution? And how would that relate to recognized categories of intellectual property? Can recognized categories of intellectual property such as copyrights, trademarks and certification marks be expanded to impart specific process measures, in addition to more overt product characteristics – that is, to highlight so-called credence as well as the more commonly accepted experience attributes? And what about newer and/or sui generis forms of intellectual property: Can information about provenance be traced more rigorously in the distribution of goods protected by regimes of geographic indications? And might the on-line environment have a substantial development impact on efforts to monetize or preserve forms of traditional knowledge, through more widespread distribution of information about their characteristics and history? Finally, would products or services that are typically not protected by copyright or patent (such as apparel or food) benefit from distributed information channels with regard to their underlying manufacturing sources and practices? Or is the on-line environment basically an enormous machine for making largely unsubstantiated marketing claims rather than conveying these forms of verified information in the public interest? This paper will explore these questions of soft regulation with selected case studies.
Professor Sharon Sandeen
Trade Secrets Plus (or Minus?): A Report on International Harmonization Efforts
After decades of being ignored (or relatively so), trade secret rights have become a hot topic among international trade professionals and businesses alike. In February 2013, the Executive Office of the President of the United States issued the Administration’s Strategy on Mitigating the Theft of U.S. Trade Secrets, promising to “coordinate and improve” US efforts to protect US innovation, including trade secrets. Since then, there has been a noticeable increase in the rhetoric of trade secret enforcement emanating from the office of the United States Trade Representative, including the inclusion of trade secret concerns in the annual Special 301 Report. In April 2013, the European Commission issued a Study on Trade Secrets and Confidential Information in the Internal Market (hereinafter the “EC Study”). This led to the 28 November.2013 introduction of a proposal for a new EU directive “on the protection of undisclosed know-how and business information (trade secrets) against their unlawful acquisition, use and disclosure. It is not entirely clear why trade secrets are suddenly getting so much attention. In the United States, the increased attention on trade secret law coincides with the passage of the America Invents Act (which arguably increases the importance of trade secrecy for some industries) and the 2012 publication by Create.org of a White Paper on Trade Secret theft. In Europe the increased attention coincides with the European Commission’s adoption in May 2011 of its Europe 2020 strategy which calls for the creation of a “Innovation Union,” the subsequent EC conference titled “Trade Secrets: Supporting Innovation, Protecting Know-how” that took place on 29 June 2012 and later public consultations. Pursuant to Article 39.1 and 39.2 of the World Trade Organization, Agreement on Trade-related Aspects of Intellectual Property (the “TRIPS Agreement), all WTO-member countries are already required to provide means for the protection of “undisclosed information” (aka “trade secrets”). What is different about recent efforts to increase the protection of trade secrecy internationally is the desire for more uniformity, specificity and harmonization with respect to the details of trade secret law. This follows efforts, albeit several decades earlier, to harmonize trade secret law among the various United States that began with the adoption of the Uniform Trade Secrets Act in 1979. Efforts to harmonize trade secret law outside of the US and EU are also underway, most notably with respect to the United States’ Free Trade Agreements strategy, the most recent case in point being the Trans Pacific Partnership Agreement which includes provisions that would require enhanced trade secret protection efforts. This paper details the current efforts to harmonize trade secret law internationally and explains how such efforts, while designed to increase trade secret protection beyond that which is explicitly required in the TRIPS Agreement, (the reference to TRIPS-plus), can and should be used to specify important limitations on the scope of trade secret protection (the reference to TRIPS-minus.)
Dr Ping Xiong
China’s Approach to Trade Secrets Protection - Is A Uniform Trade Secrets Law in China Needed?
This paper discusses the current legal framework for the protection of trade secrets in China. China did not develop an indigenous approach to trade secrets during the earlier empires or during the first years of the People’s Republic of China. However the decision to seek membership of the WTO required China to respond to the obligations set out in the TRIPS Agreement Art 39. Laws that provide protection for undisclosed information in China are scattered between specific laws, including the Law Against Unfair Competition (1993), the Criminal Code (1997), the Labour Law (1994) and the Contract Law (1999). Referring to these laws, this paper discusses issues relevant to the effective protection of trade secrets in China. Issues to be discussed include the definition of trade secrets protection, limits of the protection provided by the various laws, the legal remedies available for infringement, the obligations of employees during and after employment and the recognition of the interests of a bona fide purchaser of information without notice. Noting that the United States of America and the European Union have recently moved toward greater standardization of trade secret protection it is suggested that China should continue her development of trade secrets protection and seek to achieve standards that comply with Art 39 of the TRIPS Agreement through a Uniform Trade Secrets law, or failing such a law at this time, through an authoritative interpretation from the Supreme People’s Court of PRC.