Graeme B. Dinwoodie

A New Copyright Order: Why National Courts Should Create Global Norms

rules of law. The calibration of exceptions (such as fair use) is a notoriously fact-specific exercise. Although the extent to which breaches of obligation based upon national court decisions will require a pattern of activity remains unclear, WTO panels will not be presented with cases in a fashion that permits development of international standards regarding the scope of exceptions to copyright because WTO dispute settlement proceedings will likely focus on a state’s systematic failure to uphold its obligations. In sum, these final critiques suggest that WTO panels should not actively develop international standards beyond those clearly presented in the TRIPS text. The nature of the TRIPS Agreement, Pharmaceutical Products, Doc. WT/DS114/R (Mar. 17, 2000). 154 See Dreyfuss & Lowenfeld, supra note 99, at 282 (noting that “[t]here will be continuing issues on how states will choose which practices to challenge”); cf. WTO DSB Panel, United States—Section 110(5) of the U.S. Copyright Act, WT/DS160/R (June 15, 2000), at ¶¶ 6.138-.144 (looking at the practices of a “vast majority” of U.S. courts as evidence of the meaning of the statutory provision and declining to consider how analysis of U.S. TRIPS compliance might be affected were, as the EU hypothesized, a series of U.S. courts to adopt generous interpretations of the statutory language), at http://www.wto.org. 155 My critique of an aggressive use of WTO panels should not be taken as a lack of support for strict enforcement of the substantive copyright obligations clearly undertaken by TRIPS signatories. The availability of WTO dispute settlement procedures and the concomitant enforcement mechanisms has transformed international intellectual property law in important and generally beneficial ways. I view the 2000] A NEW COPYRIGHT ORDER 537 and the posture of the cases with which they will be confronted, means that panels are poorly equipped to do so. Moreover, such efforts would adversely affect the role of national autonomy in recognizing cultural differences and adopting fully tested approaches as international standards. D. Rejecting Internationalization? These last observations regarding the WTO dispute settlement process suggest that there is a danger in overemphasizing the need for internationalization, or at least a danger in seeking to internationalize too promptly. Yet, at times the current trend to harmonize national copyright laws seems inexorable. Even if the substance of particular initiatives has been questioned, the process has been largely welcomed as an important means of nourishing the political and economic globalization to which law increasingly has become servant. Dissenting voices have been raised, however, both by scholars of copyright law and those in obligations of TRIPS as setting external boundaries (both floors and, ideally in the future, ceilings) for permissible copyright protection, within which member states have latitude to develop indigenous approaches to copyright. These boundaries would converge over time as consensus develops on fundamental norms of contemporary copyright law. Public international law should represent the rough filter in a process of internationalization. The finer filter, as I argue below in Part III, should be the process of private international copyright lawmaking. This process should facilitate more nuanced solutions that will generate the common understanding necessary for later implementation as public international law standards. This approach allows room for initial experimentation. It also reflects concerns about the legitimacy of the WTO process; if a broad consensus has developed on an issue, that consensus will serve as a surrogate for the ideal representational state that might otherwise support more intrusive WTO lawmaking. The forms of private international lawmaking discussed in Part III, with their more direct tie to political and democratic legitimacy and their susceptibility to prompt legislative reversal, have a much stronger claim to immediate application over the lives of global citizens. 538 UNIVERSITY OF PENNSYLVANIA LAW REVIEW[Vol. 149: 469 other disciplines. The copyright scholars in question have largely bemoaned the process as being subverted to what they view as narrow economic ends. Other legal scholars have launched more direct attacks on the current processes of internationalization. Paul Stephan, for example, has expressed skepticism as to whether unification and harmonization of international commercial law is necessary or helpful. Stephan’s indictment of the process arises from observations of international commercial law (in the form of model laws and conventions), which he criticizes as producing either open-ended rules that confer unfettered discretion on domestic decisionmakers, or precise rules that benefit discrete interest groups. 156 The process of globalization itself has been the subject of significant criticisms by scholars in other fields of intellectual inquiry and by popular commentators. See generally WILLIAM GREIDER, ONE WORLD, READY OR NOT: THE MANIC LOGIC OF GLOBAL CAPITALISM (1997) (analyzing the “global industrial revolution” of the late twentieth century and concluding that the logic of commerce and capital was overwhelming consideration of the consequences of this “revolution”); MICHAEL P. RYAN, KNOWLEDGE DIPLOMACY: GLOBAL COMPETITION AND THE POLITICS OF INTELLECTUAL PROPERTY (1998) (discussing the political development of international intellectual property law and policy). 157 See, e.g., Kenneth D. Crews, Harmonization and the Goals of Copyright: Property Rights or Cultural Progress? 6 IND. J. GLOBAL LEG. STUD. 117, 118 (1998) (arguing that international harmonization “has brought distinct change to U.S. law in ways contrary to the fundamental purposes of copyright law and its social objectives”); Jaszi, supra note 22, at 598-99 (complaining that arguments grounded in “traditional visions” of copyright were being ignored by Congress and that TRIPSimplementing legislation was instead animated by a new vision of copyright, namely “to improve the competitive position of companies that have significant investments in inventories of copyrighted works”). 158 Stephan, supra note 14, at 744. 159 See id. at 767-68 (detecting the “fingerprints” of special interests on precise rules regarding sea transport); id. at 774-79 (suggesting that the Convention on the International Sale of Goods contains rules that “allow virtually unbounded discretion to the decisionmaker who must apply them”). Stephan attributes the flaws in the products of 2000] A NEW COPYRIGHT ORDER 539 Stephan’s first criticism, of futility, is an important one. But, even baseline rules are transgressed—a series of negotiated settlements of copyright TRIPS disputes bears witness to such transgressions. And copyright is, for many countries, a more recent legal innovation than such notions as contracts of sale. Even the general, basic norms contained in treaties emanating from the classical public international copyright lawmaking process may be of significant effect as countries construct copyright laws for the first time. Stephan’s second criticism—that precise rules emanating from the international lawmaking process benefit discrete interest groups—is also serious, though the extent to which such a phenomenon differs from that at play in developing national legislation is not entirely clear. As we engage in international copyright lawmaking, futility and rent-seeking are certainly these gatherings of experts in international and comparative law to the “inherent limitations in the process that generates international agreements for national implementation.” Id. at 744. 160 See OFFICE OF THE UNITED STATES TRADE REPRESENTATIVE, RESULTS OF SPECIAL 301 ANNUAL REVIEW (1999) (discussing settlement of disputes with Sweden and Denmark). 161 Blatant violation of uncontested norms may happen not only in countries without established copyright regimes but also in countries where short-term domestic political pressures make this an attractive option. Indeed, the availability of TRIPS dispute resolution may paradoxically embolden national legislators under pressure to succumb to the short-term arguments with the knowledge that the long-term position will be rectified by the WTO. 162 Paul Stephan himself has considered that question. See Paul B. Stephan, Accountability and International Lawmaking: Rules, Rents and Legitimacy , 17 NW. J. INT’L L. & BUS. 681, 68283 (1996-1997) (considering differences in accountability between international and national lawmakers). He consciously draws on earlier work by Robert Scott and Alan Schwartz in the domestic context of the drafting of the UCC. See Alan Schwartz & Robert E. Scott, The Political Economy of Private Legislatures, 143 U. PA. L. REV. 595, 597 (1995) (examining “how large private law-making groups” work); Robert E. Scott, The Politics of Article 9, 80 VA. L. REV. 1783, 1803-22 (1994) (suggesting that “the U.C.C. lawmaking process functions like a private legislature”). 540 UNIVERSITY OF PENNSYLVANIA LAW REVIEW[Vol. 149: 469 criticisms that should be borne in mind, along with concern for national autonomy, the role of national laws in developing international standards, and accommodating the diverse range of interests now affected by copyright. The concerns noted earlier in this Article—namely, the costs of insufficient protection internationally and the need for copyright law to address new technological issues— are, however, also important. Therefore, the limits of the public international lawmaking process should not constrain our search for other means of internationalizing copyright law. Having suggested desirable and inevitable limits on the capacity of public international models, either classical or new, to serve as the sole mechanism of international copyright lawmaking, I next consider whether private law alternatives might contribute to that proces

A neofederalist vision of TRIPS : the resilience of the international intellectual property regime

Preface Acknowledgements PART I. Where We Were: The Structure of Intellectual Property and the History of the TRIPS Debate Chapter 1. The Challenges of the TRIPS Agreement Chapter 2. The History and Character of TRIPS and how it Shapes the Contemporary Debate PART II. Where we Are: Dispute Resolution and its Impact on a Neofederalist Vision of TRIPS Chapter 3. The Dispute Settlement Understanding and Interpretation of the Substantive Features of the TRIPS Agreement Chapter 4. Interpretation Continued: The Structural Features of the TRIPS Agreement Chapter 5: TRIPS and Domestic Lawmaking PART III. Where We Are Headed: Intellectual Property Lawmaking For the Twenty-First Century Chapter 6: The WTO, WIPO, ACTA, and More: Fragmentation and Integration Chapter 7: An International Acquis: Integrating Regimes and Restoring Balance Notes Index

Private Ordering and the Creation of International Copyright Norms: The role of Public Structuring

International copyright law must be based on an assessment of what types and levels of protection best further the purposes of copyright law. But constructing the international copyright regime is difficult as the international system must wrestle with copyright dilemmas that exist at the national level as well as broader challenges facing international law. This paper delineates the connection between international copyright law and the generation and distribution of knowledge by discussing two recent examples of (possible) unconventional international copyright rulemaking, namely, norms generated by Internet Service Providers in responding to infringement claims, and norms arising out of digital rights management systems.

Dilution as Unfair Competition: European Echoes

This response to Barton Beebe explores whether contemporary experience in Europe supports the central arguments advanced by Beebe in The Supressed Misappropriation Origins of Trademark Antidilution Law. The development of E.U. law is largely consistent with the idea that dilution law is in part an effort to install a misappropriation regime, at least insofar as the objects of protection are trademarks with a reputation (increasingly, a smaller caveat as the scope of potential trademark subject matter expands and the reputation threshold falls). This has important local consequences: if dilution law is in truth is a law against misappropriation, the Court of Justice of the European Union has greater scope to contribute to the creation of a nascent European law of unfair competition. But examining recent European case law also suggests that understanding misappropriation as part of a broader system of unfair competition may moderate the formalist critique of misappropriation as wholly indeterminate and unlimited. Understood in its unfair competition milieu, a misappropriation-based concept of dilution retains some potential for measured delineation of the edges of protection.

How to achieve (some) balance in anti-circumvention laws

Should users of technically protected content be able to give notice and require content owners to take down the technical measure to enable fair uses?

Secondary Liability for Online Trademark Infringement: The International Landscape

In U.S. law, the term “secondary liability” is an umbrella term encompassing a number of different types of trademark infringement claim. Its essence is that liability does not turn on the defendant itself using the plaintiff’s mark, but rather on the defendant being held responsible for the infringements occasioned by the use of the plaintiff’s mark by a third party infringer. Secondary liability claims might be strategically preferable to trade mark owners over bringing actions against the primary infringer. The advent of the Internet has only enhanced some of these strategic benefits. However, secondary liability also creates the spectre of highly intrusive regulation of the business of intermediaries operating in the online environment. In these cases, we must balance the rights of the mark owner with enabling legitimate development of innovative technologies that allow new ways of trading in goods. The online context of many contemporary uses of marks has also, as in other areas of intellectual property law, prompted a demand for international solutions to the potential liability of online intermediaries for secondary trademark infringement. And indeed most countries have long recognised a cause of action for engaging in conduct that U.S. law would call secondary trade mark infringement. This Article assesses the international treatment of these causes of action, first by looking at international law principles conventionally understood, namely, state to state obligations regarding the content of domestic law. There is little of relevance to the secondary liability question if the international landscape is understood in those terms. Thus, the Article proceeds also to analyse commercial practices that are contributing to soft transnational law and to compare the regimes adopted by the United States and the European Union as leading examples of approaches to the secondary liability question. The Article focuses on parallel fact patterns that have been litigated to appellate level in a number of countries. Thus, the paradigmatic cases considered are (1) claims brought against online auction sites, each essentially alleging that the auction site could have done more to stop the sale of counterfeit and other allegedly infringing items by third parties on its web site; (2) claims brought against search engines alleging that the sale of keyword advertising consisting of the trademarks of parties other than the mark owner resulted in infringement (normally, by causing actionable confusion).

Remarks: 'One Size Fits All': Consolidation and Difference in Intellectual Property Law

These remarks to the 2008 ATRIP Annual Conference addressed the question of whether “one size fits all” in intellectual property law. Are there sufficient commonalities among the component parts of the field that we could realistically construct a unitary body of intellectual property law? I first set out the different inquiries that might be subsumed by the question of whether “one size fits all” in intellectual property law, focusing on the possibility of a single form of intellectual property, common treatment of different subject matter within regimes, and uniform intellectual property laws across borders. Focusing on this last aspect of the question, I note that the backwards-looking aspect of the classical international system, which tended to favor national autonomy and keep internationally-mandated levels of protection low, has been somewhat disrupted of late. Although it remains the case that one size does not fit all, there is much to be gained by seeking greater commonality. But if the focus of the current international system requires greater commonality - greater attention to a one size fits all approach on certain issues - it does so both with respect to the rights conferred on IP right holders and with respect to the new rights that might potentially be conferred on users.

A Comparative Analysis of the Secondary Liability of Online Service Providers

This Chapter analyzes the secondary liability of online service providers from a comparative perspective, drawing on national reports on the question submitted to the Annual Congress of the International Academy of Comparative Law.

Publicity Right, Personality Right, or Just Confusion?

There is little consensus internationally as to whether and how the law should respond when celebrities find themselves subjected to unwanted public discussions of their private lives in the media (increasingly on a global basis online), and when their personal attributes are referenced without their consent in certain kinds of advertising and trade. A number of commentators have characterized such intrusions on a celebrity’s personal dignity or autonomy as simply falling among the minor inconveniences of being a celebrity, insufficient to warrant legal protection given important social values such as freedom of speech and cultural pluralism. The lack of consensus is reflected in the uncertain shifting legal lines drawn around celebrity protection, especially in common law jurisdictions which, unlike many civil law jurisdictions, do not adhere to the idea of a full-scale personality right. In this chapter, we canvass the diverse devices that the common law courts have deployed to deal with the grant of celebrity rights. We note and support the messy multivalence we find recognised in common law approaches given the range of dynamic interests that are at play. Such heterogeneity of values might also be relevant to the curtailment of celebrity rights. Thus, we equally support a flexible approach to the limitations, defences and other points at which discretion may be exercised by judges to find a balance between the interests/rights that may be claimed for celebrities (human and otherwise) in controlling the uses of their personal attributes in advertising and trade, and the countervailing interests/rights that others may seek to maintain including in freedom of speech and cultural pluralism.

Refining Notions of Idea and Expression Through Linguistic Analysis

This chapter comments on a paper by the linguist Alan Durant, who demonstrates that our understanding of the distinction between idea and expression in the context of literary works is far from perfect and could be enriched by drawing on a number of insights from other fields, and in particular from linguistic theory. In this brief response, I consider whether and how a fuller understanding of those features might be accommodated in the adjudication of legal disputes about copyright infringement.