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The International Relations of Intellectual Property

Published online by Cambridge University Press:  16 January 2009

W. R. Cornish
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Intellectual Property is not a term with a standard meaning. Traditionally it was used to describe the copyright protection of authors and to distinguish this from industrial property, i.e., Patents for inventions, industrial design rights, plant variety rights, trade marks and the like. Recently it has become an umbrella for copyright, rights related to it and the various forms of industrial property. The new generic grouping has been needed for a world where demand for these rights has risen to an altogether new pitch. In part this is the consequence of extraordinary advances in technologies which make recorded information easily and precisely reproducible; and partly it supports the quest of advanced economies to conserve superior knowledge as a weapon in international trade.

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The Cambridge Law Journal , Volume 52 , Issue 1 , March 1993 , pp. 46 - 63
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Copyright © Cambridge Law Journal and Contributors 1993

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1 Or so one may say by way of encapsulation; but along the way there has been unending controvers—over whether a measure of protection should be accorded, and if so for what purposes and for what period. Once established in a country, intellectual property rights have often shown considerable resilience, even in face of a state's conversion from capitalism to advanced socialism.

2 There is no homogeneity about this. The most uncompromising are rights good even against those who produce or acquire the protected idea independently—as with patents for inventions, registered (and sometimes unregistered) trade marks and many systems of registered industrial designs. By contrast, copyright and trade secret protection depend upon acquisition of material from the plaintiff either directly or indirectly.

3 Established by the European Patent Convention 1973 and put into operation from 1 June 1978, its use by multinational industry has made it a success beyond common expectation. It now has 14 participant states, comprising most of the EC, plus Austria, Sweden and Switzerland.

4 The best-known examples of supranational schemes are the Benelux trade mark register and designs register.

5 The Community Patent Convention was initially signed by Common Market states as long ago as 1975, as a complement to the European granting system mentioned in note 3 above. It has since been amended on two occasions, but still waits in the wings as an institution in its own right. It has in the meantime been of considerable significance in the modernisation and harmonisation of national patent laws. The Community Trade Mark, which evolved through the 1980s, is to be the subject of an EC Regulation (under article 235, Treaty of Rome) establishing a Community Trade Mark Office. While it is still not finalised (no decision has been reached on the official language or on the site of the Office), there is already in force a Directive designed to bring national trade mark laws into conformity with basic requirements of the future Community system. So again there has already been a considerable harmonising effect from the inchoate law.

6 Whatever political drive there is for the introduction, it is not matched by equal pressure from industry within the Community. By and large users arc content with the half-way house of a European Patent Office which grants a “bundle” of national patents, normally in common form; and with national trade mark registers, which will continue to be much used because of language differences and which may in any case become more completely linked through implementation of the 1989 Protocol to the Madrid Agreement on the International Registration of Trade Marks.

7 The special concession of compulsory licensing powers to developing countries, particularly as respects translations into local languages and educational material, survived as an Appendix to the Paris Act of Berne, but in considerably modified form: see Ricketson, , The Berne Convention for the Protection of Literary and Artistic Works: 1886-1986 (1987), pp. 117–124.Google Scholar

8 Since the GATT already embodies dispute settlement machinery, it is a more efficient international mechanism than cither of the main intellectual property Conventions, and this superiority has been a major argument in favour of including “trade-related” intellectual property within the GATT. When eventually it proves possible to amend the intellectual property Conventions, it is likely that they too will acquire dispute settlement arrangements (for WIPO consideration of the issue, see further [1990] Copyright 54). Contracting states may then come to regret some of the terms which they have in the past accepted without fear of being brought to account.

9 A maximum term (i.e., one subject to the payment of renewal fees) of 20 years from the date of application for the patent has become standard in Western Europe: sec the European Patent Convention 1973, art. 63. The basis of calculation remains somewhat different in some systems, notably that of the United States. This is one of the matters on which there is currently negotiation in an attempt to reach a common approach at least among industrial nations.

10 The British invention patent, given a substantial legal basis in the Statute of Monopolies 1624, was plainly devised as an exception, for good economic reason, to the general campaign against royal monopolies: among other things, those who brought technical ideas into the Kingdom, even if they were not their ideas, were “inventors”. Later, however, conceptions of natural right underpinned the introduction of patents, first and most notably in the United States and France; and the same rhetoric still emerges from time to time today. For example, the EC Court of Justice has justified the “specific subject-matter” of a patent by reference to the need to reward the creative effort of the inventor (Centrafarm BVv. Sterling Drug Inc. [1974] E.C.R. 1147, Judgment, para. 9). But many concepts in modern law condition the inventor's entitlement: the need to show that the invention is both novel and inventive and that it is being adequately worked in the territory strongly suggests that the real justification for the system lies in its economic impact.

11 Proposal for a Council Directive Harmonising the Term of Protection of Copyright and Certain Related Rights (23 March 1992, COM(92) 33 final; draft text: OJEC C 92/6, 11 April 1992).

12 Copyright lawyers, impelled to give meaning to the “idea/expression dichotomy”, find its clusiveness frustrating. But for want of any more stable indicator they continue to pursue it, recognising that otherwise they might be admitting a legal right of oppressive dimensions into the canon of intellectual property.

13 The first for his outrage at US failure to accord copyright to foreign authors (including his much-pirated self); the second for his patronage of I'Association Littéraire et Artistique Internationale, progenitor of the Berne Convention; the third for his championing of performing rights in copyright music.

14 Romme v. Van Dale Lexicografie (4 01 1991, Hoge Raad);Google ScholarFeist Publications v. Rural Telephone Service (27 03 1991; US Supreme Court);Google Scholar both reported in Dommering and Hugenholtz, , Protecting Works of Fact (1991)Google Scholar, Appendices 1, 2. The same line of thought in German law has produced the much contested decisions (beginning with Inkasso-Program (1986) 17 I.I.C. 681)Google Scholar, which require, for literary copyright to exist in a computer program, a degree of creativity beyond that of routine program-writing. This severity is now deliberately to be relaxed under the EC's Directive on Copyright in Computer Programs, art. 1(3) (OJ, 1991, No. L 122/42).

15 In the US, this development has been hampered by the Constitutional requirement that rights of this character be given to “authors”—a conception which is capable of benign extension, but only to a somewhat limited extenl; cf. the Feist case, note 14 above.

16 By 1971 the upsurge of record piracy was considered to necessitate a less ambitious Convention dealing with that matter alone.

17 A development clearly analysed in Fellner, , The Future of Legal Protection for Industrial Design (1985).Google Scholar

18 Early attempts to reach this result through case-law met with some success in the US and other countries, but came to grief in Australia. There a majority of the High Court conceived a program in object code to be nothing other than the means of making a machine function in a particular way; it was not material that could itself be regarded as “literary”: Computer Edge v. Apple [1998]F.S.R. 537.Google Scholar The movement towards legislation, which had begun in the US in 1980, spread further afield from around the time of the Australian decision. It has increased considerably of late (at least 43 states have acted, not all of them Berne or UCC states) and is now the subject of an EC Directive (above, note 14) and may be introduced into a future version of the Berne Convention. See, e.g. (in an incessant literature), Dreier, “The International Development of Copyright Protection for Computer Programs” in Lehmann, and Tapper, , European Software Law (1993) at pp. 230–232).Google Scholar

19 Semiconductor Chip Protection Act 1984; for which see, e.g., Ladd, Licborwitz and Joseph, , Protection for Semiconductor Chip Masks in the United Slates (1986);Google ScholarStern, , Semiconductor Chip Protection (1986).Google Scholar

20 The Berne Convention was last revised at a time when little thought was being given to program copyright. Accordingly the argument that they are already within the Convention has met with less than universal acceptance, as the WIPO has recently observed: Memorandum on a Possible Protocol to the Berne Convention, reprinted in [1992] Copyright 30.

21 The Berne Convention Implementation Act of 1988 (in force, 1 March 1989) has been described as “ ‘minimalist’—amending U.S. law only where absolutely necessary to bring the United States into compliance with Berne strictures, and then limiting the amendment's scope to the extent possible”: Nimmer, D. in Nimmer, M. and Geller, , International Copyright Law and Practice, p. USA–8.Google Scholar

22 Semiconductor Chip Protection Act 1984, § 906.

23 EC Council Directive (16 December 1986) on the Legal Protection of Topographies of Semiconductor Products (87/54/EEC), OJ 1987 No. L 24/36; implemented in the UK by the Design Right (Semiconductor Topographies) Regulations 1989, S.I. 1989/1100.

24 Treaty on the Protection of Intellectual Property in Respect of Integrated Circuits, 16 05 1989 (Washington, D.C.).Google Scholar

25 Proposal for a Council Directive on the Legal Protection of Data Bases (22 July 1992; COM (91) 276 final; draft text: OJEC C 156/4, 23 June 1992). The Commission proposes to protect. first by copyright and at the fringes by an unfair extraction right. Apparently the latter is not to form part of any country's unfair competition law, particularly so that the EC may play the reciprocity game; how far the rules allow for such nominalism is not known.

26 The case for a producers' right as an authors' right has been strongly argued recently, notably at the WIPO Committee of Experts' Meetings to consider a Berne Convention Protocol (above, note 20). The case has not however made much progress. For an extreme version, claiming that authors' rights are today anachronistic and therefore “dead”, see Turkevich, 38 J. Copyr. Soc. US 41 (1990).

27 See, for instance, a string of publications from the International Federation of Reproduction Rights Organisations (IFRRO).

28 See note 18 above; for a recent critical voice, note esp. Soltisynski (1990) 21 I.I.C. 1.

29 As a rule, copyright systems do not require that authors or their estates be entitled to any part of the economic return on a work while the right endures. But it is a common mode of dealing for an author to be paid royalties or equivalent sums which are related to the extent to which the copyright is exploited. The justification for granting such a long term of protection is largely related to this.

30 Author's rights systems of the Continental type make great play of the need to guarantee moral rights. These give authors rights which are separate from economic rights of exploitation. They remain inalienable by the author, however he or she may choose to deal with the economic rights. This mode of thought has secured a place in the latest versions of the Berne Convention, article 6bis of which requires recognition of the right to claim authorship and to object to derogatory treatment. However, in explicitly acknowledging this Convention obligation for the first time, the UK Copyright, Designs and Patents Act 1988 refuses to extend either of these moral rights (inter alia) to authors of computer programs (see ss. 79(3), 81(5)).

31 979 F.2d 1222 (1986). Subsequent case-law has divided into the approving, the distinguishing and the disapproving: cf. as well as the decisions mentioned in the next note, e.g., Manufacturers Technologies v. CAMS 706 F. Supp. 984 (1989);Google ScholarLotus Development v. Paperback Software 740 F. Supp. 37.Google Scholar For recent hostility to Whelan, see esp. Computer Associates v. Altai, 92 Cal. Daily Op. Service 10213 (1992)…Google Scholar; Sega v. Accolade, 977 2d Fd. 150 (1992)….Google Scholar

32 In similar vein, the “look and feel“ of visual elements of computer operations, such as menu displays and video game formats, became subject matter within the scope of copyright, according to some US decisions: e.g., Broderbund Software v. Unison World 648 F. Supp. 1127 (1986).Google Scholar

33 Directive on Copyright in Computer Programs (note 14 above), art. 6. For the eruptive process by which this exception was generated, see esp. Vinje, “The Legislative History of the EC Software Directive” in Lehmann, and Tapper, (op. cit., note 18 above) 39.Google Scholar

34 Copyright, Designs and Patents Act 1988, Part III.

35 Apart from EC states, qualification for the new right is restricted by the requirement of reciprocity (see Copyright Designs and Patents Act 1988, s. 217 and the Design Right (Reciprocal Protection) (No. 2) Order 1989, S.I. 1989/1294); but s. 221 gives the Government power to accord equal treatment to nationals of all Paris Convention states. To the extent that the new Design Right is available for designs which are also registrable, it is hard to escape the proposition that the Convention applies. Whether it also applies to purely technical designs when a state chooses to protect them nationally is more debatable. The answer ought to depend upon the substantive meaning of the Convention, and not upon the label which a country uses for a right. But nominalism of the latter kind is not infrequently heard, particularly on the Continent of Europe.