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Study Note: This introductory module should take around 1 hour to study

Module 1: Introduction to Intellectual Property

What is Intellectual Property?

To some extent you may already know the answer to this question. We
know that the inventor of a machine, the author of a book, or the writer of music
somehow usually ‘own’ their work. From this ownership, certain consequences
flow and you probably have been made aware of the fact that we cannot just
copy or buy a copy of their works without consideration of their rights. Equally,
original industrial designs of furniture, wallpaper and the like seem naturally to
be owned by someone or some organization.
Each time we buy such ‘protected’ items, a part of what we pay goes
back to the owner as recompense for the time, money, effort and thought they
put into the creation of the work. This has resulted over the years in the
development of industries such as the music industry growing worldwide and
encouraging new talent to produce more and more original ideas and articles.

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The following table suggests some of the things that are entitled to
protection as intellectual property under national intellectual property laws and
/ or various international treaties:

Discs Designs for objects Geographical indications of origin

for certain types of products

Performances Images Companies' names

Broadcasts Logos Industrial processes

Videos Trademarks Chemical formulas

Computer games Integrated circuits Materials

Computer programs Inventions Perfumes

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Let’s begin with a more formal definition of intellectual property, so as to

build a solid foundation for later explanations of the various types of intellectual
property, and then the relevant governing international treaties. The best place
to start is with a consideration of the meaning of the word property.
The outstanding features that most types of property share are that the
owner of the property is free to use it as she/he wishes, provided the use
is not against the law, and to exclude others from so using that owned
item of property.
Now the term "intellectual property" is reserved for types of property that
result from creations of the human mind, the intellect. Interestingly, the term
intellectual property in the Convention Establishing the World Intellectual
Property Organization, or "WIPO", does not have a more formal definition.
The States that drafted the Convention chose to offer an inclusive list of the
rights as relating to:
“Literary artistic and scientific works; performances of
performing artists, phonograms, and broadcasts; inventions in
all fields of human endeavor; scientific discoveries; industrial
designs; trademarks, service marks, and commercial names
and designations; protection against unfair competition; and
"all other rights resulting from intellectual activity in the
industrial, scientific, literary or artistic fields.” (Convention
Establishing the World Intellectual Property Organization,
Signed at Stockholm on July 14, 1967; Article 2, § viii)

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For various administrative and historical reasons, intellectual property is

usually dealt with under the following main headings:

1) Literary, artistic and scientific works e.g. books. Protection of this

property is governed by laws concerning Copyright.

2) Performances, broadcasts e.g. concerts. Protection of this

property is governed by laws concerning Copyright's Related
Rights.

3) Inventions e.g. a new form of jet engine. Protection of inventions

is covered by laws concerning Patents.

4) Industrial designs e.g. the shape of a soft drinks bottle. Industrial

Designs may be protected by its own specialized laws, or those
of Industrial Property or Copyright.

5) Trademarks, service marks and commercial names and

designations e.g. logos or names for a product with unique
geographical origin, such as Champagne. Protection is normally
available under various laws. In this course the laws are covered
within the Trademark module.

6) Protection against unfair competition. e.g. false claims against a

competitor or imitating a competitor with a view to deceive the
customer. This is a theme that occurs in many of the modules in
this course and is in fact the subject of a separate module.

 The term "laws" includes national laws and international agreements: treaties,
conventions and similar intergovernmental instruments. Treaties themselves may receive
different treatment within various nations' governments.

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Common to all of the areas are two principles:

 The creators of intellectual property can acquire rights as a result of their

work.

 The rights to that work may be assigned or licensed to others.

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Why do Intellectual Property Rights Matter?

The first reason is that it is both just and appropriate that the person
putting in the work and effort into an intellectual creation has some benefit as a
result of this endeavor. The second reason is that by giving protection to
intellectual property many such endeavors are encouraged and industries
based on such work can grow, as people see that such work brings financial
return.

An example of this later point is given by the case of the world pharmaceutical
industry. An investment of many years, and R&D expenses (lab time for
creation, testing, government or agency approval procedures) running into the
hundreds of millions of pounds sterling (or yen, rands, lira, dollars) may be
necessary before any new medicine reaches the market. Without the IP rights
to exclude competitors from also making such a new medicine, the
pharmaceutical company creating such a new compound would have no
incentive to spend the time and efforts outlined above to develop their drugs.

Without patent protection, such a company would face economic losses

originating from the "free-riding" of their competitors. Without trademark
protection, this company, again, could not build "brand loyalty" that, hopefully,
would last beyond the years of protection granted by patents.

Without the protections given within IP laws and treaties, such

pharmaceutical firms simply would not commit an effort to experiment, in
searching for new health products. As you can see from this brief example,
without the protections outlined above, the world might well be literally less
healthy than it is.

Intellectual property rights may also help to extend protection to such

things as the unwritten and unrecorded cultural expression of many developing
countries, generally known as folklore. With such protection they may be
exploited to the benefit of the country and cultures of origin.

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The reason for States to enact national legislation, and to join as

signatories to either (or both) regional or international treaties governing
intellectual property rights include:

 to provide incentive towards various creative endeavors of the mind by

offering protections;

 to give such creators official recognition;

 to create repositories of vital information;

 to facilitate the growth of both domestic industry or culture, and

international trade, through the treaties offering multi-lateral protection.

In the next part of the course we shall examine in turn each of the areas
of IP outlined above.

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Study Note: This module should take around 5 hours to study. If you have less
time, you could conveniently break your study after listening to the third audio
segment.

Module 2: Copyright

Objectives

After completing the study of this module you should be able to:

1. Define copyright and give examples of the types of works that are
covered by copyright.

2. Explain in about 250 words the rights that are protected by copyright.
(Reproduction rights, rights of performance, translation and adaptation).

3. Describe in 250 words the limitations that may exist on the rights
covered by objective 2.

4. State the general duration of copyright given in the Berne Convention,

the European Union and in the United States of America.

5. Explain how the ownership of copyright can be obtained and transferred.

6. List 5 measures that can be used to enforce rights.

7. Given a case study involving copyright issues, first identify those issues
then indicate the applicable parts of the relevant treaties, which address
the identified issues.

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Introduction

This module on copyright explains the types of things that are protected
under the heading of copyright, the rights that a copyright owner has and how
they can be used for commercial advantage. Much of the law concerning
copyright is similar in all the countries that have signed international conventions
and trade agreements. However, for a definitive answer to any copyright question
your own country's laws should be consulted. You will see and hear reference to
the Berne Convention and TRIPS Agreement in this module and they will be
explained in some detail at the end of this module. For now just accept that they
are the two most relevant international agreements in the field of copyright.
Also explained are the remedies that copyright owners may take against
any abuse of their rights. Again these remedies are available in most countries
but you should consult your national law to be sure of the situation in your
country.

What is Covered by Copyright?

As with all fields of intellectual property copyright is concerned with

protecting the work of the human intellect. The domain of copyright is the
protection of literary and artistic works. These include writings, music, and works
of the fine arts, such as paintings and sculptures, and technology-based works
such as computer programs and electronic databases.
Note that copyright protects works, that is the expression of thoughts, and
not ideas. So if you imagine a plot, this, as such, is not protected. For example, a
plot consisting of a story about young men and women falling in love despite
family and caste obstacles would not be protected. Different writers may build
stories based on a similar plot. But when you express it in a synopsis or in, say, a
short story, or a play, the expression of the plot in that story will be protected.
Hence, for example, Shakespeare’s play Romeo and Juliet would be considered
as a creative expression of that plot. Still, other writers may build new stories
based on a similar plot.

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The Berne Convention (1886), which is the oldest international convention

governing copyright, states the following in its Article 2:
"The expression 'literary and artistic works' shall include every production
in the literary, scientific and artistic domain, whatever may be the mode
or form of its expression, such as books, pamphlets and other writings;
lectures, addresses, sermons and other works of the same nature;
dramatic or dramatico-musical works; choreographic works and
entertainments in dumb show; musical compositions with or without
words; cinematographic works to which are assimilated works expressed
by a process analogous to cinematography; works of drawing, painting,
architecture, sculpture, engraving and lithography; photographic works,
to which are assimilated works expressed by a process analogous to
photography; works of applied art; illustrations, maps, plans, sketches
and three-dimensional works relative to geography, topography,
architecture or science. [.....] Translations, adaptations, arrangements of
music and other alterations of a literary or artistic work shall be protected
as original works without prejudice to the copyright in the original work.
[.....] Collections of literary or artistic works such as encyclopaedias and
anthologies which, by reason of the selection and arrangement of their
contents, constitute intellectual creations shall be protected as such,
without prejudice to the copyright in each of the works forming part of
such collections."

There is no requirement that the literary and

artistic work should be good or have artistic
merits. It should, however, be original. The exact
meaning of this requirement varies from country
to country, and it is often determined by case
law. In very general terms one may say that in
countries belonging to the common law
tradition very little is required, other than that the
work must not be a copy of another work and
that the author should have displayed a
minimum amount of skill, labor and judgement in
making it.

In countries belonging to the civil law tradition, the requirement is often stronger,
for example that the work must bear the stamp of the author's personality. A
creative effort would be required from the author that may go beyond mere skill,
labor or judgement.

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Are the works that can be protected under the Berne

Convention restricted to the list set out in Article 2?
It should be borne in mind that works that are susceptible of being protected
under the Berne Convention are not restricted to the examples quoted above.
Such a list is not exhaustive. You will have noticed that the Berne Convention
specifies that “the expression 'literary and artistic works' shall include every
production in the literary, scientific and artistic domain, whatever may be the
mode or form of its expression, such as….” The expression “such as” opens the
door to creations other than the ones set out in the list. For example, court
decisions, in different countries, have protected material such as:

- private letters,

- a divorce guide,

- a haircut,

- a floral decoration of a bridge,

- a son -et -lumiere show,

- examination papers.

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What is meant by derivative works?

Another important feature of Article 2 of the Berne Convention is that it
protects what is commonly called “derivative works”. These are works that are
derived from other, existing sources. Examples of derivative works include:
- translations of works into a different language;
- adaptations of works, such as making a film scenario based on a novel;
- arrangements of music, such as an orchestra version of a musical
compostion initially written for piano;
- other alterations of works, for example an abridgement of a novel;
- compilations of literary and artistic works, such as encyclopedias and
anthologies. In such a case, the originality resides in the choice and
arrangement of the materials.
You would have to bear in mind that, before embarking in a derivative work, you
must respect the rights of the author of the initial work. For example, an author
who wishes to translate a novel into a foreign language should seek proper
authorization from the author of the novel that will be translated. Making the
translation without proper authorization would expose the translator to the risk of
being sued for copyright violation.

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Audio segment 1:What sort of things can be protected by copyright laws?

Copyright protects literary and artistic works, as the title of the Berne Convention
states. The two concepts need to be taken in a very broad sense. The term
literary, for example, does not mean just novels, poems or short stories: it could
cover the maintenance manual of a car, or even things that are written but not
supposed to be understood by the average human being, such as computer
programs. The key to this expression in fact is the word “works”. What we mean
by that is that expression, human expression, is the determining factor. So, if I
have the idea of painting “sunset over the sea”, anyone else can use the same
idea, which is not protected. But when I actually produce my painting of “sunset
over the sea” the painting itself is expression, and that is protected.

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What are the Rights Protected by Copyright?

In the introduction to this course it was explained that the most important
feature of property is that the owner may use it exclusively, i.e., as she/he
wishes, and that nobody else can lawfully use it without the owner's
authorization. The phrase "as she/he wishes" does not, of course, mean that they
can use it regardless of the legally recognized rights and interests of other
members of society. For example, the owner of a car may use it "as she wishes,"
but this does not mean that she may drive her car recklessly and create danger
to others, nor that she may disregard traffic regulations. Copyright is a branch of
intellectual property. The owner of copyright in a protected work may use the
work as he wishes, and may prevent others from using it without his
authorization. Thus, the rights granted under national laws to the owner of
copyright in a protected work are normally "exclusive rights": to use the
work or to authorize others to use the work, subject to the legally
recognized rights and interests of others.
There are two types of rights under copyright: economic rights, which
allow the owner of rights to derive financial reward from the use of his works by
others, and moral rights, which allow the author to take certain actions to
preserve the personal link between himself and the work. Now listen to the next
audio segment and try to distinguish the various economic rights that are
described.

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Audio segment 2: What rights does a copyright holder have?

The copyright holder has a set of different rights which are governed partly by the
Berne Convention, where there are minimum rights, and partly by national law,
which often takes the rights even further. Traditionally and historically, the right
of reproduction is the key, which incidentally is reflected in the word copyright.
The right of reproduction would, for instance, cover the printing of books – and
photocopying too – but it also covers more modern methods of reproduction such
as tape recording and the copying of tape recordings. It covers the storage of
works in computer memories and of course the copying of computer programs on
diskettes, CD-ROMS, CD-writeable ROMS and so on.
Another right that has a long history is the right of performance. You perform a
work when you play a tune, for example, or when you act on stage, and over the
years that right has given rise to a number of other rights, such as the right of
broadcasting and the right of communication to the public, the latter being
sometimes defined differently in various national laws: broadcasting may actually
form part of communication to the public, or they may be linked parallel concepts,
but typically all kinds of communication will be covered, broadcasting being one,
but cable distribution could be another, and Internet distribution another again.

Another important group of rights, which were not mentioned in the

audio segment, are those relating to translation and adaptation.

All of these rights will receive further coverage in the following three
sections.

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Right of Reproduction

The right of the owner of copyright to prevent others from making copies of
his works is the most basic right under copyright. For example, the making of
copies of a protected work is the act performed by a publisher who wishes to
distribute copies of a text-based work to the public, whether in the form of printed
copies or digital media such as CD-ROMs. Likewise, the right of a phonogram
producer to manufacture and distribute compact discs (CDs) containing recorded
performances of musical works is based, in part, on the authorization given by
the composers of such works to reproduce their compositions in the recording.
Therefore, the right to control the act of reproduction is the legal basis for many
forms of exploitation of protected works.
Other rights are recognized in national laws in addition to the basic right of
reproduction. For example, some laws include a right to authorize distribution of
copies of works; obviously, the right of reproduction would be of little economic
value if the owner of copyright could not authorize the distribution of the copies
made with his consent. The right of distribution is usually subject to exhaustion
upon first sale or other transfer of ownership of a copy, which is made with the
authorization of the rights owner. This means that, after the copyright owner has
sold or otherwise transferred ownership of a particular copy of a work, the owner
of that copy may dispose of it without the copyright owner's further permission, by
giving it away or even by reselling it.
However, as regards rental of such copies, an increasing number of
national copyright laws, as well as the TRIPS Agreement, have recognized a
separate right for computer programs, audiovisual works and phonograms. The
right of rental is justified because technological advances have made it very easy
to copy these types of works; experience in some countries has shown that
copies were made by customers of rental shops, and therefore, that the right to
control rental practices was necessary in order to safeguard the copyright
owner's right of reproduction. Finally, some copyright laws include a right to
control importation of copies as a means of preventing erosion of the principle of
territoriality of copyright; that is, the economic interests of the copyright owner
would be endangered if he or she could not exercise the rights of reproduction
and distribution on a territorial basis.
There are some acts of reproducing a work which are exceptions to the
general rule, because they do not require the authorization of the author or other
owner of rights; these are known as "limitations" on rights. For example, many
national laws traditionally allow individuals to make single copies of works for
private, personal and non-commercial purposes. The emergence of digital
technology, which creates the possibility of making high-quality, unauthorized
copies of works that are virtually indistinguishable from the source (and thus a

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perfect substitute for the purchase of, or other legitimate access to, authorized
copies), has called into question the continued justification for such a limitation on
the right of reproduction.

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Rights of Public Performance, Broadcasting and

Communication to the Public

Normally under national law, a public performance is considered as any

performance of a work at a place where the public is or can be present, or at a
place not open to the public, but where a substantial number of persons
outside the normal circle of a family and its closest social acquaintances is
present.
On the basis of the right of public performance, the author or other owner
of copyright may authorize live performances of a work, such as the presentation
of a play in a theater or an orchestra performance of a symphony in a concert
hall. Public performance also includes performance by means of recordings;
thus, musical works embodied in phonograms are considered "publicly
performed" when the phonograms are played over amplification equipment in
such places as discotheques, airplanes, and shopping malls.
The right of broadcasting covers the emission by wireless means for
members of the public within range of the signal, whose equipment allows
reception of sounds or of images and sounds, whether by radio, television, or
satellite.
When a work is communicated to the public, a signal is diffused by wire
or cable, which can be received only by persons who have access to equipment
connected to the wire or cable system.
Under the Berne Convention, owners of copyright have the exclusive right
of authorizing public performance, broadcasting and communication to the public
of their works. Under some national laws, the exclusive right of the author or
other owner of rights to authorize broadcasting is replaced, in certain
circumstances, by a right to equitable remuneration, although such a limitation on
the broadcasting right is less and less common.

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Rights of Translation and Adaptation

The acts of translating or adapting a work protected by copyright also

require the authorization of the owner of rights. Translation means the
expression of a work in a language other than that of the original version.
Adaptation is generally understood as the modification of a work to create
another work, for example adapting a novel to make a motion picture, or the
modification of a work to make it suitable for different conditions of exploitation,
e.g., by adapting an instructional textbook originally prepared for higher
education into an instructional textbook intended for students at a lower level.
Translations and adaptations are works protected by copyright. Therefore,
in order to reproduce and publish a translation or adaptation, authorization must
be obtained from both the owner of the copyright in the original work and of the
owner of copyright in the translation or adaptation.
Economic rights of the type mentioned above can be transferred or
assigned to other owners usually for a sum of money or royalties depending on
the proposed usage of the work. However, the second type of rights, moral
rights, can never be transferred. They always remain with the original author of
the work.

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Now listen to the next audio segment for a description of moral rights.

Audio segment 3: Now what exactly are moral rights?

The rights I have just mentioned are known as economic rights. Moral rights are
different: they are made up of two things, the first being the right of authorship.
That is the right to claim the status of author of a work, and to have that
authorship recognized. It is basically the right to have your name mentioned, for
instance when the work is reproduced. If you have written a book, then you have
a right by law to have your name mentioned as its author and also to be named
when the work is used, at least within reasonable limits. We can’t expect a disc
jockey in a discotheque to announce the composer, lyric writer, arranger and so
on for every record he plays; it doesn’t go that far obviously, but if you play a
work at a concert - a classical concert of modern music - the composer would
clearly be entitled to have his name mentioned in the program. That would
certainly be the practice for more important works such as those played in
theaters or concert halls; indeed for all works in principle, we must name the
author. This is also true of broadcasting in some cases, but not all the time.
There again, the exact weighing of the details is something that is dealt with in
national law, often with reference to practice or precedent.
Moral rights are the rights of respect, that is, the right to object to the work being
distorted or used in contexts that are prejudicial to the honor and literary and
artistic reputation of the author. The author can for example oppose the use of
his work in a pornographic context, if the work is not pornographic in itself. And
he can oppose the distortion of the work in such a way that its cultural or artistic
integrity is adversely affected.

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You should now be aware of the type of literary and artistic works that are
covered by copyright and the types of rights that a copyright owner has and you
may naturally be wondering how the author of such a work obtains copyright for
the work. Listen to the next audio segment to find out.

Audio segment 4: Can you tell us a little about how copyright is actually
acquired?

Of course; in fact it’s simple. You don’t have to do anything under the
Berne Convention which works on the principle of there being no
formalities. Basically, your work is protected by the fact of its creation.
However, under some national legislation, notably in countries with
common-law traditions, the work does have to be fixed before it is
protected.
By fixed, you mean what?
Written down or recorded. You don’t even have to record it yourself: if
you compose a melody, hum it casually in the street and I manage to get
it recorded, then it’s fixed. But it also means that it’s protected, so then if I
use the recording of your melody, for further reproduction for example, I
would be infringing your copyright. The difference here is really not that
important; it is basically a question of the kind of proof you would need in
a court in the very rare cases of works that are not fixed in the normal
way, such as ballet routines. Nowadays you would fix a ballet on video
and even use a special kind of writing to establish the choreography, but
such things have not properly evolved until now. There could be a
problem if you claimed that you had created a ballet and that somebody
had made a play of it. The judge would then say, “Well, let me have
some proof of the existence of your work.” If it were not set down in some
material form, proof would be hard to provide. And yet in civil-law
countries, the work is typically protected from the moment of its creation.
So even if you think up a poem in your head, it’s protected. It would be
your problem of course to prove what poem you thought up, how you did
it and so on. Under common law, on the other hand, you would have to
have it fixed in some way, perhaps written down or recorded on tape.
Is there anywhere in the world where you would have to observe a
formality to get copyright?
In Berne Convention countries, all foreign owners of rights or authors
from other Berne countries qualify for protection under the Convention
without any formalities, so there’s no need to make any registration.
Some countries then impose formalities on their own citizens, which they
can do as the international conventions are concerned only with how
foreign citizens are treated. In principle a country can deal with its own
nationals as it pleases, and then in the United States, for instance, there
is a history of old requirements consisting on one hand in the registration

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of the work with the Copyright Office, which is part of the Library of
Congress, and on the other hand in the claiming of copyright, by means
of the reserved-rights notice, the circled letter ‘c’ that you probably have
seen on a great many books, followed by the year date of first
publication.
These things are particularly important for American works. So, for
American works, the specific United States demands have to be looked
into; what is more, foreign works can qualify for improved protection that
goes beyond what is provided by the Berne Convention, so for certain
works that are considered to be of particular interest to the US market, it
could be worth checking up on that country’s registration requirements.
Be that as it may, there is nevertheless protection from the outset, so in
fact it is not necessary to do anything, and that goes for all Berne
Convention countries.

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Transfer of Copyright

Many creative works protected by copyright require financial investment and

professional skills for their production and further dissemination and mass
distribution. Activities such as book publishing, sound recording or film producing
are usually undertaken by specialized business organizations or companies, and
not directly by the authors. Usually, authors and creators transfer their rights to
these companies by way of contractual agreements, in return for compensation.
The compensation may take different forms, such as lump sum payments, or
royalties based on a percentage of revenues generated by the work.
The transfer (or assignment) could affect all the economic rights or only some of
them (partial assignment). For example, an author of a novel written in English
could sell to a publisher his reproduction and distribution rights, as well as his
translation rights and his adaptation rights in the novel. But the author may
choose to proceed otherwise: he may decide to split the rights he has between
different persons. Thus the author of a novel may assign or transfer his rights to
publish and reproduce the novel written originally in English to one publisher. He
may assign the right to translate the novel into, say, French, Russian and Arabic
to three other publishers. In addition he may assign the right to adapt his novel
into a film (or an opera or a play) to other persons.
The transfer or assignment may be granted for a specific period of time and a
limited territory, or for the duration of the full term of copyright and worldwide.
Hence the copyright owner of a novel could assign to one publisher the rights to
publish the book in English, for a specific territory, say, the United States of
America, and for a period of 20 years. Or he may decide to assign to the same
person the rights to publish the novel in English worldwide, and for the duration of
copyright. The combinations here are many and depend on the negotiations
between the parties
As we have seen, assignments and transfers entail important consequences for
the author. Legally, the assignee (the person to whom the right or rights have
been assigned) is vested with the rights that have been contractually transferred
to him. He thus becomes the new owner of such rights, for the agreed period of
time and territory. It is thus important that the author be well aware about the
consequences of such an operation. This is why many national copyright laws
contain provisions requiring that assignments be made in writing and signed by
or on behalf of the assignor, in order to be valid or effective. Such requirement
helps to ensure that the author is well aware about the rights he is parting with, at
what price, and on what conditions.

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The next question you may have is once I have copyright on a work, for
how long am I protected?

Audio segment 5:How long does copyright protection actually last?

In principle, as long as the national law says, but the minimum

requirement under the Berne Convention is 50 years. The term is
calculated from the end of year of the author’s death which is more
practical: you don’t have to enquire into the day he died, you only
need to know the year. But there has been a tendency in recent
years to prolong that protection. In the European Union and for
countries of the European economic area, the term is now 70 years
from the end of year in which the author died, and the same term
has been written into the US legislation – so there too it is 70 years.
There is thus a definite tendency to prolong protection from 50 to 70
years.
Please note however that there are cases where in the Berne
Convention the minimum requirement is less than 50 years post mortem.
For example, for photographic works and works of applied art, the
minimum term of protection is 25 years after the making of the work.

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Now it is time to ask you to consider some of the common limitations on

the rights of a copyright owner that exist under some national laws.

Limitations on Rights

Strictly speaking, the first limitation is the exclusion from copyright

protection of certain categories of works. In some countries, as you have heard,
works are excluded from protection if they are not fixed in tangible form; for
example, a work of choreography would only be protected once the movements
were written down in dance notation or recorded on videotape. In some (but not
all) countries, moreover, the texts of laws, court and administrative decisions are
excluded from copyright protection.
The second category of limitations on the rights of authors and other
owners of copyright concerns particular acts of exploitation, normally requiring
the authorization of the owner of rights, which may, under circumstances
specified in the law, be done without authorization. There are two basic types of
limitations in this category:

1) Free uses, which are acts of exploitation of works that may be carried out
without authorization and without an obligation to compensate the owner
of rights for the use;

2) Non-voluntary licenses, under which the acts of exploitation may be

carried out without authorization, but with the obligation to compensate the
owner of rights.

Examples of free uses include: the making of quotations from a protected

work, provided that the source of the quotation, including the name of the author,
is mentioned and that the extent of the quotation is compatible with fair practice;
use of works by way of illustration for teaching purposes; and use of works for the
purpose of news reporting. In respect of the right of reproduction, the Berne
Convention contains a general rule, rather than explicit detailed limitations: Article
9(2) provides that member States may provide for free reproduction in "certain
special cases" where the acts do not conflict with a normal exploitation of the
work and do not unreasonably prejudice the legitimate interests of the author. As
noted above, numerous laws contain provisions allowing reproduction of a work
exclusively for the personal, private and non-commercial use of individuals.
However, the ease and quality of this individual copying, made possible by
audiotaping or videotaping and even more recent technological improvements,
has led some countries to narrow the scope of such provisions. Certain legal
systems allow copying but incorporate a mechanism for payment to owners of
rights for the prejudice to their economic interests, through a fee imposed on
sales of blank tapes and / or tape recorders.
In addition to specific free uses enumerated in national laws, the laws of
some countries recognize the concept known as fair use or fair dealing, which

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allows use of works without the authorization of the owner of rights, taking into
account factors such as the following: the nature and purpose of the use,
including whether it is for commercial purposes; the nature of the work used; the
amount of the work used in relation to the work as a whole; and the likely effect of
the use on the potential commercial value of the work.

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As noted above, non-voluntary licenses allow use of works in certain

circumstances without the authorization of the owner of rights, but which, by
operation of law, require that compensation be paid in respect of the use. Such
licenses are called "non-voluntary" because they are authorized by the law and
do not result from the exercise of the copyright owner's exclusive right to
authorize particular acts. Non-voluntary licenses were usually created in
circumstances where a new technology for the dissemination of works to the
public had emerged, and where the national legislature feared that owners of
rights would prevent the development of the new technology by refusing to
authorize use of works. This was true in the Berne Convention, which recognized
two forms of non-voluntary licenses: firstly, to allow the mechanical reproduction
of musical works and secondly for broadcasting. It should be noted, however,
that the justification for non-voluntary licenses is called increasingly into question,
since effective alternatives now exist for making works available to the public
based on authorizations given by the owners of rights, including in the form of
collective administration of rights.
Whatever the situation in your country relating to copyright there will
inevitably be situations occurring where copyright is infringed so it is important to
consider the types of remedies the copyright owner can take.

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Enforcement of Rights

The Berne Convention contains few provisions concerning enforcement of

rights, but the evolution of new national and international enforcement standards
has been dramatic in recent years, due to two principal factors. The first is the
galloping advances in the technological means for creation and use (both
authorized and unauthorized) of protected material, and in particular, digital
technology, which makes it possible to transmit and make perfect copies of any
"information" existing in digital form, including works protected by copyright,
anywhere in the world. The second factor is the increasing economic importance
of the movement of goods and services protected by intellectual property rights in
the realm of international trade; simply put, trade in products embodying
intellectual property rights is now a booming, worldwide business. The TRIPS
Agreement, which contains detailed provisions on the enforcement of rights, is
ample evidence of this new link between intellectual property and trade. The
following paragraphs identify and summarize some of the enforcement provisions
found in recent national legislation, which may be divided into the following
categories: conservatory or provisional measures; civil remedies; criminal
sanctions; measures to be taken at the border; and measures, remedies and
sanctions against abuses in respect of technical devices.
Conservatory or provisional measures have two purposes: first, to
prevent infringements from occurring, particularly to prevent the entry of infringing
goods into the channels of commerce, including entry of imported goods after
clearance by customs; and second, to preserve relevant evidence in regard to an
alleged infringement. Thus, judicial authorities in some countries may have the
authority to order that provisional measures be carried out without advance
notice to the alleged infringer. In this way, the alleged infringer is prevented from
relocating the suspected infringing materials to avoid detection. The most
common provisional measure is a search of the premises of the alleged infringer
and seizure of suspected infringing goods, the equipment used to manufacture
them, and all relevant documents and other records of the alleged infringing
business activities.
Civil remedies compensate the owner of rights for economic injury
suffered because of the infringement, usually in the form of monetary damages,
and create an effective deterrent to further infringement, often in the form of a
judicial order to destroy the infringing goods and the materials and implements
which have been predominantly used for producing them; where there is a
danger that infringing acts may be continued, the court may also issue injunctions
against such acts, failure to comply with which would subject the infringer to
payment of a fine.
Criminal sanctions are intended to punish those who willfully commit acts
of piracy of copyright and related rights on a commercial scale, and, as in the
case of civil remedies, to deter further infringement. The purpose of punishment
is served by the imposition of substantial fines, and by sentences of
imprisonment consistent with the level of penalties applied for crimes of

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corresponding seriousness, particularly in cases of repeat offenses. The purpose

of deterrence is served by orders for the seizure, forfeiture and destruction of
infringing goods, as well as the materials and implements the predominant use of
which has been to commit the offense.

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Measures to be taken at the border are different from the enforcement

measures described so far, in that they involve action by the customs authorities
rather than by the judicial authorities. Border measures allow the owner of rights
to request from customs authorities the suspension into circulation of goods that
are suspected of infringing copyright. The purpose of the suspension into
circulation is to provide the owner of rights a reasonable time to commence
judicial proceedings against the suspected infringer, without the risk that the
alleged infringing goods will disappear into circulation following customs
clearance. The owner of rights must generally satisfy the customs authorities that
there is prima facie evidence of infringement, must provide a detailed description
of the goods so that they may be recognized, and must provide a security to
indemnify the importer, the owner of the goods, and the customs authorities in
case the goods turn out to be non-infringing.
The final category of enforcement provisions, which has achieved greater
importance in the advent of digital technology, includes measures, remedies
and sanctions against abuses in respect of technical means. In certain
cases, the only practical means of preventing copying is through so-called "copy-
protection" or "copy-management" systems, which contain technical devices that
either prevent entirely the making of copies or make the quality of the copies so
poor that they are unusable. Technical devices are also used to prevent the
reception of encrypted commercial television programs except with use of
decoders. However, it is technically possible to manufacture devices by means of
which copy-protection and copy-management systems, as well as encryption
systems, may be circumvented. The theory behind provisions against abuse of
such devices is that their manufacture, importation and distribution should be
considered infringements of copyright to be sanctioned in ways similar to other
violations.

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International Agreements Concerning Copyright

Please listen to the following audio segment, which describes the main
international agreements in the copyright field.

Audio segment 6: What are the main international conventions or treaties

that govern the area of copyright?

The first treaty is the Berne Convention for the Protection of Literary and
Artistic Works. It dates back to 1886, but has been revised several times,
typically at about 20-year intervals. The latest version was adopted in
Paris in 1971.
The Berne Convention deals with the protection of copyright. It is based
on principles such as that of national treatment, meaning that under
national law you cannot discriminate against works from other countries
party to the Convention. It lays down very important minimum protection
standards that have to be met by national law, although of course
national law can go further – and establishes various other principles.
Recently, we had the TRIPS Agreement. This is the Agreement on
Trade-Related Aspects of Intellectual Property Rights, which is one of the
Agreements that emerged from the Uruguay Round of trade negotiations
and is administered by the World Trade Organization.
The TRIPS Agreement among other things contains a reference to the
substantive provisions of the Berne Convention, leaving aside moral
rights, which are not considered trade-related. In order to comply with the
TRIPS Agreement, countries have to comply with the provisions of the
Berne Convention for a start, after which there are a number of additional
norms of protection that are introduced by the TRIPS Agreement, most
importantly regarding new types of creations (computer programs and
original databases) and new forms of exploitation (right of rental).

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So countries that acceded to or ratified the TRIPS Agreement must also comply
with the Berne Convention (although Berne's Article 6bis on moral rights is
specifically excluded in the TRIPS language, as it does not concern trade by
virtue of the moral right's inalienable nature); in addition the TRIPS Agreement
seeks to address aspects of copyright relating to new technologies.

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To expand from the sound segment you just listened to, in December of 1996, a
Diplomatic Conference was held, which concluded the newest international
agreement protecting copyright: the WIPO Copyright Treaty (WCT). This treaty
responded to the need to protect works when transmitted by digital means,
including via the Internet. The subject matter to be protected through copyright by
the WCT includes that of computer programs, whatever may be the mode or form
of their expression, and compilations of data or other material, (databases) in any
form, which by reason of the selection or arrangement of their content constitute
intellectual creations. The rights of authors include the previously mentioned
rights of distribution, rental, and communication to the public, and it is made clear
that the right of communication to the public covers the transmission of works
through digital networks such as the Internet. It is also stated that the right of
reproduction as set out in the Berne Convention, fully applies in the digital
environment. Hence the storage of a work in digital form in an electronic medium
(for example by storing it in a computer memory) should constitute a reproduction
of that work. These rights, as is normal, are subject to certain limitations and
exceptions.
________________________________________________________________
(NOTE: another treaty was concluded at that same Diplomatic
Conference, which was designated the WIPO Performances and Phonograms
Treaty (WPPT). That treaty is discussed in the Related Rights course module).

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Finally, to conclude this module on copyright, let's address the question of

the importance of copyright laws in developing countries.

What are the benefits from Copyright protection for

developing countries?

There are cultural, as well as economic benefits. We should not forget, in

fact, that copyright also has to do with culture. All developing countries
have very strong artistic communities. There are no people on earth who
are not creative, and of course if there is no copyright protection, the
artistic community is going to be cheated and prevented from earning
money from their efforts. Nowadays literary and artistic works have
become a very broad concept, including of course the cultural part, the
artistic community, but also the information technology industry, or more
specifically computer program industry.
A large amount of money might be invested in making a computer
program, or film or a television program. But if as soon as one copy is out
on the market, everybody is allowed to copy it, then the earning potential
is gone and there will be no incentive to create or further invest.
Creativity will, hence, be discouraged instead of being stimulated and
national cultural output would be adversely affected. That’s one aspect.
The response to this could be to say that local works should be
protected, while no protection should be afforded to foreign works,
because then money would go out of the country, which developing
countries can ill afford.
This would, however, be a somewhat shortsighted view. There are some
solid arguments that could be stated in favor of international protection of
works.
First, if protection were to be limited only to national works, foreign works
would be allowed into the local market without any copyright cost. They
would be sold at cut prices. Of course, consumers may benefit from such
low prices. But this practice could detrimentally affect the sale of locally
made products, which would have to compete with works of foreign origin
distributed at a more attractive price. The dangerous result is that
consumers might turn their backs on nationally made products and buy
foreign but less expensive products. National culture, whether it is the
music, or book or other industry may, therefore, suffer.
Second, one cannot emphasize enough the gains that local artists and
creators, whether in developing countries or not, may derive from
protection of their works abroad. Local markets may be limited and there
is a need to derive revenues from cultural products that are exported and
marketed outside. Nowadays, and thanks to modern means of
communications, works are listened to, or read, or seen, not only in the

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local community or country in which they have been created, but also
further afield. So much so, that in some instances, the income generated
from the exploitation of a work on foreign soil may exceed substantially
the revenues that are reaped from its national exploitation. Such a
phenomenon can be observed frequently in the areas of music, TV
programs, software, film, books, etc. Protection abroad, in foreign
markets, is, thus, extremely important for authors and creators. And one
has to be aware that an artist or a creator from a particular country will
not, in all likelihood, enjoy protection abroad, if foreign authors and artists
are not also themselves granted protection in his or her country.

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Summary

This module has addressed the general structure of copyright law and has
provided an overview of:

(1) the 'literary and artistic works' protected by copyright;

(2) the rights granted to the owner of copyright;

(3) the ownership and transfer of copyright;

(4) the duration of protection;

(5) the limitations on rights;

(6) the enforcement of rights, and

(7) international agreements concerning copyright.

The Berne Convention expansively listed 'literary and artistic works' so

that “every production in the literary, scientific and artistic domain, whatever may
be the mode or form of expression”, were included. Covered under this broad
term is every original work of authorship, irrespective of its literary or artistic
merit.
The owner of copyright in a protected work may use the work as he or she
wishes, and may prevent others from using it without his or her authorization.
Thus, since the holder may exclude others from acting against the holder's
interests, these rights are referred to as “exclusive rights”. There are two other
types of rights covered under copyright: economic rights and moral rights. Within
the umbrella of economic rights are those several rights and applicable
limitations, which may be alienable from the original holder. Moral rights will
always remain with the original holder no matter whether the economic rights
have been transferred.
In addition to the categories of works mentioned above, a new genre of
work to be covered under copyright has emerged. This is multimedia production
and although there is no legal definition, there is a consensus that the
combination of sound, text, and images in digital format, which is made
accessible by a computer program is considered an original expression of
authorship and is therefore covered under the umbrella of copyright.

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Legislative Texts:

 Berne Convention for the Protection of Literary and Artistic Works

 TRIPS Agreement
 WIPO Performances and Phonograms Treaty (WPPT)
 WIPO Copyright Treaty (WCT)

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Study Note: This module should take around 2 hours to study.

Module 3: Related Rights

Objectives

After completing the study of this module you should be able to:

1. List the beneficiaries of related rights.

2. Cite the duration of related rights as given in the Rome Convention and
the TRIPS agreement.

3. Explain in about 250 words how the concept of related rights may be
extended to encompass “folklore.”

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Introduction

Related rights are rights that in certain respects resemble copyright.

The purpose of related rights is to protect the legal interests of certain persons
and legal entities who contribute to making works available to the public. One
obvious example is the singer or musician that performs a composer's work to
the public. The overall purpose of these related rights is to protect those
people or organizations that add substantial creative, technical or
organizational skill in the process of bringing a work to the public.

This module will explain to you the types of related rights, how they are
obtained, the duration of the rights and the main international treaties or
conventions that are concerned with related rights.

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Related Rights

The first thing to say is that related rights is a fairly new term and some
documents refer to the same rights under the term neighboring rights. This
module will just use the term related rights. Begin your studies by listening to
the audio segment of related rights.

Audio segment 1: Could you define this related rights concept for me
again?

Related rights are not copyright, but they are closely associated with
it; they are derived from a work protected by copyright. So the two
are always, in some way, related. They offer the same kind of
exclusivity as copyright, but they don’t cover the actual works. They
cover things that involve a work, in the general sense of bringing it to
the public. Let’s use the example of a copyright-protected song, and
take it through the various stages.

Assuming that we have an original song, it is, of course, protected for

the composer and the lyric writer as original copyright holders; they in
due course will offer it to a singer who performs it and he or she will
also need a form of protection. If it is to be recorded, or if the singer
hopes to have it broadcast, those acts involve engaging another
company, which will also want to be protected before it enters into an
agreement. The first of these related rights then are the rights of those
who perform the works, namely the performers, singers, actors,
dancers, musicians and so on.

Then there is a second group, the phonogram producers, or more

accurately producers of sound recordings as recording material
moves on from vinyl phonograph records into the realm of CDs and
digital recording media. Theirs is a more commercial kind of
protection, in a sense, as the making of a quality sound recording has
more to do with the protection of an investment, than with the artistic
concerns involved in the making, writing or performance of a song.
Nevertheless, even here, in the whole process of selecting the
instrumental backing, repertoires, arranging the music and so on,
there are some creative elements as well as the more obvious and
important economic element. We should bear in mind that these
producers are among the most immediate victims of piracy, as they
don’t get the money that is diverted to the pirate producers, but then
of course their loss, their financial loss, is passed down the line to the
performers and authors. This is why producers of sound
recordings have also been granted specific rights.

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The third group receiving protection for their related rights are
broadcasters. Their rights derive from their creative input, namely
the making of broadcasts, not from the content of the broadcast, not
from the film, for instance, but from the act of broadcasting it. The
very fact that they have the ability to emit the signals constituting the
broadcast gives them protection rights of a sort in those signals. And
there again, it is the investments, the efforts that they made in putting
together and broadcasting the various programs that are involved.

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The speaker also mentioned at the very start that related rights are not
the same as copyright, but t0068ey are closely associated with it; “they are
derived from a work protected by copyright”.

Sometimes related rights are associated with works that are not
protected by copyright, e.g. works that are in the public domain. Let us consider,
for example, a piano concerto by Beethoven. It may have been performed in a
concert hall or it could have been recorded on a CD. As Beethoven died in
1827, all of his works are in the public domain and thus do not enjoy copyright
protection. Hence anyone is free to play a particular composition, say one of
Beethoven’s piano concertos, or to record it on a CD, without having to obtain
an authorization.

However, in the same example, the performers of the concert (pianist

and orchestra), as well as the producer of the CD containing a recording of the
concert, would enjoy related rights, with regard to, respectively their
performance of the concert and its recording. Therefore, in the example under
consideration, no one would be entitled to record a live performance of such
concert without the consent of the performers. As well, no one is entitled to
make copies of a sound recording containing the rendition of such piano
concert, without the consent of the sound recording producer.

It may be interesting to note also that sound recording producers may

enjoy protection even if what has been recorded is not in itself a work. A sound
recording may contain natural sounds, such as bird songs, ocean waves, etc.
These sounds are not works. Nevertheless, the sound recording company that
has arranged for the production of the CD containing these sounds would be
protected against any act of piracy involving such recording.

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As the audio segment explained, related rights have been traditionally

granted to three categories of beneficiaries: performers, producers of
recordings and broadcasting organizations.

The rights of performers are recognized because their creative

intervention is necessary to give life, for example, to musical works,
dramatic and choreographic works, and motion pictures, and because
they have a justifiable interest in legal protection of their individual
interpretations.

The rights of producers of

recordings are recognised
because their creative, financial
and organisational resources
are necessary to make recorded
sound available to the public in
the form of commercial
phonograms (tapes, cassettes,
CDs, Mini Discs, etc.)

They also have a legitimate interest in having the legal resources

necessary to take action against unauthorised uses, whether it be
through the making and distribution of unauthorised copies (piracy) or
in the form of unauthorised broadcasting or communication to the
public of their phonograms.

Likewise, the rights of broadcasting organizations are recognised

because of their role in making works available to the public, and in
light of their justified interest in controlling the transmission and
retransmission of their broadcasts.

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Now listen to the next audio, which concerns the importance and
evolution of rights relating to broadcasting, giving an example through the
broadcast of a sporting event.

Audio segment 2:Related rights for broadcasters of sporting events

The rights of broadcasters also have a very specific importance in

relation to sports programs. In many countries, a sports program
would not be considered eligible for copyright protection. There are
countries, and the US is a prime example, that regard a football
match, when it is filmed, as an audiovisual work, because it is
considered sufficiently creative to be a work. But in many other
countries the law provides that the game is the determining factor,
and not creative to the point of qualifying for protection. The
cameraman is merely following the action on the pitch and other
incidental events. He might be a skilled manipulator of the camera,
but he is not an artist. Very few such broadcasts, therefore, if any at
all, would be considered worthy of protection.

And yet there is enormous interest in, say, the television rights for the
Olympic Games. Millions or billions of dollars, pounds, euros, francs
or yen can change hands.

But it would be an unattractive investment, would it not, if those

broadcasters, having paid enormous sums of money years in
advance for an exclusive license to broadcast, or for exclusive access
to

other major sporting events for the

benefit of a given broadcasting area,
were unable to invoke the protection
offered by their related rights to
prevent other companies from
rebroadcasting their work or
recording and selling videos of it.

This brief set of examples is intended to illustrate the reasons why the
groups concerned, namely performers, phonogram producers and
broadcasters, have been made eligible for related rights.

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The first organised international response to the need for legal protection
of the three categories of related rights beneficiaries was the conclusion, in
1961, of the Rome Convention, or more specifically, the "International
Convention for the Protection of Performers, Producers of Phonograms and
Broadcasting Organisations." Unlike most international conventions, which
follow in the wake of national legislation and are intended to synthesize existing
laws, the Rome Convention was an attempt to establish international
regulations in a new field where few national laws existed at the time. This
meant that most States would have to draft and enact laws before adhering to
the Convention.

Since the adoption of the Convention in 1961, a large number of States

have legislated in matters related to the Convention, and the laws of many such
States exceed the minimum levels of protection established by the Convention.

The most recent international response to meet these evolving legal

protection needs came with the signing of the WIPO Performances and
Phonograms Treaty ("WPPT"), concluded in Geneva on December 20, 1996.
The development of this treaty was designed to offer further protection of the
economic and moral rights of performers and producers of phonograms
(Article 5 to 10 of the WPPT), in particular as regards their exploitation in
digital form, including over the Internet. This Treaty entered into force on May
20, 2002.

Now that you know the types of people and organizations that can have
protection under related rights, the next thing to consider is "what are those
rights?" In principle they are similar to the rights granted to copyright holders.
That is the right to prevent others from an unauthorized exploitation of the
protected performance, recording or broadcast.

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Rights Granted to the Beneficiaries of Related Rights

The rights granted to the three beneficiaries of related rights in national

laws are as follows, although not all rights may be granted in the same law.
(See Article 3 of the Rome Convention)

 Performers are provided the rights to prevent fixation (recording),

broadcasting and communication to the public of their live performances
without their consent, and the right to prevent reproduction of fixations of
their performances. The rights in respect of broadcasting and
communication to the public of fixations on commercial phonograms may
be in the form of equitable remuneration rather than a right to prevent. This
would be through non-voluntary licensing discussed in the Copyright
module. Due to the personal nature of their creations, some national laws
also grant performers moral rights, which may be exercised to prevent
unreasonable omission of their name, or modifications to their
performances, which present them in an unfavourable light.

 Producers of phonograms are granted the rights to authorize or prohibit

direct and indirect reproduction, importation and distribution of their
phonograms and copies thereof, and the right to equitable remuneration
for broadcasting and communication to the public of phonograms.

 Broadcasting organizations are provided the rights to authorize or prohibit

rebroadcasting, fixation and reproduction of their broadcasts. Under some
laws, additional rights are granted: for example, in the countries of the
European Union, producers of phonograms and performers are granted a
right of rental in respect of phonograms (and, in respect of performers,
audio-visual works), and some countries grant specific rights over cable
transmissions. Under the TRIPS Agreement, likewise, producers of
phonograms (as well as any other right holders in phonograms under
national law) are granted a right of rental.

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As was the case in copyright, the Rome Convention and national laws
contain certain limitations on rights allowing, for example, private use, use of
short excerpts in connection with the reporting of current events, and use for
teaching or scientific research, of protected performances, phonograms, and
broadcasts (Article 15 of the Rome Convention). Many countries allow
practically the same kinds of limitations on related rights as their laws provide
in connection with protection of copyright.
The duration of protection of related rights under the Rome Convention
is 20 years from the end of the year in which (Article 14 of the Rome
Convention):
the performance took place, as regards performances
not incorporated in phonograms;
the fixation (recording) is made, in the case of
phonograms and performances included in phonograms;
the broadcast took place.
You should note that many national laws, which protect related rights,
grant a longer term than the minimal terms contained in the Rome Convention.
In the TRIPS Agreement (in part 2), the rights of performers and
producers of phonograms are to be protected for 50 years from the end of the
year in which the fixation was made or the performance took place, and the
rights of broadcasting organisations for 20 years from the end of the year in
which the broadcasting took place. So this means that countries adhering to the
TRIPS Agreement would have to provide or modify their laws to offer longer
protection than that required by the Rome Convention.
In terms of enforcement of rights, the remedies for infringement or
violation of related rights are, in general, similar to those available to owners of
copyright (Part III of the TRIPS Agreement). These are conservatory or
provisional measures; civil remedies; criminal sanctions; measures to be taken
at the border; and measures, remedies and sanctions against abuses in respect
of technical devices. Please review the material presented in the previous
Copyright module.

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The idea of related rights has also attracted some attention as a way of
protecting the unrecorded cultural expression of many developing countries,
which is part of their folklore. Since it is often through the intervention of
performers that these folkloric expressions are communicated to the public. By
providing related rights protection, developing countries may also provide a
means for protection of the vast, ancient and invaluable cultural expression
which is a metaphor for their own existence and identity, indeed, the essence
of what separates each culture from its neighbors across the frontier or across
the world.
Likewise, protection of producers of phonograms and broadcasting
organizations helps to establish the foundation for national industries capable
of disseminating national cultural expression within the country and, perhaps
more important, in markets outside it. The enormous current popularity of what
is called "world music" demonstrates that such markets exist, but it is not always
the case that the economic benefits from the exploitation of such markets return
to the country where the cultural expressions originated.
In summary, protection of related rights might serve the twin objectives
of preserving national culture and providing a means for commercially
meaningful exploitation of international markets.

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Summary

In this section, you have learned about related rights, also referred to as
neighbouring rights, or more specifically “rights neighbouring on copyright”.
The purpose of related rights is to protect the legal interests of certain persons
or organizations who contribute to making the works available to the public or
those who add creative, technical or organizational skill.

Traditionally, related rights have been granted to three categories of

beneficiaries: performers, producers, and broadcasters. The need for legal
protection of these three groups was identified in the Rome Convention in 1961
which was an attempt to establish international regulations in a new field where
few national laws already existed. In other words, most States would normally
have to draft and enact laws before adhering to the Convention. The Rome
Convention, although imperfect and in need of revision, is still the only
international benchmark for protection in this field. Like copyright, the Rome
Convention and national laws do contain limitations on rights allowing for
private use, use of short excerpts, and use for teaching or scientific research.
The duration of protection of related rights, as stated in the Rome
Convention, is 20 years from the end of the year (1) the recording is made; (2)
the performance took place; (3) the broadcast took place. Conservatory or
provisional measures refer to the remedies for infringement or violation of
related rights. These include civil remedies, criminal sanctions, measures to be
taken at the border and measures, remedies and sanctions against abuses in
respect of technical devices.
The newest treaty in the field of related rights, the WPPT, increased the
scope of protection of the rights of performers and phonogram producers by
venturing into the "digital age" with protections designed as regards the
exploitation of protected works in digital form, including over the Internet.
It is important to note that related rights may also serve to protect the
largely unwritten and unrecorded cultural expression of many developing
countries. Protection of related rights has become part of a much larger picture
and is a necessary precondition to participate in the emerging system of
international trade and investment.
Legislative Texts:

 Rome Convention for the Protection of Performers, Producers of

Phonograms and Broadcasting Organisations

 TRIPS Agreement

 WIPO Performances and Phonograms Treaty (WPPT)

 Brussels Convention Relating to the Distribution of Programme-Carrying

Signals Transmitted by Satellite

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 Study Note: This module should take around 5 hours to study.

Module 4: Trademarks

Objectives

After completing the study of this module you should be able to:

1. List and describe briefly those signs that may serve as trademarks.

2. Describe the two conditions for protection of a trademark.

3. Make a distinction between a collective mark and a certification mark

4. Indicate the exclusive rights of a trademark owner.

5. Describe how well-known marks are protected under the Paris

Convention and the TRIPS Agreement.

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Introduction

Trademarks existed in the ancient world. As long as 3000 years ago, Indian
craftsmen used to engrave their signatures on their artistic creations before sending
them to Iran. Later on, over 100 different Roman pottery marks were in use, including
the FORTIS brand that became so famous that it was copied and counterfeited. With
the flourishing trade in the Middle Ages the use of trademarks increased.

Today trademarks (often abbreviated as TM in English) are in common usage

and most people on the planet could distinguish between the trademarks for the two
soft drinks Pepsi-Cola and Coca-Cola.

The growing importance of trademarks in commercial activities is due to the

increased competition among companies undertaking trade in more than one country.
Trademarks have been used to simplify the identification by consumers of goods or
services, as well as their quality and value. Thus, a trademark may be considered as
a tool of communication used by producers to attract consumers.

In this module you will learn what sort of signs can be used for trademarks and
what characteristics they must have. You will be able to distinguish between a
collective mark and a certification mark. This module will also explain how well-known
or famous marks are given special protection under the Paris Convention and the
TRIPS Agreement.

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Trademarks

I would like you to begin by listening to the first audio segment describing what
trademark means and its characteristics.

Audio Segment 1: So, could you tell me what a trademark actually is?

A trademark is basically a sign that is used to distinguish the goods or

services offered by one undertaking from those offered by another. That’s a
very simplified definition, but it does explain essentially what a trademark is.
What sort of characteristics should a trademark have?

There are basically two main characteristics for a trademark: it must be

distinctive and it should not be deceptive.

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Therefore a formal definition of the term trademark could be:

“A trademark is a sign that individualizes the goods of a given enterprise

and distinguishes them from the goods of its competitors”

A trademark may consist of words, designs, letters, numerals or packaging, slogans,

devices, symbols, etc.

PepsiCo, Inc. ®
The Coca-Cola Company ®

It is necessary to say that a service mark is similar to a trademark, differing only in that
the latter protects goods, while the former protects services. Generally speaking the
term trademarks includes both trademark and service marks.

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The next audio segment will offer you some descriptive examples of trademarks.

Audio Segment 2: Could you now give some examples of the sort of signs that
we can think of?

Well, there are word marks, consisting of words, letters, numerals,

abbreviations or names for instance, surnames. We need only think of a
famous make of car, Ford – named, of course, after Henry Ford, who built the
first one; then there is WH Smith, the booksellers and so on. We find many
names used as trademarks. We also find abbreviations such as IBM, but
trademarks can also be made out of devices or figurative elements, like that of
the Shell oil company.
So when you say device, you mean things like the Shell logo?
Yes, I do but that is just a two-dimensional device, whereas trademarks can
also be three-dimensional – consisting of the packaging of goods or the goods
itself. Then of course the color features of trademarks can also be protected
We are also, especially in recent times, seeing a new kind of trademark coming
on the market. This is the hologram mark. If you look at a credit card for
instance, you will see a small image that changes according to the angle from
which you look at it. There are such things as sound marks: an advertising
jingle can serve as a trademark. There are even smell marks in certain
countries, where a particular scent could be protected as a trademark. So there
is a wide variety of signs that can be used as trademarks, but always on the
same two conditions: the mark must be distinctive and must not be deceptive.

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To sum up, the following examples may help you to know what trademarks (including
service marks) are:

Words: ‘Apple’ for computers; Deutsche Bank for a bank,

Arbitrary or fanciful designations: Coca-Cola, Nikon, Sony, NIKE, Easy Jet.
Names: Ford, Peugeot, Hilton (hotel)
Slogans: ‘Fly me’, for an airline;
Devices: the star for Mercedes Benz, the flying lady for Rolls Royce
Number: the 4711 cologne
Letters: GM, FIAT, VW, KLM
Pictures or symbols: Lacoste (small crocodile)

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In the first audio segment, the speaker also mentioned two of the
characteristics a trademark must have. Firstly it should be distinctive and secondly it
should not be deceptive. To learn more about these two requirements listen to the
next two audio segments.

Audio segment 3: Can you give me an example of how a trademark is

distinctive?

To be distinctive it must by its very nature be able to distinguish goods and

services as I mentioned just now. I think a good example would be the word
“apple”. While “Apple” is a very distinctive trademark for a computer, because
it has absolutely nothing to do with computers, it would not be distinctive for
actual apples. In other words, someone who grows and sells them could not
register the word ‘apple’ as a trademark and protect it, because his
competitors have to be able to use the word to describe their own goods. So
in general terms a trademark is not distinctive if it is descriptive. It is
descriptive if it describes the nature or identity of the goods or services for
which it is used. But a trademark can also be deceptive, namely when it
claims a quality for the goods that they do not have.

Audio segment 4: Could you give me an example of a trademark that might

possibly be deceptive?

Typically a deceptive trademark would be one that says that the goods for
which it is used have certain qualities when they don’t. An example would be
the trademark “Real Leather” for goods that are not made of genuine leather.

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One of the key points raised was that when assessing the distinctiveness of a
sign for a TM it has to be judged together with the goods or services it is to be
associated with.

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Trademarks can also be dependant on images or designs or indeed the
combination of images and words. For example the Logo of the Open University in
the UK is:

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To get a trademark known and respected requires considerable investment and
usually quite a period of time. Therefore, it is in the interest of everyone seeking to use
a trademark to make sure that it is protected as a valuable piece of intellectual property.
Listen to the next audio segment to hear how this protection is achieved.

Audio segment 5: Obviously, companies spend a lot of money on establishing

their trademarks. But how can they prevent other people
from using them?

Well of course they have to rely on trademark laws, but the most common way
of protecting a trademark is to have it registered in the Trademark Register,
and a great many countries make this a condition of trademark protection. It
must first be registered, and once it has been registered it is protected, and its
owner is entitled to prohibit others from using it. Registration is not the only
way of protecting a trademark, however: unregistered trademarks are also
protected in some countries but it is a less reliable form of protection. This is
because an unregistered trademark is not protected until it has acquired
sufficient distinctiveness and a reputation in the marketplace, which can take
considerable time after the initial launch.

So if you have an unregistered trademark that has been around a

long time and everyone knows it, it would in some countries qualify for a
measure of protection?
That’s right. However, if you start marketing your products under a new
trademark that nobody knows, that trademark will be very vulnerable. It is
possible to call on the protection conferred by the laws on unfair competition,
but there too the most important thing is that the mark must have acquired a
reputation.

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Trademarks typically identify individual enterprises as the origin of marked goods or
services. Some countries provide for the registration of collective and certification
marks, which are used to indicate the affiliation of enterprises using the mark, or
which refer to identifiable standards met by the products for which a mark is used.

Collective marks usually belong to a group or association of enterprises. Their use is

reserved to the members of the group or association. A collective mark therefore
distinguishes the goods or services of members of the association from those of
other undertakings.

The function of the collective mark is to inform the public about certain particular
features of the product for which the collective mark is used. An enterprise which
uses the collective mark may, in addition, use its own trademark. Example: in an
association of architects or engineers, a member may use the logo of the association
as well as the logo of the enterprise.

A certificate mark is a mark indicating that the goods or services in connection with
which it is used are certified by the proprietor of the mark in respect of the origin,
mode of manufacture of goods, quality or other characteristics. The certification mark
may only be used in accordance with the defined standards. Example: ISO 9000.

The main difference between collective marks and certification marks is that the
former may be used only by particular enterprises, for example, members of the
association which owns the collective mark, while the latter may be used by anybody
who meets the defined standards.

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Some companies have successfully established, via their trademarks or service
marks, worldwide renown. Subsequently, consumers can, without effort, recognize
and identify their goods and services, their qualities and their features without
referring to the location of the company in question. These trademarks are called
well-known marks or famous marks. Examples: Sony, Versace, Louis Vuitton, etc.

As you know, there may be companies which intend to take unfair advantage of
those well-known marks by creating marks that are similar or that would create
confusion with the well-known ones, thus misleading consumers.

To overcome this problem, the Paris Convention, the TRIPS Agreement, as well as
many national laws, have provided for a special protection of well-known marks.

There is no straightforward definition of a well-known mark. What must be defined,

however, are the factors to be considered in determining whether a mark is well-
known or not. These factors include the degree of knowledge or recognition of the
mark in the relevant sector of the public and the duration, extent and geographical
area of any use of the mark.

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Many companies wish to use their trademark in many different countries, so listen to
the next audio to see if it possible to get worldwide protection for a trademark.

Audio segment 6: Can you secure worldwide protection for a trademark with a
single registration, or do you have to go to each country
separately?

Well, you do have to go to each country separately as, like all intellectual
property rights, trademarks are territorial rights, which basically means that
their protection is obtained by national registration. There are certain regional
registration systems which make for easier registration of the trademarks and
of course, there are also the international treaties, but all these systems
ultimately involve registration in every single country and indeed every single
territory: we should not forget that, while trademarks can be registered in
countries, they can also be registered in customs territories, and there are
some other territories that are not recognized as countries.

You said customs territories; what did you mean?

Well, there are certain territories that are not recognized as States and cannot
for instance, become members of the United Nations. However, there is a
certain administrative structure in those territories and the registration of
trademarks may be possible. A good example would be Hong Kong, which has
a trademark registration system different from that of the People’s Republic of
China. So, if I want to protect my trademark in Hong Kong I have to go through
the local registration procedure.

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So it is necessary to protect the TM in all of the countries that you would wish
to use it in. Unfortunately, there are considerable differences between national
systems.

WIPO has greatly contributed to efforts to make both national and regional
systems for the registration of trademarks more "user-friendly" by harmonizing and
simplifying certain procedures.

The Trademark Law Treaty (TLT) was adopted in 1994, and sets out the
information nationals of one Member State must supply, and what procedures they
must follow, to register trademarks in another Member State's TM Office.

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Summary

“A trademark is a sign that individualizes the goods or services of a given

enterprise and distinguishes them from its competitors.”

This section has covered the basics of trademarks. You have learned that a
trademark is a word, a logo, a number, a letter, a slogan, a sound, a color, or
sometimes even a smell which identifies the source of goods and/or services with
which the trademark is used.

Trademarks are one area of intellectual property and their purpose is to protect
the name of the product rather than the invention or idea behind the product.
Trademarks can be owned by individuals or companies and should be registered at a
governmental agency, which is usually referred to as the Trademarks Office. When a
trademark is used in connection with services, it is sometimes referred to as a “service
mark”.

Generally speaking, trademarks should be distinctive and should neither be

generic nor merely descriptive of the goods or services they represent. For example,
the word “vegetable” cannot be registered as a trademark of a supermarket, since it is
certainly descriptive of items which a supermarket sells. In addition, it cannot be
registered as a trademark for carrots, since it is a generic term for carrots. On the other
hand, the word “vegetable” might well serve as a trademark for bicycles since it has
little or nothing to do with bicycles.

Trademarks should preferably not be geographical or primarily a surname. Thus,

“Paris” cannot serve as a trademark for perfume. In many countries, trademarks which
comprise mere letters and/or numbers (i.e. the proposed trademark cannot be
pronounced as a word or words or just has too few letters) or are surnames are
considered to be indistinct.

In some instances, trademark registration can still be obtained for trademarks

that are merely (i) descriptive, (ii) a surname, (iii) geographic or (iv) indistinct.
Trademarks, also known as brand names, are part of everyday life. The average
person sees or hears more than 1,500 trademarks each day! Just as your own name
identifies and distinguishes you, the main purpose of a trademark is to identify the
source of a product and to distinguish that product from products coming from other
sources. For example, a trademark helps you to choose between Ivory soap and Dial
soap.

It should be mentioned that collective marks and certification marks are also
protected in a large number of countries.

Famous marks or well-known marks have also been granted a special

protection.

Trademarks usually ensure a consistent level of quality – be it good or bad. A

mark helps you to use your experience either to return to a desirable product or service
or to avoid an undesirable one.
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Legislative Texts:

 Paris Convention

 Trademark Law Treaty (TLT)

 TRIPS Agreement

© WIPO/OMPI
Study Note: This section should take around 3 hours to study.

Module 5: Geographical Indications

Objectives

After completing the study of this module you should be able to:

1. Describe in 100 words the nature and purpose of a geographical

indication.

2. Give some examples of geographical indications.

3. Describe in 100 words the difference between the terms

geographical indication, appellation of origin, and designation of
source.

4. Describe different methods of protection for regionally produced

goods or services.

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Introduction

The use of geographical indications is an important method of

indicating the origin of goods and services. One of the aims of their use is to
promote commerce by informing the customer of the origin of the products.
Often this may imply a certain quality, which the customer may be looking for.
They can be used for industrial and agricultural products. Protection of such
indications is on a national basis but there are various international treaties
that assist the protection in a range of countries.

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Geographical Indications

Geographical indications in a broad sense include indications of source,

appellation of origin, and geographical indication (in the strict sense). It should
be pointed out that the Paris Convention does not use in its terminology the
term geographical indication; it rather utilizes the terms, indications of source
and appellations of origin.

An indication of source means any expression or sign used to indicate

that a product or service originates in a country, a region, and a specific place
where the product originated. Example: Made in Japan.

An appellation of origin means the geographical name of a country,

region, specific place which serves to designate a product originating therein,
the characteristic qualities of which are due exclusively or essentially to the
geographical environment, including natural or human factors or both. Example:
Champagne.

Begin by listening to the first audio segment, which explains in broad

terms the meaning of geographical indications.

Audio Segment 1: Can you tell me what a geographical indication is?

Basically, a geographical indication is a notice stating that a given

product originates in a given geographical area. The best known
examples of geographical indications are those used for wines and
spirits. For instance, the geographical indication Champagne is used to
indicate that a special kind of sparkling wine originates in the
Champagne region of France. In the same way, Cognac is used for
brandy from the French region around the town of Cognac. However,
geographical indications are also used for products other than wines
and spirits, such as tobacco from Cuba, or for cheeses such as
Roquefort. They may also be used for industrial products, as Sheffield
is for steel.

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To sum up, “Champagne”, “Cognac”, “Roquefort”, “Chianti”, “Porto”, “Havana”,

and “Tequila” – are some of the well-known examples of names which are
associated throughout the world with products of a certain nature and quality.

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The next audio segment clears up a confusion that often exists between
the terms geographical indication and trademark.

Audio Segment 2: What's the difference between a Geographical

indication and a Trademark?

A trademark is a sign that an individual trader or company uses to distinguish

its own goods or services from the goods or services of competitors. A
geographical indication is used to show that certain products have a certain
regional origin. A geographical indication must be available for use by all the
producers in that region. For instance, Bordeaux and Champagne can be used
by all wine growers in the Bordeaux or Champagne area, but only Moët &
Chandon can call its champagne "Moët & Chandon®" as a trademark for its
champagne.

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I hope that you can now see the benefits that might be gained by using
a geographical indication so the next question you may have is how can they
be protected? The next audio segment explains this.

Audio Segment 3: So how do you protect geographical indications?

Unlike trademarks and patents, there's a wide variety of types of

protection available for geographical indications. They can be
protected either through "sui generis" legislation or decrees; that is
the system used by France and Portugal, for instance. Another
possibility is to have a register of geographical indications.

Another possibility again is to rely on the law against unfair

competition or the tort of "passing off," which basically says that unfair
trade practices should not be used. To use a geographical indication
for a product that does not originate in the region named, would be a
very good example of an unfair trade practice. If protection is sought
under tort law, there are no formalities to be observed such as
registration or decree; the injured party goes to court and puts his
case.

Geographical indications can also be protected by the registration of collective

marks or certification marks. Unlike individual trademarks, collective marks
belong to a group of traders or producers. A certification mark, on the other
hand, doesn't belong to anyone: it is registered on the understanding that
anyone who meets the specified conditions is allowed to use it. For example,
the use of the certification mark for Stilton cheese is restricted to certain farmers
who comply with the rules that have to be observed for the use to be allowed.

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So, there are a variety of different ways in which geographical indications can
be protected depending on the national law and there are different ways in
which this protection can be extended internationally.

Audio Segment 4: You seem to talk quite a bit about ways of getting
protection for a geographical indication inside a
country; is it possible to get protection worldwide?

Well in theory it is, but in practice it is very difficult. Patents and

trademarks have well established application procedures, but the
situation is quite different for geographical indications on account of
the wide variety of protection systems available. Where a local system
does not provide for registration of a geographical indication or the
granting of the right to use an appellation of origin, there is a risk of
problems. A distinction can usually be made between two situations,
one bilateral and the other multilateral. In the bilateral context, one
country enters into an agreement with another for the mutual
protection of their geographical indications. The next stage is the
exchange of lists of the geographical indications concerned, and
protection is then granted on a reciprocal basis. For example, if
France were to have a bilateral agreement with Spain, France would
send its list of geographical indications to Spain and Spain would
send its list to France, whereupon the geographical indications of
each country would be protected by the other.

This works for any two countries that enter into an agreement, but
then not all countries have such two-way agreements. There are also
multilateral agreements, of course, one of which is administered by
WIPO, namely the Lisbon Agreement for the Protection of
Appellations of Origin and their International Registration.

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You may have also come across the term appellation of origin and the
next audio explains the difference between this term and geographical
indication.

Audio Segment 5: Can you tell me the difference between appellations

of origin and geographical indications?

Appellations of origin are specific types of geographical indication. A

geographical indication is a notice stating that a given product comes
from a particular area. For example, the expression "Made in
Switzerland" is a geographical indication: the purchaser knows that
the product has come from there. An appellation of origin is a more
precise geographical indication which specifies that the product in
question has certain qualities and that those qualities are due
essentially or exclusively to its place of origin. The underlying idea is
that certain products owe their special qualities to the place that they
come from. This is very common with agricultural products such as
Roquefort cheese. The people who make Roquefort, say it tastes the
way it does because it is matured in the caves of the Roquefort
region. And it is only because it is matured in that special place that it
eventually acquires the taste for which it is famous.

If you were to use the same method

of cheese making in a different set of
caves you would end up with a
different taste, and the result would
not be Roquefort cheese. The same
applies to the natural conditions that
influence wine growing such as
climate, soils, and so on.

Basically an appellation of origin is a geographical indication that

declares the quality of the goods for which it is used to be derived
essentially or exclusively from the area of production.

Audio Segment 6: So let's go back to your original Champagne

example, would it be an appellation of origin or a
geographical indication?

It would be both. Geographical indication is the broader term, however. To put

it in another way, all appellations of origin are geographical indications, but not
all geographical indications are appellations of origin.
As mentioned at the beginning of the module, another term used to in
the Paris Convention is indication of course which should be distinguished with

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appellation of origin. The former is merely an indication of the geographical

region where the product is made. Whereas an appellation of origin requires
quality link between the product and its area of production.

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Now to finish this module, listen to some more about the relevant
International Protection Systems.

Audio segment 7: Now that we've learned the difference between

appellations of origin and geographical indications,
would you please explain the international protection
systems?

Well in fact there are several, including a very general one provided for
in the Paris Convention, which says that geographical indications must
be protected against any unauthorized use that is misleading. For
appellations of origin there is a special Agreement, administered by
WIPO, known as the Lisbon Agreement for the Protection of
Appellations of Origin and their International Registration. This
international Agreement provides an international registration system
for appellations of origin. A country that operates a national system for
the protection of appellations of origin can apply for international
registration of a given appellation of origin, which is then communicated
to the other States party to the Agreement. This arrangement works
very well, but owing to the limited number of States that have national
systems for appellations of origin, its geographical scope is limited to
the 20 States that are party to it.

There is now another international agreement, the TRIPS Agreement,

which is an integral part of the WTO system. This Agreement requires
that all Members of the World Trade Organization protect geographical
indications, if their unauthorized use would be misleading or would
constitute an act of unfair competition. The TRIPS Agreement provides
for a somewhat higher degree of protection for geographical indications
in the case of wines and spirits, as the geographical indications for such
products have to be protected even in the absence of confusion or
unfair competition.

However, this broader protection is subject to certain exceptions for

geographical indications that have been in use for a long time, or are
used in good faith.

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Summary

A geographical indication is basically a notice stating that a given product

originates in a given geographical area. An appellation of origin is a more
precise form of geographical indicator, which specifies that the product has
qualities that are derived specifically from the fact that it is made in a particular
region.

As stated above a geographical indication is a broad term, which

includes appellation of origin, indication of source, and geographical indication
in strict sense. In the literature, the term geographical indication is generally
used in its broader sense to embody all these terms (appellation of origin,
indication of source, and geographical indication in strict sense.

Geographical indications can be protected nationally either by decree or

by a register.

Internationally they can be protected by reciprocal arrangements

between countries or in the case of appellations of origin by the Lisbon
Agreement. Furthermore the TRIPS Agreement requires all members of the
World Trade Organization to protect geographical indications.

Legislative Texts:

 Lisbon Agreement for the Protection of Appellations of Origin and their

International Registration

 TRIPS Agreement

 Paris Convention for the Protection of Industrial Property

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Study Note: This module should take you a total of about 2 hours to
complete. You can find convenient places for you to pause your studies after
each main section.

Module 6: Industrial Design

Objectives

At the end of this module you will be able to:

1 Explain what an Industrial Design is in about 50 words
2 Explain the differences between Industrial Design protection and trademark
and patent protection
3 List the benefits of Industrial Design protection for
- The owner of the protection
- The consumer of the product
- The economy
4 Describe the way in which an Industrial Design can be protected

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Introduction

This module describes the protection that can be obtained for a form of
Intellectual Property called Industrial Design. The concept of Industrial Design
will be described together with the benefits that can be obtained from
Industrial Design protection.

What is an Industrial Design?

An industrial design is that aspect of a useful article which is

ornamental or aesthetic. It may consist of three-dimensional features such as
the shape or surface of the article, or two-dimensional features such as
patterns, lines or color.

Industrial designs are applied to a wide variety of products of industry

or handicraft: from watches, jewelry, fashion and other luxury items, to
industrial and medical implements; from house ware, furniture and electrical
appliances to vehicles and architectural structures; from practical goods and
textile designs to leisure items, such as toys and pet accessories.

Examples: shapes or forms of chairs, telephones, cars, computers, airplanes,

TV, watches, cameras, etc.

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Audio segment 1: Trademarks are signs often visual in nature that are
affixed on goods or used in connection with the
offering of services, and Patents are used to protect
the inventive aspects of manufactured articles. What
is the difference between trademarks and an
Industrial Design?

An Industrial Design is distinguished from a trademark primarily because it is

constituted by the appearance of a product, which must not necessarily be
distinctive (a prime requirement for a trademark). A trademark although it may
consist of all kinds of visible signs, which may or may not be ornamental, must
always be distinctive, since a trademark must always be capable of
distinguishing the goods and services of one enterprise from another.
Therefore the functions of, and justifications for, protecting industrial designs
and trademarks are quite different.

The object of protection of an industrial design is different from that of a

patent, primarily because an industrial design must relate to the appearance
of the object and which is not determined by technical or functional necessity.
The object of patent protection, in contrast, is determined by the functionality
of an object or process since it must be an ‘invention’.

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Why protect Industrial Designs?

By protecting an industrial design, the owner of the design is given a

right against its unauthorized copying or imitation by third parties. In other
words, the owner of a protected industrial design shall have the right to
prevent third parties not having his consent from making, selling or importing
articles bearing or embodying a design which is a copy of the protected
design.

Since industrial designs are that aspect of an article which make it

aesthetically appealing and attractive, they serve to add to the commercial
value of the product and facilitate its marketing and commercialization.

To be protected under most national laws, an industrial design must

appeal to the eye. Industrial design does not protect any technical features of
the article to which it is applied.

Audio segment 2: Protecting Industrial Design clearly benefits the

owner of the Industrial Design, but does it have other
benefits?

Yes you are right; the owner of an Industrial Design benefits through
the industrial development of her/his products and the protection helps
to ensure a fair return on investment.
However, the consumer and the public at large benefit as well, as
industrial design protection is conducive to fair competition and honest
trade practices, encourages creativity and thus leads to more
aesthetically attractive and diversified products.
Also industrial design protection injects creativity into the industrial and
manufacturing sector, contributes to the expansion of commercial
activities, and enhances the export potential of national products.

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So industrial design protection benefits the owner, the consumer and

the economy in general. Another interesting feature of industrial designs is
that they can be relatively simple and inexpensive to develop and protect.
Therefore they are reasonably accessible to small and medium-sized
enterprises, even to individual artists and craftsmen, in both industrialized and
developing countries.

How can Industrial designs be protected?

In most countries an Industrial Design must be registered in order to be

protected under industrial design law. As a general rule, in order to be
registered, the design must be ‘new’ or ‘original’. Now what constitutes novelty
or originality may differ from country to country, and indeed the registration
process itself varies from country to country. In particular this can involve
whether there is an examination or not as to the form and substance of the
application for the registration of the design, especially to determine novelty or
originality.

An industrial design must be capable of being reproduced by industrial

means (industrial application).

Also it must be possible to apply an industrial design to an article which

may be either two-dimensional or three-dimensional.

In principle, the industrial design must be published either before, at the

time of, or in a stated period after, registration. This depends on the national
law and sometimes on the decision of the applicant.

Furthermore, it should be borne in mind that registration of an industrial

design is not necessarily the only means of protection. It is possible, if certain
conditions are met, to protect industrial designs under copyright law or the law
against unfair competition.

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How long does any protection last?

Again this varies from country to country but the term of protection is
typically for 5 years with the possibility of renewal, which may total, in most
countries, up to a maximum of 15 to 25 years. The minimum duration under
the TRIPS agreement is 10 years.

Audio Segment 3: Is it ever possible for an industrial design to obtain

copyright protection?

Depending on the particular Law and the kind of design, a design may
also be protected as a work of art under copyright law. In some
countries, industrial design and copyright protection can be
cumulative. This means that these two kinds of protection can exist
concurrently. However in other countries, if copyright is allowed, it is
mutually exclusive to industrial design protection. This means that
once the owner chooses one kind, he loses the protection of the
other.
Is there any other protection available for an Industrial design?
Under some circumstances and in some countries, an industrial design
may also be protectable under unfair competition law.
However it is worth stressing that the protection and remedies are
different under the different forms of protection.

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Can you get worldwide protection for an Industrial

Design?

As a general rule, and in accordance with the Paris Convention,

industrial design protection is limited to the country where protection is sought
and granted. If protection is desired in several countries, separate national
applications (or ‘deposits’) must be made and the procedures will normally be
different in each country. However the Hague agreement concerning the
International Deposit of Industrial Design helps to facilitate this process.

Summary of Industrial Design protection

An industrial design is that aspect of a useful article, which is

ornamental or aesthetic. It may consist of three-dimensional features such as
the shape or surface of the article, or two-dimensional features such as
patterns, lines or color. As with other forms of intellectual property it may be
protected.

By protecting an industrial design, the owner is ensured an exclusive

right against its unauthorized copying or imitation by third parties for a period
of time, which is typically for 5 years with the possibility of renewal, up to a
maximum of 15-25 years depending on the particular national law. The TRIPS
provides for protection of a minimum of 10 years.

In most countries an Industrial Design must be registered in order to be

protected under industrial design law and as a general rule in order to be
registered, the design must be ‘new’ or ‘original’. What constitutes its novelty
or originality may differ from country to country and indeed the registration
process itself varies from country to country. In particular this can involve
whether there is an examination or not as to the form and substance of the
application for the registration of the design, especially to determine novelty or
originality.

Also an industrial design must be reproducible by industrial means.

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Legislative Texts:

 Hague Agreement Concerning the International Deposit of

Industrial Designs

 TRIPS Agreement and Paris Convention

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Study Note: This module should take around 5 hours to study. If you have
less time, you could conveniently break your study after audio segment 4.

Module 7: Patents

Objectives

After completing the study of this module you should be able to:

1. Describe in 100 words the purpose of a patent.

2. List the generally recognised conditions for patentability.

3. Enumerate the exclusive rights conferred by a patent.

4. State who is responsible for taking the initiative to enforce a

patent.

5. Explain why a patent is required in any country before you can

sue an infringer in that country.

6. Describe the procedures undergone when a patent application is

filed nationally, regionally or via PCT.

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Introduction

Patents are one of the oldest forms of intellectual property protection

and, as with all forms of protection for intellectual property, the aim of a patent
system is to encourage economic and technological development by
rewarding intellectual creativity. This module will explain to you: the purpose
of a patent, the benefits of obtaining a patent, what sorts of things may be
patented and what the term of protection is for a valid patent. Also explained
will be the nature of the international patent system.

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Patents

What is a patent?
Let's begin by exploring what a patent is. Issued, upon application, by a
government office (commonly the Patent Office), a patent is a document
which describes an invention and creates a legal situation in which the
invention can normally only be exploited with the authorization of the owner of
the patent. In other words, a patent protects an invention, and grants to the
owner the exclusive rights to use his/her invention for a limited period of time.
And an invention may be defined as a new solution to a technical problem.

Example of inventions: band-aid, electric iron, safety pin, ball point pen,
telephone, etc.

Now, let's listen to the next audio segment, which explains the purpose and
history of patent protection.

Audio segment 1: Can you tell me what the purpose of a patent is?

The purpose of a patent is to provide a form of protection for

technological advances. The theory is that patent protection will
provide a reward not only for the creation of an invention, but also for
the development of an invention to the point at which it is
technologically feasible and marketable, and that this type of an
incentive would promote additional creativity and encourage
companies to continue their development of new technology to the
point at which it is marketable, useful to the public and desirable for
the public good.

Audio segment 2: When did the system of patenting start?

It was developed over several centuries. There were patents back in

the 1700s. The system has evolved in the intervening years and we
now have a very modern system. We are still developing the
international system to make it even more modern and to keep it
abreast of technological change and the changing economic system.

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Now listen to the next audio segment to find out how a patent offers
protection and how various sorts of things can not be protected.

Audio segment 3: What sort of things can be patented?

By international agreement, patents are available for any inventions,

whether processes or products, in all areas of technology. A chemical
compound can be patented. A machine, of course, can be patented.
Processes for developing or making things can be patented. However,
there are things that cannot be patented, and are usually excluded
from the scope of patentability. Human genes, for instance, cannot be
patented. Things that already exist in nature, with very few exceptions,
cannot be patented. A perpetual motion machine, which goes against
the laws of nature, cannot be patented unless someone can show it
working. Then, of course, the old rules are set aside and something
new is created. Some inventions may be excluded from the scope of
patentability for public order or morality grounds.

Patents are intended for breakthroughs in technology, but they are

also intended for small technological increments, so the
developments occurring in a given area of technology that are
patentable may be great developments, like the invention of penicillin,
or very small improvements, such as a new lever on a machine that
enables it to work just a little faster. These types of things can be
patented.

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So a patent protects new and useful inventions. You have heard some of the
types of inventions that can be protected by a patent and also some of the
common exceptions. To be patentable, an invention must also meet certain
criteria relating to novelty and other features. The Agreement on Trade
Related Aspects of Intellectual Property Rights (TRIPS Agreement) provides
three criteria and conditions for an invention to be patentable.

Listen to the audio, which lists the three conditions for patentability.

Audio segment 4: You have mentioned some of them. But what, in

short, are the characteristics that an invention has
to have to be patentable?

There are several characteristics that

a patent office will look at to
determine whether the invention is
patentable. At the outset, there has to
be a patent application on file. In most
cases that patent application is
examined by a technical expert to
ensure that it meets the substantive
criteria for patentability.

The first of those criteria is that it has

to be new (novel), meaning that the
invention must never have been
made before, carried out before or
used before.

The second criterion is that there

must have been an inventive step. In
other words, it must represent a
sufficient advance in relation to the
state of the art before it was made to
be considered worth patenting.

The term "non-obvious" is also used: if it were obvious to a person of ordinary

skill in the field concerned, it would not progress to the stage qualifying for
patent protection.

The third criterion is that it needs to be industrially applicable. It has to be

susceptible of use in some way. This is a very broad criterion. Almost anything
can be used, even if it’s in the research stage, but, as I mentioned, that does
not apply to a perpetual motion machine, because it simply will not work.

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In summary therefore, in order to be patentable, an invention must be new,

involve an inventive step, and be capable of industrial application.

Micro-Implantable Pump

The Micro Implantable Pump (MIP) is part of a family of piezo-actuated silicon micropumps
developed by Debiotech for drug delivery application. Despite its dimensions (16x12x1.86 mm.), this
technical device contain 17inventions, which are covered by 44 patents.

List of inventions (titles):

1) Pumping chamber with stopper

2) Volume isolated from pumping chamber
3) Non-return valve with connecting members
4) Valve including membrane which defines upstream and downstream compartments
5) Etching method for obtaining one cavity
6) Curved valve pushed in closed position in the absence of external influence
7) Open valve in absence of second layer
8) A valve equipped with a position detector
9) Movable wall with double-stoppers
10) Self-priming micropump
11) Component glass connection including a gold layer
12) Metal component connection characterized by a single fixation step
13) Filter for micropump
14) Differential adhesion
15) Metal foil
16) Integrated intermediate piece
17) Thick valve

Number of patents:

44 patent granted to protect these inventions.

A courtesy of Debiotech, Lausanne, Switzerland.

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In many countries an invention is regarded as a new solution to a

technological problem. The protection provided under patent law does not
necessarily require that the invention be represented in a physical
embodiment. Moreover it must not fall into any categories of exceptions or
exclusions found within the applicable national law.

There are some general guidelines regarding the types of

things that may or may not be patented that were discussed in Audio
Segment 3. Which were the noted exceptions mentioned in that audio
segment? Listen again if you cannot remember.

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The exceptions mentioned in the audio were:

Things that exist in nature, which are discovered and not invented.
One could not, for example, "patent" the discovery of a new planet.

Machines that defy the laws of nature, such as a perpetual motion

machine.

Other common exclusions under national laws, and the TRIPS

Agreement, are:

Scientific theories or mathematical methods.

Schemes, rules or methods, such as those for doing business,

performing purely mental acts or playing games.

Methods of medical treatment for humans or animals or diagnostics

methods (but the products used in the diagnosis could be patented)

Plants and animals other than micro-organisms, and essentially

biological processes for the production of plants other than non-biological and
microbiological processes.

In order to obtain a patent, an applicant must first file an application for

a patent. Depending on the applicable law(s), the Patent Office may examine
the application to determine whether the criteria, listed above, have been
satisfied, before deciding whether to issue a patent. As mentioned above
there may be excluded categories, which could cause the patent application to
fail. Examples of such categories can be found in several national legislations.

The application for patent must also comply with some other formalities.
As a general rule, a patent will be granted to the first person to file a patent
application. This is called the ‘first-to-file’ system. That is why the filing date of
an application for patent is very important.

An Office may also examine the application to determine whether it

sufficiently discloses the invention such that someone skilled in the area or
field with which the invention is concerned could make or use the invention.
Providing an adequate written description to enable someone to practice the
invention is generally what the patent applicant must give in exchange for
receiving the benefits conferred by a patent.

The Paris Convention for the Protection of Industrial Property (1883),

which is the oldest Convention administered by WIPO dealing with industrial
property, has provided for ‘the right of priority’. This right means that, on the
basis of a regular first application filed in one of the Contracting States, the
applicant may, within a period of 12 months, apply for protection in any of the
other Contracting States. These later applications will then be regarded as if

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they had been filed on the same day as the first application. In other words,
these later applications will have priority over applications which may have
been filed during the same period of time by other persons for the same
invention.

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You may be asking what benefits a patent confers, particularly if the invention
has to be disclosed. In general the answer is that for the period of protection
the patent holder may exclude others from making, using, offering for sale,
selling, and importing the invention claimed in the patent. However, the patent
owner has the right to assign (sell) or to license the patent. In other words, the
patent owner may if he/she so wishes, transfer his/her exclusive rights to
another person through the conclusion of licensing contracts.

Listen to the next audio clip for more on this subject.

Audio segment 5: Can you then summarize the advantages of taking

out a patent?

The advantages of taking out a patent are very specifically and technically the
fact that the owner of a patent can exclude all others in the territory covered
by the patent from making, using, selling, offering for sale or importing the
invention. That does not necessarily give the inventor or the owner of the
patent the right to use the invention, if for instance such use would be illegal –
as the use of a gambling machine would once have been – but the owner of
the patent can prevent others from marketing and profiting from the invention
for a period of years.

The term of a patent is typically 20 years from the date on which the
application is filed, and what that does is give the developer of the technology
the right to have it to himself for a certain number of years in exchange for full
disclosure to the public of how to use it. When the patent rights expire, the
technology becomes public property, and the public is free to use it for their
own good.

You mentioned 20 years. Is that the same for every country in the
world?
Yes. It is now provided by international treaty that the term has to be at least
20 years from the filing date of the patent application.

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There are certain situations where the exclusive rights of a patent owner can
be used without his/her authorization.

In certain cases, in fact, the use of the patented invention may be authorized
to a third party either by the competent court or by a Patent Office (depending
on the law of the country) through a regime called compulsory licensing. As
provided under the Paris Convention and the TRIPS Agreement, the regime of
compulsory licensing prevents the abuses which might result from the
exclusive rights conferred by a patent. This regime may also be applied in
case of non-use of the patented invention within a prescribed period
(generally four years from the filing date of application for patent, or three
years from the issue of patent).

As provided under the TRIPS Agreement (Article 31), a number of conditions

and circumstances must be respected before granting a compulsory license to
a third party.

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In one sense a patent is a deal between the public and the patent
holder. With the grant of a patent, which is premised upon satisfying all the
conditions for patentability as discussed above, the patent holder receives the
right to prevent anyone else from practicing the invention claimed in the patent.
In exchange, the government, by requiring compliance with the conditions for
patentability and giving patent protection for a fixed term, ensures that the
information regarding the invention is publicly disclosed, and the invention
itself is available for anyone’s use after the expiration of the patent. This
period is typically 20 years, measured from the date of filing of the patent
application.

In all the countries in which a patent holder chooses to patent the

claimed invention, the issue of enforcement would become important after
the grant has been issued. Enforcement of patents is a large subject, for
which this course can merely point out the guiding principles involved.

To begin with, it is the patent holder that must seize the initiative in the
face of potential infringement. Detection of potential or actual infringements,
and bringing these to the infringer's attention rests exclusively with the patent
holder.

In a majority of situations, a polite letter giving notice of the existence of

the patent is sent. Carrying the implication that a lawsuit might follow, such
letters often prove very successful, leading to either a suppression of
infringement or a conclusion of a successful licensing arrangement.

There are, however, cases in which no mutually advantageous

negotiated solution can be found, even after lengthy attempts. During the
course of an infringement action, in the pre-trial phase, negotiations may still
take place, often through use of a conciliator or arbitrator. Interestingly,
settlements often include the earlier-mentioned license.

As was said before, the issue of enforcement is deep and complex; you
may want to pursue this subject further within the context of the domestic law
of the country where you are situated.

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In order to have protection in lots of different countries, a patent is

required in each of them. So you may wonder if it is possible to obtain a
worldwide patent. Listen to the audio to find the answer.

Audio segment 6: Is it possible to get a worldwide patent?

In the current state of the international patent system, no. There is no

one patent that covers every country in the world, or even a large
number of the countries of the world. The patent system is still a
territorial system; in order to be protected in a particular country, you
have to be granted a patent in that country. Now, with the
globalization of the world economy, the world is moving towards a
more international system: we have the Patent Cooperation Treaty,
which provides for the filing of a single international application that
can become a multitude of national applications, not actual patents
but applications, and they are then examined in each of the countries
designated.

There are certain regional systems, like that of the European Patent
Organization, under which a single examination, if successful, results
in a bundle of national patents. There has been some discussion in
Europe about having a single European patent – one that would cover
all the countries of the European Union, although there are great
difficulties with that, as you can imagine. There is still no such thing as
a single world patent, nor are there any plans for one, because there
are a great many difficulties with that too, but discussions are going
on to find ways of bringing down the cost of obtaining patent
protection worldwide. Among other things there is the cost of all the
examinations of the same invention that have to be conducted in
different countries under present arrangements, the cost of translation
and the cost of maintaining a patent, as to keep a patent in force one
generally has to pay an annual fee, which can be quite substantial.

And you would pay that annual fee in every country in which you
wanted the patent to operate?
That’s right. If you have patents in ten countries, you have to pay the
maintenance fees in each of those ten countries, because if ever you
failed to pay in one of them, your patent would lapse and you would
lose your patent protection.

In that country?
That’s right.

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The short answer therefore is "no". However, there is an international

agreement administered by WIPO called the Patent Cooperation
Treaty (PCT), for the filing, searching, publication and examination of
international applications. The PCT makes it easier to obtain patents
in the Contracting States by providing for the filing of one international
application, which may be subsequently prosecuted in the different
designated national or regional Offices of States party to the PCT. (A
subsequent module on the WIPO International Registration Systems
covers the PCT and two other international agreements in more
depth). However, even under the PCT, the granting of patents is left
to those designated Offices.

You will learn more about this treaty in the WIPO Treaties module of
this course.

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Finally it is worth mentioning that patent protection is only one way to

protect an invention. Listen to the audio to find out another means of
protection.

Audio segment 7: Are there any other ways of protecting an invention

if you don't want to take out a patent, for whatever
reason?

The patent is the most effective way of protecting an invention, but, as

I said before, patent rights are granted in return for the inventor’s full
disclosure of the technology to the public. Another effective way of
obtaining protection is to keep the technology secret, and to rely on
what we refer to as trade secrets, to keep information concerning the
invention confidential. The difficulty of that method is that, once the
product is put on the market and can be dismantled, the secrets can
be learned merely by looking at the product, and the trade secret
protection is lost. With a patent, it doesn’t matter whether someone
else knows how to make your product, indeed they will know simply
from reading your patent application. So, no matter how public the
information is, if you have a patent you will be protected. Trade secret
protection is still available, however, and is very suitable in particular,
for what is referred to as the know-how, namely the technical
expertise required to use a given technology in the most effective way.
And very often, the technology itself will not be protected by patents,
because it forms part of the expertise of people who are skilled in the
art, and keeping the know-how as a trade secret is a way of protecting
your technology.

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Summary

This module has introduced the patent area of intellectual property.

Patents are one of the oldest forms of intellectual property protection and, as
with all forms of protection for intellectual property, the aim of a patent system
is to encourage economic development by rewarding intellectual creativity.
This module explained that the aim of a patent is to encourage economic and
technological development by giving reward to intellectual creativity.

Under patent protection, both new creations and the further

development of existing ones are covered. A breakthrough in science like the
invention of penicillin is as equally important and protected as a new lever on
a machine invented to make the machine run faster. Patents protect
inventions and in general, an invention may be defined as a new solution to a
technical problem. The solution is the ‘idea’ and protection under patent law
does not require that the invention be represented in a physical embodiment.
However, there are things that cannot be patented. These include; things
discovered in nature and machines that defy the laws of nature, such as a
perpetual motion machine. Other exclusions, which are commonly set out
within the applicable law, are scientific theories and mathematical methods;
schemes, rules and methods for doing business; and methods of treatment for
human or animals or diagnostic methods.

Once a patent application is on file, there are two general approaches:

in some countries it is reviewed only as to formalities, while other jurisdictions
also examine the application substantively by a technical expert to ensure that
it meets the requirements of patentability. Characteristics that an invention
must have are:

- it must be new or novel;

- it must involve an inventive step,

- it must be capable of industrial application.

In short, a patent is a deal between the public and the inventor. The
state, by giving protection for a fixed term ensures that the inventor gets
rewarded. After expiration, which is typically 20 years after the date of filing of
the application of the patent, the invention becomes available for anyone’s
use. The enforcement of one's patent is a large subject, and it is the patent
holder that must negotiate or litigate the infringement of their rights. Since
there is no such thing as worldwide protection, an inventor must pay filing fees
and maintenance fees to each country where he or she wishes to be
protected.

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Legislative Texts:
 Paris Convention for the Protection of Industrial Property

 Patent Cooperation Treaty (PCT)

 Agreement on Trade Related Aspects of Intellectual Property Rights

(TRIPS Agreement)

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Study Note: This module should take around 6 hours to study. If you have less
time, you could conveniently break your study just before the section on PCT,
which is about halfway through the module.

Module 8: WIPO Administered Treaties on

International Registration Systems and the PCT
Trademarks, Industrial Designs and Patents

Objectives

After completing the study of this module you should be able to:

1. List the systems of international registration administered by

WIPO.

2. Draw a diagram explaining the process how an applicant can use

the Madrid system to get protection for a trademark in different
countries.

3. Describe the role of the WIPO International Bureau in the

trademark registration process.

4. Explain what happens if the TM is refused in the home country

after the international registration of the mark.

5. State how long a trademark can be protected for.

6. List the benefits of protecting an industrial design internationally.

7. Explain the process of International protection offered to industrial

design by the Hague Agreement.

8. Explain in 100 words the purpose of the Patent Cooperation

Treaty (PCT).

9. Describe in around 200 words the benefits of the PCT.

10. Draw a diagram of the process involved in using the PCT.

11. Explain in 200 words the role of WIPO in the PCT.

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Introduction

Amongst the many roles that WIPO carries out to support the worldwide
promotion of intellectual property rights, is its role in the administration of
specific treaties and conventions. The international protection for trademarks,
industrial designs and appellations of origin is carried out through three
registration systems: The Madrid System for trademarks, the Hague System for
industrial designs, and the Lisbon Agreement for the protection of appellations
of origin. The first part of this module will focus on the role of WIPO in the
administration of protection systems for trademarks and industrial designs.
The second part of this module will deal with the Patent Cooperation
Treaty (PCT). This is the leading treaty administered by WIPO, in terms of
generated revenue, which facilitates the application for patents in different
countries.
This module starts with a description of the international registration
systems.

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Registration Systems

First, listen to the following audio segment.

Audio Segment 1: How many different systems of international

registration does WIPO oversee?

There are actually three systems. There is what is known as the Madrid
system, which is for the international registration of trademarks and is
governed by two treaties which complement each other. They are the
Madrid Agreement and the Madrid Protocol. Then there is the
system of international registration or more correctly international
deposit of industrial designs, which is governed by the Hague
Agreement. The third is the system of international registration of
appellations of origin, under the Lisbon Agreement. The last-
mentioned, however, does not really affect private owners of industrial
property rights, as appellations are registered at the request of
governments (this module does not cover this Agreement). As a result,
most of WIPO’s activities have to do with the protection of trademarks
and industrial designs and patents through international registration.

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The Madrid System: International Registration of

Trademarks

Now listen to the next audio to hear how the Madrid System assists the
protection of trademarks internationally.

Audio Segment 2: Can an applicant obtain an international trademark

from the Madrid System?

To answer that question, I should first explain how the international

system for the registration of trademarks works. Somebody files an
international application with the International Bureau of WIPO in
Geneva, and in it they designate the countries that are party to the
treaties in which they want the mark to be protected. We register the
mark and then pass it on to the countries that have been designated,
which then have the possibility of refusing protection. They would
normally examine it as though it were an application filed with them
directly and apply their normal national criteria accordingly. If they
refuse it, the refusal is notified to us and entered against the mark for
that country in the International Register. So in other words a person
does secure international registration, but whether or not it is protected
in a given country is determined by that country.

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Figure 1 describes the process of international registration for trademarks.

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Listen to the next audio to learn more about the role of the International
Bureau of WIPO. Please click here for the list of countries party to the Madrid Agreement
and Protocol.

Audio Segment 3: So the International Bureau has the role of

receiving international applications and then passing
them on to the designated countries. Does it
actually do any examination of the trademarks?

It doesn’t examine as to substance. There are basically two substantive

questions which are investigated by national offices. One is whether
the mark is capable of functioning as a trademark, in other words
whether it is capable of distinguishing goods and services, and the
other is whether it conflicts with a mark already protected in someone
else's name. And countries do actually differ very much in their
approach to this examination. Some conduct a full examination and
some do not. The International Bureau doesn’t do any examination of
these substantive aspects, but rather leaves them entirely to the laws
of the countries concerned. It does however examine first of all whether
the application complies with the formal requirements set forth in the
treaties and regulations, mainly to make sure that the necessary
elements of a trademark application are there. It also carries out an
examination of the lists of protected goods and services that has to
accompany any trademark application. Those goods and services
should be classified according to an international classification, known
as the Nice Classification, and the International Bureau has general
responsibility for the consistent application of the Classification. So the
International Bureau does conduct an examination as to form and an
examination of the classification of goods and services, which means
that those tasks do not have to be carried out by the Receiving Offices,
because they know that they are receiving properly filed and properly
classified applications.
So the role of the International Bureau of WIPO is to receive applications
for the protection of trademarks in a number of designated countries. WIPO
checks to see if the application has been made in a correct manner and, if so,
registers the mark, and forwards it to the designated countries. Examination as
to substance may be done in the designated countries if their laws so prescribe.

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Now listen to the next two audio segments to learn the importance of
obtaining protection in the ‘home country’ of the applicant.

Audio Segment 4: Under the Madrid system, is it necessary for a

person to register his trademark in, say, his home
country before he can file an international application?

Yes, this is a fundamental requirement of the international system of

registration. When the system started, over a hundred years ago, it was
really intended to be a means of extending the protection provided by
a domestic registration to the other countries of the Madrid Union. The
system has become rather more sophisticated and more complex since
then, but the principle continues that you must in the first instance,
either have a registration in your country of origin or, if the international
application is made exclusively under the Protocol, at least have filed
an application for registration in your home country.

Audio Segment 5: You use the international system by applying for a

Madrid registration, but after you have filed your
international application, the national one is refused.
What happens in that situation?

If the national application is refused, that will of course have the

corresponding effect on the international registration. There is a
dependent relationship between the national protection and the
international protection for a period of five years. But in the case that
you mention, where the national application is refused, presumably
very soon after the international registration is applied for and therefore,
within the five-year period, this would result in the international
registration being cancelled. If the refusal at the national level is only
partial, then the cancellation would be correspondingly partial.

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To find out the duration for which a trademark can be protected

internationally, listen to the audio.

Audio Segment 6: How long can you protect a trademark for?

You can actually protect it indefinitely, but in the international system

and indeed in national systems too you have to renew it from time to
time. An international registration is renewed by paying the fees again
every ten years, and I think ten years is becoming a standard term at
the national level, but, as I say, there is no limit to the number of times
that it can be renewed.

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So the Madrid system is a useful way in which users of trademarks can

apply for protection in a number of countries at the same time. However, the
decision whether or not to refuse protection to a particular trademark in a
particular country depends on the national system concerned. If protection is
not refused, it can be extended indefinitely.

The system of international registration of marks offers several

advantages for trademark owners. After registering the mark, or filing an
application for registration, with the Office of origin, a trademark owner has only
to file one application, in one language, to one office, and pay fees to one office.
This is done instead of filing separate applications in trademark Offices in
various countries, in different languages, and instead of paying a separate fee
in each Office. Similar advantages exist when the registration has to be
renewed or modified.

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The Hague System: International Protection of

Industrial Designs

As mentioned in the introduction to this module, the Hague System of

protection deals with the international protection of industrial designs.”
Can you get worldwide protection for an Industrial Design?
As a general rule, industrial design protection is limited to the country
where protection is sought and granted. If protection is desired in several
countries, separate national applications (or ‘deposits’) must be made and the
procedures will normally be different in each country. However the Hague
agreement concerning the International Deposit of Industrial Design helps to
facilitate this process.
What is the aim of the international deposit of industrial
designs?

The main aim of the Hague System is to enable protection to be

obtained for one or more industrial designs in a number of countries through a
single deposit filed with the International Bureau of WIPO. In other words, the
Hague Agreement, which is administered by WIPO, allows nationals and
residents of, or companies established in a State party to the agreement, to
obtain industrial design protection in a number of countries also party to the
agreement through a simple procedure. A single international deposit, in one
language (English or French), involving a single payment and filed with one
office is all that is needed.

The office can be the International Bureau of WIPO or possibly the national
office of the contracting State if such State so permits. An international deposit
does not require any national deposit.
Once the industrial design is the subject of such an international deposit, it
enjoys the protection that would be obtained in each of the countries listed, as
if the applicant had applied directly to that country, provided that particular
country does not explicitly refuse protection.

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As with all intellectual property there are advantages to ensuring its

protection and the next audio gives some of the benefits of protecting industrial
designs.
What are the advantages of the Hague System?
The system gives the owner of an industrial design the possibility to have
his design protected in several countries by simply filing one application with
the International Bureau of WIPO, in one language, with one set of fees in one
currency (Swiss francs). The Hague system simplifies greatly also the
subsequent management of the industrial design, since it is possible to record
subsequent changes or to renew the deposit through a simple single procedural
step with the International Bureau of WIPO.

Audio Segment 7: Can you summarize what advantages there are in

acquiring industrial design protection?

Well, as with all industrial property rights, you acquire the exclusive
right to the use of the design. In other words, the designer of the new-
look corkscrew that I have just described, or the creator of a new
furniture style or a new range of fabrics, or garments made out of those
fabrics, acquires the exclusive right to make and sell them, in just the
same way as a person with a patent has the exclusive right to work that
patent.
A patent lasts for a fixed period of time. Is it the same for an industrial
design registration?
Yes, it lasts for a fixed period of time, but the length of the period is not
yet uniform. I think the shortest period in any country is probably ten
years. Periods of 15 and 20 years are common, and the new European
Community Directive sets a term of 25 years, so that will become the
standard term in the countries in the European Union once the Directive
is implemented.

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To complete this section on industrial designs listen to the next audio,

which explains how the Hague System operates in this area of intellectual
property.

Audio Segment 8: Is there such a thing as worldwide industrial design

protection under the Hague Agreement?

It’s not exactly worldwide, but the grant of international registration

does give you protection in a number of countries. It works in the same
way as the Madrid system in that you file an international application
which is entered in the International Register, published by the
International Bureau and notified to the countries concerned, who then
have the right to grant or refuse protection. In fact, as far as the Hague
Agreement is concerned, there are very few countries that actually
examine applications, and consequently very, very few refusals. This
is in sharp contrast to the position regarding trademarks.
Another difference between the protection of industrial designs under
the Hague Agreement and the protection of marks under the Madrid
Agreement and Protocol is that you don’t need to start with protection
in the country of origin. So for example a designer in France can make
an international deposit and through it secure protection in France as
well as in Switzerland, Italy, the Benelux countries and Spain, for
instance.

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Partial Summary: The Madrid and Hague Systems of

Protection and Registration

So far in this module, you have heard about WIPO’s two Agreements
regarding the international registration systems for the protection of trademarks
and industrial designs. The role of WIPO in this process is to serve as the
administrator that provides the international systems of registration, which is to
say, by facilitating the application process and publishing a Gazette (Madrid) or
Bulletin (Hague) of actions taken within the respective system's procedures.
The Madrid System was created over in 1891 and its purpose is to
encourage and facilitate the international registration of trademarks. As an
individual wants protection of his trademark, he must first register it in his
country of origin. If he wishes to extend that protection into other countries, one
available route is provided by the Member States of the Madrid Agreement and
/ or Protocol. There is a dependency for the first five years, wherein if the
trademark is refused ex officio or via the opposition of a third party in the country
of origin, but had been accepted in the other designated countries, the
international protection will be cancelled. After the five-year period passes, the
international registrations would survive a home country cancellation.
International trademark protection is indefinite; however, it must be renewed
every ten years. There is no limit to the number of times a trademark is renewed.

Authorization: SWATCH Group Ltd.

The Hague Agreement created the system of international deposit of industrial
designs. It works in the same way as the Madrid system in that you file an
international application which is entered in the International Register,
published by the International Bureau and notified to the countries concerned,
who then have the right to grant or refuse protection. In fact, as far as the Hague
Agreement is concerned, there are very few countries that actually examine
applications, and consequently, very few refusals. This is in sharp contrast to
the position regarding trademarks.

Another difference between the protection of industrial designs under the

Hague Agreement and the protection of marks under the Madrid Agreement
and Protocol is that you don’t need to start with protection in the country of
origin. So for example a designer in France can make an international deposit
and through it secure protection in France as well as in Switzerland, Italy, the
Benelux countries and Spain, for instance.

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The Patent Cooperation Treaty

The national patent system requires the filing of individual patent

applications for each country for which patent protection is sought. In other
words, the principle of territoriality will apply.
In order to overcome some of these problems, the Patent Cooperation
Treaty (PCT) was adopted in 1970. The PCT provides a simplified procedure
for an inventor or applicant to apply for, and eventually obtain, patents in a large
number of countries.
The PCT has a principal objective: to simplify, make more effective and
economical, in the interests of the users of the patent system and the Offices
that have the responsibility for administering it, the previous or traditional
methods of applying for patent protection for inventions in several countries.
Please click here for a list of PCT Contracting States

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Listen to the audio for a more complete description of the purpose of the
PCT.

Audio Segment 9: Could you explain to me, in general terms, the

purpose and objectives of the Patent Cooperation
Treaty?

The Patent Cooperation Treaty is a treaty that provides for the filing of
applications with a view to obtaining patent protection in a large
number of countries. It provides a simplified procedure for an inventor
or applicant to apply for and eventually to obtain a patent. One of its
other aims is to promote the exchange of technical information
contained in patent documents among the countries concerned and
also within the scientific community concerned, that is, the inventors
and industry working in the relevant field.

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So in addition to simplifying the process of getting patents, it is an aim

of the PCT to disseminate more effectively the technical knowledge contained
in patent documentation. It is worth stressing however that the PCT system
does not provide for the grant of worldwide patents. Hear this explained as the
response in this next audio.

Audio Segment 10: Does that mean that the PCT actually grants a
worldwide patent to an applicant?

No. Two points should be made here. First, it is not the PCT that grants patents;
it is in fact the national offices at the end of the process, each of which, as far
as it is concerned, grants a patent based on the PCT application. And secondly,
there is no such thing as a worldwide patent. The PCT doesn’t provide for this
at all, and the result of the procedure that I mentioned earlier, will in fact be a
number of regional and/or national patents. Maybe there will be only one, if the
applicant completes the procedure in only one office, but there could be 10, 25,
50 or as many as the applicant eventually wishes to obtain.

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In the next segment the speaker describes the process that occurs when
an applicant applies for patent protection in a series of designated countries.

Audio Segment 11: Could you give a typical example of the procedure
that an applicant would go through using the Patent
Cooperation Treaty?

First he would have to file an application with a receiving office, usually

in his home country. That application would then pass through several stages.
The first general stage, which is called the international phase, includes four
main steps: the first is the filing, the second is the international search, then
there is the international publication and after that the international preliminary
examination. I should point out that the last step, examination, is only reached
if the applicant expressly asks for it, but in our experience, more than 80 per
cent proceed up to this point. So we can really say that in a typical case, a PCT
application will pass through all four steps in the international phase. Then, but
only if the applicant wishes to go ahead with his application, there is the national
phase. There is a national phase for every one of the offices before which the
applicant will have to complete the patenting procedure. That could mean either
just one, or two or five or ten offices, including both national and regional offices,
where the applicant would have designated certain countries, but for the
purpose of obtaining a regional patent.

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European Patent
As mentioned in this discussion, the second general stage of the PCT
procedure is the national phase. In the national phase, the applicant could
actually process his or her international application before a national or
regional patent Office. The European Patent Office is one such example of a
regional Office.

The European Patent Office is established by virtue of the European

Patent Convention. Article 2(1) of the European Patent Convention provides
that patents granted by virtue of the Convention "shall be called European
patents." Article 2(2) further provides that the "European patent shall, in each
of the Contracting States for which it is granted, have the effect of and be
subject to the same conditions as a national patent granted by that State,
unless otherwise provided in this Convention."

Please click here for a list of EPC Contracting States.

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So the operation of the PCT requires a sequence of operations and the next
audio explains where these take place.

Audio segment 12: You mentioned three or four steps in the

international phase, which involve searches and
other things. Where does this actually happen? Is it
done in Geneva?

No. Most of what happens in the PCT process starts somewhere else,
and continues somewhere else again. First, the applicant would file the
application with a so-called receiving Office. That is usually the office
in the home country of the applicant. It can however be another national
office or a regional office and it can also be the International Bureau in
Geneva. So, it can happen that the International Bureau gets involved
at this very early stage, but it is not very common.
As for the second step, that is the international search, at present
there are only 12 (updated to July 2004 ) offices specially appointed
by the PCT Assembly that are entitled to carry out international
searches. These offices, called International Search Authorities, have
been selected according to certain criteria, and they render services to
applicants under the PCT system, depending, in the case of some of
them, on the language in which they work. So they are not all available
to all PCT applicants who file PCT applications. For example, the
Japanese Patent Office works only in Japanese, so it is not available
to applicants who file their applications in English, French, or German.
The same is true of the Spanish Patent and Trademark Office, which
works only in Spanish. Some other offices on the other hand work in
four, five or even six different languages.
The next step, publication, is handled entirely by the International
Bureau in Geneva. This is actually the only PCT function for which
WIPO is exclusively responsible. The Organization publishes all PCT
applications, wherever they come from and in whatever language they
have been filed.
The fourth step is international preliminary examination, and for that
WIPO would usually go back to the office that carried out the
international search. I say usually because applicants can and in some
cases do switch to another office, as they are given that amount of
flexibility. And at the end of the international phase, or rather when
moving into the national phase – and this is something else that the
International Bureau is not involved in - the applicant has to approach
each of the offices directly and provide the necessary documentation.
One could say, however that the International Bureau has some
behind-the-scenes involvement in the overall procedure, because it is
responsible for making certain documents available to offices, to the
applicant and so on, and for communicating certain documents at
certain times under the provisions of the Treaty. So, even though the
International Bureau does not actually carry out much of the
substantive work, it is nonetheless involved somehow in this phase,

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whatever happens to the application. It relies on the offices concerned

to provide it with the documents, and then acts on them as they come
in.

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As stated in the introduction, the primary goal of the PCT is to simplify

the procedures involved in getting patents in a number of different countries.
One further benefit to an applicant is the decision as to whether to proceed in
any particular country or delay that procedure compared with the traditional
patent system.

Audio segment 13: Okay, so what advantages are there for the
individual or company applying for a patent under the
Patent Cooperation Treaty?

I would say the main advantage for the applicant is that, by filing one
application at one patent office, which will in most cases be his home
patent office, he will obtain an international filing date for his application,
and that filing date will have the effect of a regular national filing in every
country he has designated. So the mandatory requirements that the
applicant has to comply with are very few – such as making a specific
request for the filing of a PCT application, stating his nationality or
residence, so as to confirm that he is eligible to file such an application,
and filing of description and claims.
Another advantage certainly worth mentioning is that the applicant, by
filing his application, basically gains time, indeed quite a lot of time,
before he has to decide whether to go ahead with his application. The
time gained by this process could be about a year and a half, which is
what making use of the entire PCT procedure to the fullest extent
possible would allow.

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In addition there are advantages for the national patent Offices. Namely:
Patent Offices can handle more patent applications since those
via the PCT are easier to process due, in particular, to the fact
that verification as to compliance with formal requirements has
generally been checked already during the international phase.
Patent Offices can save certain publishing costs. If the
international application has been published in the official
language of a country, it can forego publication altogether.
Countries having a different official language may limit
themselves to publishing only a translation of the abstract,
which accompanies international applications. Copies of the
full text of the international application could be supplied upon
request to interested parties.
The PCT does not affect the revenue of designated Offices
unless they decide voluntarily to give a rebate on national fees
in view of the savings they make through the PCT and in order
to make the use of the international application route more
attractive to the applicant. Annual or renewal fees, the most
profitable source of revenue for most Offices, are not affected
by the PCT.
Examining Patent Offices benefit, in respect of most
applications originating from abroad, from an international
search report and an international preliminary examination
report.
Non-examining Offices receive applications already examined
as to form, accompanied by international search reports and
generally by international preliminary examination reports. This
will put an Office, and the national industry affected by a patent
and/or interested in licensing, in a much better position
compared to the traditional system of filing national or regional
applications.

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Summary

The Patent Cooperation Treaty provides a simplified procedure for an

inventor or applicant to apply for and eventually obtain patents in a large
number of countries. In addition it promotes and facilitates the exchange of
technical information contained in patent documents to industries and workers
in the relevant field.

The advantage to an applicant in using the PCT is that by filing one

application at one patent office, in one language, he will obtain an
international filing date, and that filing date will have effect in each of the
designated countries. In addition the PCT provides a period of time in which
the applicant can decide whether to proceed in each of the designated
countries.

The main role of WIPO in the PCT process is to facilitate the treaty by
communicating the PCT request to the designated countries and publishing all
PCT applications.

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The way in which a PCT application is processed is shown in the

following figure:

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Legislative Texts:
 Madrid Agreement Concerning the International Registration of Marks

 Protocol Relating to the Madrid Agreement Concerning the International

Registration of Marks

 Hague Agreement Concerning the International Deposit of Industrial

Designs

 Nice Agreement Concerning the International Classification of Goods

and Services for the Purposes of the Registration of Marks

 Patent Cooperation Treaty (PCT).

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Study note: This module should take around 6 hours to study.

Module 9: Unfair competition

Objectives

After completing the study of this module you should be able to:

1. Give examples of unfair competition

2. List and explain the major categories of unfair competition

3. Explain some of the variations in different countries’ approach to unfair

competition

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Introduction

This module is concerned with the concept of unfair competition. The

module will explain what sorts of acts could be considered as unfair competition
and explain the remedies that can be used, together with the obligations countries
must fulfill, to ensure fairness in competition. The idea of unfair competition has
been around for some time and was mentioned as part of intellectual property
protection as early as 1900 in the Brussels revision of the Paris Convention.

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What is Unfair Competition?

Article 10bis (2) of the Paris Convention defines an act of unfair

competition as “any act of competition contrary to honest practices in industrial or
commercial matters”.

Article 10bis (3) continues specifying which acts, in particular, shall

be prohibited:

1. “all acts of such a nature as to create confusion, by any means, with the
establishment, the goods, or the industrial or commercial activities, of a
competitor;

2. false allegations in the course of trade of such a nature as to discredit

the establishment, the goods, or the industrial or commercial activities,
of a competitor;

3. indications or allegations the use of which in the course of trade is liable

to mislead the public as to the nature, the manufacturing process, the
characteristics, the suitability for their purpose, or the quantity, of the
goods."

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Therefore unfair competition is at its simplest dishonest practice. Of course

the concept of dishonest practice is a little difficult to precisely define and has to
be defined in a country’s national law. These national laws set the commercial and
legal environment, ensure fairness in competition, and, as a result, complement
the protection of intellectual property rights.

The need for protection

Experience has shown that there is little hope of fairness in competition

being achieved solely by the free play of market forces. In theory, consumers, in
their role as referees of economic play could deter dishonest entrepreneurs by
disregarding their goods or services and favoring those of honest competitors.
Reality, however, is different. As an economic situation becomes more complex,
consumers become less able to act as referees. Often they are not even in a
position to detect by themselves acts of unfair competition, let alone react
accordingly. Indeed it is the consumer who—along with the honest competitor—
has to be protected against unfair competition.

Fair play in the marketplace cannot be ensured only by the protection of

industrial property rights. A wide range of unfair acts, such as misleading
advertising and the violation of trade secrets are usually not dealt with by the
specific laws on industrial property. Unfair competition law is therefore necessary
either to supplement the laws on industrial property or to grant a type of protection
that no such law can provide.

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Audio segment 1: How do the laws of unfair competition relate to those

designed to combat the abuse of a dominant market
position?

The rules on the prevention of unfair competition and those on the

prevention of restrictive business practices (anti-trust law) are interrelated:
both aim at ensuring the efficient operation of a market economy. They do
so, however, in different ways. Anti-trust law is concerned with the
preservation of the freedom of competition by combating restraints on
trade and abuses of economic power. Unfair competition law, on the other
hand, is concerned with ensuring fairness in competition by forcing all
participants to play according to the same rules. Yet both laws are equally
important, although in different respects, and supplement each other.

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Now let’s look at some of the acts of unfairness in more detail.

Acts of Unfair Competition

It is true that describing unfair competition as acts contrary to "honest trade

practices," "good faith" and so on does not make for clear-cut, universally accepted
standards of behavior, since the meaning of the terms used is rather fluid. The
standard of "fairness" or "honesty" in competition is no more than a reflection of
the sociological, economic, moral and ethical concepts of a society, and may
therefore differ from country to country (and sometimes even within a country).
That standard is also liable to change with time. Furthermore, there are always
new acts of unfair competition, since there is ostensibly no limit to inventiveness in
the field of competition. Any attempt to encompass all existing and future acts of
competition in one sweeping definition—which at the same time defines all
prohibited behavior and is flexible enough to adapt to new market practices—has
so far failed.

This does not mean, however, that acts of unfair competition cannot be
encompassed by any general definition. The most notable of these acts are the
causing of confusion, discrediting and the use of misleading indications. The
common aspect of these most important, but by no means exhaustive, examples
of unfair market behavior is the attempt (by an entrepreneur) to succeed in
competition without relying on his own achievements in terms of quality and price
of his products and services, but rather by taking undue advantage of the work of
another or by influencing consumer demand with false or misleading statements.
Practices that involve such methods are therefore doubtful at the outset as to their
fairness in competition.

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The most important factor for determining "unfairness" in the marketplace,

however, is derived from the purpose of unfair competition law. In this respect,
unfair competition law was initially designed to protect the honest businessman. In
the meantime, consumer protection has been recognized as equally important.
Moreover, some countries put special emphasis on the protection of the public at
large, and especially its interest in the freedom of competition. Modern unfair
competition law therefore serves a threefold purpose, namely: the protection of
competitors, the protection of consumers and the safeguarding of competition in
the interest of the public at large.

On the other hand, there is broad agreement that at least some acts and
practices are always irreconcilable with the notion of fairness in competition. These
are discussed in detail below.

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Categories of Acts of Unfair Competition

The following are amongst the most common generally recognized acts of
unfair competition:

 Causing confusion

 Misleading

 Discrediting Competitors

 Disclosure of secret information

 Taking advantage of another’s achievements (free riding)

 Comparative advertising

Let’s look at each of these in turn.

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Causing confusion

The Paris Convention (Art. 10bis (3)) obliges member States to prohibit all
acts that are “of such a nature as to create confusion by any means whatever with
the establishment, the goods or the industrial or commercial activities of a
competitor”. The scope of this article is very broad, as it covers any act in the
course of trade involving a mark, sign, label, slogan, packaging, shape or color of
goods, or any other distinctive indication used by a businessman. Thus not only
indications used to distinguish goods, services or businesses but also the
appearance of goods and the presentation of services are considered relevant for
the prohibition of confusion. However there are two main areas in which confusion
frequently occurs.

These are indications of commercial origin on the one hand, and the
appearance of goods on the other. However, this does not preclude or limit the
protection of other attributes or achievements against confusion.

An example of the first type of confusion could be a situation in which an

organization which is completely separate from the large American toy store known
under the trademark " Toys 'R' Us” would begin to sell games in a store called
Games 'R' Us

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Audio segment 2: Briefly how does industrial design protection work?

Such legislation usually prohibits the use of identical or similar product

appearances for identical or similar goods. However, as with trademark
legislation, protection under special laws on industrial designs is also
limited in several ways, which vary significantly from country to country.
In a manner similar to the specific protection under trademark laws, such
limitations may concern the general applicability of the designs law to
certain product appearances and also the exact scope of the protection
granted by the specific legislation. For example, if the design protection
of a surface decoration is limited to the use of the decoration on products
for which the design is registered, protection against copying of the
design for the decoration of other products may be obtained under unfair
competition law, if the copied design is misleading or causes confusion
as to the commercial source.

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Misleading
Misleading can roughly be defined as creating a false impression of a
competitor's own products or services. It may well be the single most prevalent
form of unfair competition, and it is by no means harmless. On the contrary,
misleading can have quite serious consequences: the consumer, relying on
incorrect information, may suffer financial (or more harmful) prejudice. The honest
competitor loses clients. The transparency of the market diminishes, with adverse
consequences for the economy as a whole and economic welfare.

There is a consensus according to which the concept of misleading is

restricted neither to inherently false statements nor to statements that have
actually led to a false impression on the part of the consumer. Instead it is
considered sufficient that the indications in question are likely to have a misleading
effect. Even statements that are literally correct can be deceptive.

If, for example, chemical ingredients are generally forbidden in bread, the
courts of most countries would consider an advertising claim that a certain bread
"was without chemical ingredients" to be deceptive, because, though literally true,
it gives the misleading impression that the advertised fact is something out of the
ordinary.

It is likewise not necessary for the product in question to be inferior, in an

objective sense, so long as the indication or allegation has some enticing effect on
the consumer. For example, if the public prefers domestic goods to foreign goods,
a false declaration to the effect that imported goods are domestic is misleading
even if the imported goods are of superior quality.

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Audio segment 3: Does the concept of misleading vary from country to

country?

Generally the concept of misleading does vary from country to country and
this can best be seen in the various national treatments of exaggerations.
Although in all countries obvious exaggerations (even if literally
inaccurate) are not considered deceptive because they can easily be
recognized as "sales talk," the question of what is mere "hot air" or
"puffing" and what is to be taken seriously is answered differently in
different countries. In some countries (such as Germany), it is assumed
that the public basically believes all advertising statements, and especially
those that claim uniqueness ("the best, the first," etc.); consequently an
especially strict standard is applied. Other countries (such as Italy and the
United States of America) take the exact opposite position and tolerate
generally formulated indications, in particular those in the form of claims
of uniqueness. Thus in the United States of America the courts have
generally only intervened if the product advertised as the best is in reality
inferior.

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Discrediting Competitors

Discrediting (or disparagement) is usually defined as any false

allegation concerning a competitor that is likely to harm his commercial goodwill.
Like misleading, discrediting tries to entice customers with incorrect information.
Unlike misleading, however, this is not done by false or deceptive statements
about one's own product, but rather by casting untruthful aspersions on a
competitor, his products or his services. Discrediting, therefore, always involves a
direct attack on a particular businessman or a particular category of businessmen,
but its consequences go beyond that aim: since the information on the competitor
or his products is incorrect, the consumer is liable to suffer also.

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Audio segment 4: Is the concept of discrediting different in different

countries?

In some countries a literally truthful remark about a competitor may be

considered unfair competition if the "attack" is blown up out of proportion,
or if the words used are needlessly injurious. On the other hand, some
countries expressly restrict the notion of discrediting to inaccurate or at
least misleading statements.
An explanation of this difference in attitudes can be found in the diverging
assessment of "commercial honor." Where unfair competition law has its
roots in the protection of the commercial reputation of the individual
businessman—as it does in the continental European countries—a
"special tort of business disparagement" has emerged, to which, in
principle, much stricter rules apply than to defamatory statements outside
the bounds of competition, where constitutional considerations such as
freedom of speech have to be taken into account. In other countries,
especially those that have not developed a comprehensive system of
protection against unfair competition, the attitude is exactly the opposite:
it is assumed that, in the interest of competition, attacks on individual
competitors are unavoidable, that they must be widely tolerated and that
a line should only be drawn where the attack is based on false facts. In
those countries, the plaintiff usually also bears the burden of proof as to
the falseness of the statement—which can sometimes make an action
impossible.

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Disclosure of secret information

A considerable amount of commercial competitiveness of an enterprise can
be due to information developed and accumulated by that enterprise or individuals
in it. For example, the customer and potential customer lists could give that
company an edge over its’ competitors who do not have such good quality lists.
Another example could be that an enterprise has developed a secret industrial
process, which enables it to sell a better quality or cheaper product. I hope you
agree with me that if either of these pieces of information were given to a
competitor without the permission of the owner of the information this would result
in unfair competition. Indeed, the disclosure of secret information is defined as
unfair competition by the TRIPS Agreement of 1994, which obliges World Trade
Organization members to provide protection for “undisclosed information”.

The TRIPS Agreement specifically describes the protection of undisclosed

information as necessary to protect against unfair competition (Article 39 (2)).

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Audio segment 5: Why can’t patent protection be used to protect such

secret information?

Competitive strength usually depends on innovative techniques and

accompanying know-how in the industrial and/or commercial field.
However, such techniques and know-how are not always protectable by
patent law. Firstly, patents are available only for inventions in the field of
technology and not for innovative achievements concerning the conduct
of business, etc. Moreover, some technical discoveries or information,
while providing a valuable commercial advantage for a particular trader,
may lack the novelty or inventive step required to make them patentable.
Furthermore, while a patent application is pending, as long as the
information has not been disclosed to the public, the owner of the
information to be patented ought to be protected against any wrongful
disclosure of the information by others, regardless of whether or not the
application eventually leads to the grant of a patent.

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Taking undue advantage of another’s achievements

The notion of “free riding” has a number of common features with the
notions of causing confusion and misleading. It could be defined as the broadest
form of competition by imitation. Under the principles of a free market, however,
the exploitation or "appropriation" of another person's achievements is unfair only
under specific circumstances. On the other hand, acts that cause confusion or
mislead normally imply free riding on another person's achievements, but are
generally recognised, as forms of free riding that are always unfair.

There are various types of free riding including the dilution of the distinctive
value and quality of a competitor’s mark. This could happen if a similar mark is
used for dissimilar goods or services.

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Comparative advertising

Comparative advertising may take two forms: a positive reference to

another's product (claiming that one's own product is as good as the other) or a
negative reference (claiming that one's own product is better than the other). In the
first instance, where the competitor's product is usually well known, the crucial
question relates to the possibility of misappropriation of another's goodwill. In the
second case, where the competitor's product is criticized, it is the question of
disparagement that arises. However, both forms of comparison involve an
(unauthorized) reference to a competitor, who is either mentioned by name or
implicitly identifiable as such by the public.

It must be remembered, however, that there are differences in the

evaluation of the notion of "misleading" and especially in that of "discrediting." As
mentioned above, some countries consider statements claiming superiority or
uniqueness (like "the best," etc.) misleading unless they can be proved correct,
while others consider them harmless exaggerations. Different assessments of the
notions of "discrediting" and "misappropriation" are of even greater importance. In
countries with a rather permissive attitude towards true but nevertheless
disparaging statements, comparative advertising is generally tolerated. As long as
what is said is true, the courts will not interfere, even if the reference to the
competitor or his product is clearly disparaging or exploits his goodwill. In countries
that traditionally put special emphasis on the protection of the "honest"
businessman and his reputation, comparative advertising is either forbidden or at
least severely restricted. Sometimes the mere fact that a competitor is named
against his will is considered discrediting and therefore unfair competition.
According to the rule that "the honest businessman has a right not to be spoken
of, even if the truth is spoken," the legislation of some countries has even expressly
forbidden all comparisons that needlessly identify a competitor. The same
argument has led the courts of other countries to find comparative advertising more
or less automatically against honest trade practice (and therefore against the
general provision on unfair competition law).

Although many countries take a strict view that comparative advertising is

an unfair practice, there has been a trend in recent years in which this negative
attitude towards comparative advertising has changed. It has been increasingly
recognized that true comparisons of relevant facts can not only reduce the
consumer's information search costs, but also have positive effects on the
economy by improving market transparency. The courts of those countries that
traditionally view comparative advertising as disparaging have gradually relaxed
the strict prohibition on all statements identifying a competitor. For example, price
comparisons, if based on true, relevant and ample material, may be allowed. On
the whole, there seems to be a clear trend towards the admission of truthful
comparative advertising.

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Other acts of unfair competition

As you should appreciate now the field of unfair competition is large and the
treatment by different countries quite varied. So, in order to complete the list of
unfair acts as much as possible, it is worthwhile giving a few more examples,
briefly. These are:

 Nuisance advertising. For example, advertising which unduly

exploits fear to make a sale.

 The use of sales promotion techniques such as, lotteries, gifts and
bonuses. These are usually regulated to avoid undue inducement to
buy.

 Impeding of market activities such as, the destruction of a

competitor's returnable soft drink bottles.

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Summary of unfair competition

The idea of unfair competition has been around for some time and was
mentioned as one of the ways of protecting intellectual property as early as 1900
in the Brussels revision of the Paris Convention. It can best be seen as practices
that distort the free operation of intellectual property and the reward system that it
provides.
An act of unfair competition is any act of competition contrary to honest
practices in industrial or commercial matters.
For example, the following in particular shall be prohibited:

 all acts of such a nature as to create confusion, by any means, with the
establishment, the goods, or the industrial or commercial activities, of a
competitor;

 false allegations in the course of trade of such a nature as to discredit the

establishment, the goods, or the industrial or commercial activities, of a
competitor;

 indications or allegations the use of which in the course of trade is liable

to mislead the public as to the nature, the manufacturing process, the
characteristics, the suitability for their purpose, or the quantity, of the
goods."

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There are many different types of acts of unfair competition including:

 Causing confusion
 Misleading
 Discrediting Competitors
 Violation of trade secrets
 Taking advantage of another’s achievements (free riding)
 Comparative advertising

Legislative Texts:

 TRIPS Agreement

 Paris Convention for the Protection of Industrial Property

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Study note: This module should take around 2 hours to study.

Module 10: Protection of New Varieties of Plants

Objectives

After completing the study of this module you should be able to:

1. Explain the role of the International Union for the Protection of New Varieties
of Plants (UPOV).

2. Explain why new varieties of plants should be eligible for protection.

3. List the requirements that have to be met for a plant variety to be protected.

4. Identify the rights afforded to the rights holder.

5. Define the length of time for which protection can be obtained.

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Introduction

The protection of new plant varieties is another aspect of intellectual property

rights, and as such seeks to acknowledge the achievements of breeders of new
plant varieties by giving them, for a limited period, an exclusive right. To obtain such
protection, the new varieties must satisfy specific criteria.

The organization overseeing the protection of new plant varieties is referred to

as UPOV, which is an acronym derived from the French name for the organization,
Union internationale pour la protection des obtentions végétales.

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Why protect new varieties of plants?

Protection is available to a new variety of plants to safeguard the interests of

plant breeders as an incentive to the development of improved plant varieties for
agriculture, horticulture and forestry. Improved varieties are a necessary and a very
cost-effective element in the improvement of the performance and quality of plants of
all types.

Breeding new varieties of plants requires a substantial investment in terms of

skill, labor, material resources, money and time. The possibility to obtain certain
exclusive rights in respect of a new variety of plants provides a successful plant
breeder with a reasonable opportunity of recovering his costs and accumulating the
funds necessary for further investment. In the absence of plant breeders’ rights,
these aims are more difficult to achieve, since there is nothing to prevent others from
multiplying the breeder’s seeds or other propagating material and selling the variety
on a commercial scale, without providing recompense to the breeder.

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How can new plants be protected?

1. The TRIPS agreement allows three types of protection (Section 5 of the

TRIPS Agreement)

2. Through the patent mechanism

3. Through a special (“sui generis”) system related to plants

4. Or through a combination of both

There is a widely held view that most new plant varieties do not satisfy the
non-obvious requirement of a system of patent protection, since they result from
activities undertaken with known objectives, and using known technology. This
means that using the patent laws system could be difficult. Therefore, most countries
tend to have a special (“sui generis”) system for the protection of plant varieties.

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What are the characteristics of a new plant variety that

would enable it to be protected?

Under Article 5 to 9 of the 1991 Act of the UPOV Convention the variety should
be:
1. New (or novel)
2. Distinct
3. Uniform
4. Stable and
5. Have a satisfactory denomination

The novelty requirement serves to ensure that the variety has not already
been exploited commercially. This is strictly a legal assessment and not a technical
assessment. The variety is also required to be designated by a denomination, which
will be its generic designation. There are three technical assessments: distinctness,
uniformity and stability (DUS). Let’s look at each one of these in turn.

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Distinctness

The variety shall be deemed to be distinct if it is clearly distinguishable from any

other variety, whose existence is a matter of common knowledge, at the time of filing
the application. The exact technical definition of distinctness resides in the biological
description of the variety and is beyond the scope of this module. It is sufficient to
say that a technical expert would be required to give an opinion on this matter.

Uniformity

The variety shall be deemed to be uniform if, subject to the variation that may be
expected from the particular features of its propagation, it is sufficiently uniform in its
relevant characteristics.

Briefly, this means that the plants of a variety should all be the same or very similar,
with the degree of similarity depending on the nature of the propagation method.

Stability

The variety shall be deemed to be stable if the characteristics remained unchanged

after repeated propagation or, in the case of a particular cycle of propagation, at the
end of each such cycle.

What this means in short is that the variety should remain the same over a period of
repeated propagation from seeds or other methods.

Of course all of these last three technical criteria have to be examined before the
granting of the breeders' rights. Such technical examinations are conducted by
authorized examiners.

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What rights does the holder of protection have?

Under Article 14 of the 1991 Act of the UPOV Convention covering the
protection afforded to breeders, the following require the prior authorisation of the
rights holder:
1. Producing or reproducing (multiplying)
2. Conditioning for the purpose of propagation
3. Offering for sale
4. Selling or other marketing
5. Exporting
6. Importing
7. Stocking for any of the above purposes
It is important to note that the authorization of the rights holder is not required
for:

 Acts done privately and for non-commercial purposes

 Acts done for experimental purposes

 Acts done for the purpose of breeding and exploiting other varieties. An
exception to this is in the case of essentially derived and certain other
varieties which may not be exploited without the authorization of the breeder
of the original variety.

Taken literally, the protection under (1) would mean that farmers would need
the permission of the right holder to save seed from a crop for planting of the next
crop.
However, under Article 15 of the 1991 Act of the UPOV Convention contains
an optional exception which permits States to exclude farm saved seeds from the
scope of the breeder’s right and to adopt solutions on the question, which are
specifically adapted to their national agricultural circumstances. Virtually all countries
which have adhered to the 1991 Act have adopted such a “farmer’s privilege” in one
form or another.

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How long do the breeder’s rights last?

The minimum duration described in the 1991 act is (Article 19):

 25 years for trees and vines

 20 years for other plants

Audio segment 1: Can a breeder obtain worldwide protection for a plant?

As with other methods of protection, in many cases the right must be granted
in each of the States in which the breeder seeks protection. However, there
are some supranational systems in place (e.g. Community Plant Variety Office
for members of the European Union) or under development. However, the
work of UPOV greatly simplifies this process as it encourages members to
recognize the technical testing done in other member States. This greatly
reduces the cost and effort needed to get protection in several countries.

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Summary

Protection is available to a new variety of plants to safeguard the interests of

plant breeders as an incentive to the development of improved plant varieties for
agriculture, horticulture and forestry. Improved varieties are a necessary and a very
cost-effective element in the improvement of the performance and quality of plants of
all types.
Most countries that have introduced plant breeders’ rights have done it using
special legislation based on the UPOV Convention, which is administered by the
Office of the Union based in Geneva.
In order to be protected, the plant must be:
 New or novel
 Distinct*
 Uniform* and
 Stable *
 Have a satisfactory denomination
______
* Subject of technical examination

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Once protection is afforded, the holder of the breeder’s rights has the right to
prevent the following actions without his/her authorization:

 Production or reproduction (multiplication)

 Conditioning for the purpose of propagation
 Offering for sale
 Selling or other marketing
 Exporting
 Importing
 Stocking for any of the above purposes

Many countries have enacted special legislation, which allows farmers to keep
seed or propagating material from one crop for planting of the next.

The minimum length of protection is:

 25 years for trees and vines

 20 years for other plants

One of the important roles for UPOV is to help breeders obtain protection in
several countries. It achieves this, amongst other means, by encouraging countries to
accept test results from other countries that are members of UPOV.

Legislative Texts:

 UPOV Convention (1991 Act)

 TRIPS Agreement

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Throughout your study of the various modules, you have learnt about
various types of intellectual property and their different types of protection. The
modules have stressed the benefits of the various forms of protection in terms of
the holder’s rights. An underlying theme in all of these explanations was that
creators of intellectual property can generate financial rewards by the exercise of
their rights. Simply owning intellectual property rights does not generate money.
To produce income the owners of the rights must exploit them financially through
various types of commercial agreements including licensing arrangements and/or
assignments of rights. In a sense, all of these commercial agreements are an
attempt to turn intellectual property into intellectual capital.
The next few audio segments are longer than usual, you should use them
to help you recall the concepts covered in the earlier modules, as well as listening
to examples of the creation of wealth from intellectual property rights.

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Audio Segment 1: Now, I’ve heard a lot about intellectual property, but
there is also the expression intellectual capital. What’s
the difference?

Intellectual property is based on laws that provide for the protection of

certain creations of the mind such as inventions, films, books, music and so on.
Intellectual capital includes intellectual property, but also other things that a
company can use to gain a foothold in the market, for example, customer lists,
training methods, quality control methods or quality testing procedures. All of this
is intellectual capital, but we should not forget that a company’s greatest intellectual
capital is its labor force.
Intellectual property may not always be intellectual capital in a strictly
monetary sense, because a patent, for an invention that has not been placed on
the market and used to generate income for the company, is not worth the paper
that it is printed on. The patent for an invention has to be used in a commercial
environment; it will give the company a competitive advantage because, by using
it, and thereby preventing others from placing a similar product on the market, the
company can generate increased profits. The same applies to registered
trademarks. A trademark that is not known to the public is not worth much, but a
trademark like Coca-Cola, say, is worth billions. And yet some people say the
Coca-Cola trademark has no price as it has never been offered for sale. So we
have to make a difference between cost, price and value.

How do you distinguish?

The value of a trademark is actually based on how much somebody would

be ready to pay to acquire it. For example, if somebody is ready to pay a million
dollars for a trademark, that might be the value but it is not the price, because the
owner might not want to sell. So, there is no set price if there is no transaction; the
price would be determined by the transaction itself. And intellectual property then
becomes a known value if it is offered on the market and there is somebody ready
to buy it.
Take the example of an invention. For example, the famous Velcro textile
fastening material was invented by a Swiss inventor who unfortunately didn’t make
much money out of his invention, which today is used everywhere, because he
was unable to get it on the market during the lifetime of the Velcro patent. Indeed
his only income was from a contract with NASA, which used part of his invention
for the fastening of spacesuits for its astronauts. In the meantime, however, the
invention has generated a great deal of income for the follow-up user who has
used it since it became public property; companies that use Velcro today do not
have to pay any royalties or license fees to the inventor. This is just one example.
Other inventions have generated considerable income for their owners; I could also
give you the example of the Dolby system of noise reduction for high-fidelity
stereophonic equipment, which was invented and then efficiently marketed by

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means of licensing agreements throughout the industrial sector and other

arrangements that demonstrated the advantages of the Dolby system for the
licenses when the technology was passed on to the eventual user, namely the
consumer in search of superior quality music.

So briefly, as I do know a bit about the system, the

licensing arrangement was that every manufacturer who
incorporated the technology paid a fee to Dolby?

That's it. Every manufacturer would pay a fee to use the Dolby system on
certain conditions; for instance he was obliged to make it clear to the consumer
that the Dolby system was being used, which in turn was indirect publicity for him,
and that nobody could use the Dolby system without entering into a license
agreement with the owner.

Do you have another example of how intellectual

property can be made commercially successful?

We all know how strong pharmaceutical companies are in the intellectual

property field. All the pharmaceutical companies, when they invest in the
development of new treatments, medicines, and drugs, expect to be the only
providers on the market for a time so that they can make more profit than they
would if there were more than one company offering the same product.
You will notice that some new medical drugs appear on the market at quite
a high price and that, towards the end of the lifespan of the patent, the price goes
down for users as generic forms also appear on the market. The generic forms are
in fact the same medication and use the same formula, but their patents have
already expired and the technology is in the public domain. The pharmaceutical
companies try to maintain their advantage by intensive marketing of the
trademarks relating to the specific medications. No one but the Bayer company
can produce Bayer aspirin today because the trademark is owned by the company.
However, there are many companies that produce a medical drug with the same
ingredients as aspirin which has the same effect, but they use a different name.
So the consumer may be drawn by the traditional name and well known qualities
of the Bayer trademark, but when he is persuaded that he can buy an alternative
product for the same price or cheaper, then that is probably what he will do.
So the example you have given us concerns two forms of protection, namely
the patent, which has now expired, and the trademark, which continues?
That's right. The trademark, unlike the patent, can be kept forever, for in
perpetuity. And this is very important to companies that produce staple products.
Trademarks are usually associated with staple products, being less important
when associated with specialized products. By specialized products, I mean

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purpose-built manufacturing equipment, for example, or mining or drilling

machinery. In that case the industrial consumer would not be using the trademark
to lead him to a known product, he would be buying the technology, and then only
every 10 or 15 years. He would therefore be looking at technology, as he wants
the best quality and the best equipment for his money, and the trademark, if it
belongs to a source known to produce the type of equipment he is after, would give
him a sure reference to the reputation of the producing company. In a mass
consumption market, a trademark will have a powerful effect: people buy with their
eyes and hands; only later do they check what's inside the box.

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So the key step of commercialization requires consideration if the economic

benefits of the protection of intellectual property rights are to be obtained.
Some people think that the benefits of intellectual property protection relate
only to industrialized countries, so please listen to the next audio, which specifically
addresses the economic benefits to countries in development, from intellectual
property protection and effective commercialization.

Audio Segment 2: Can you tell us a bit about the economic benefits of
intellectual property for developing countries?

Certainly. Developing countries can benefit from the intellectual property

system in the same way as industrialized countries. The disadvantage for
developing countries today is that many of their companies do not yet fully
appreciate how to use the intellectual property system to their own
advantage. But as awareness increases, certain products start to appear on
the market; I cannot give exact examples, but generally speaking Indian
multinational companies trade and sell branded products, which are a
reference for their clients, so the clients go and are able to find the products
that they are looking for, because they know the origin of the products and
use that as an indicator of quality.
In technology too, if a research center in a developing country develops a
technology that might be useful to another country, and does not secure
patent for its inventions or industrial design, it will lose its advantage. It will
lose the possibility of selling the technology and thereby earning additional
income for its intellectual product. Another example springs to my mind; it
concerns pineapples. In Europe, you will find pineapples on the market that
come from various countries. Sometimes the shop will state that it’s a
pineapple from Ghana, from Central America or from Ivory Coast, but as far
as I know only Ivory Coast has so far actually introduced a label "Pineapples
from Ivory Coast," and certain shops have observed that customers are
looking for those pineapples in particular. This is not a trademark as such;
it’s more of a certification mark, but it is registered as a trademark, and
exporters from Ivory Coast can use the label to distinguish their products
from the pineapples of other foreign producers. And I believe that
developing countries would benefit from making more use of the various
appellations of origin, geographical indications or trademarks that are
available as a means of selling their goods as local produce, not as standard
goods from no identifiable regional source.

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There are various mechanisms for receiving payments from other people
using one’s intellectual property and the next audio segment discusses some of
these.

Audio Segment 3: The terms licensing and royalties often come up in

connection with the exploitation or marketing of
intellectual property. What’s the difference between
licensing and royalties?

Licensing is a process whereby something is allowed. It's the giving of

permission. It comes from the Latin noun licentia, meaning permission. The
owner of the intellectual property right or IPR is the only person who can
permit the use of that IPR by somebody else. If somebody wants to use my
technology, he has to enter a license agreement, a form of contractual
arrangement, with me, and that agreement will specify the conditions on
which he will use my intellectual property rights, namely how, where and
when. This amounts to permission by law, and it is the legal way of
exploiting intellectual property rights. If somebody uses my intellectual
property, say my technology, my invention or my trademark, without
permission – that is illegal, it's infringement or an act of piracy, and it only
becomes legal if and when he enters into a license agreement with me.
The Royalties on the other hand are the remuneration payable under
license agreements, usually calculated as a percentage of the number of
units or the quantity to be produced under the license. For example, if you
license the production of tires to somebody, you have two ways of setting
the price in the license agreement. Either you opt for a lump sum, in which
case you decide that your technology and the know-how that goes with it is
worth a million dollars, and the agreement specifies how the licensee is to
pay the million dollars, or you provide for royalties, which are regular
payments of remuneration based either on production quantities or on other
factors.
Royalties are used by licensors when they want control over the licensee's
output and also to some extent on its quality, because the volume of
royalties is an indicator of how much the licensee is manufacturing and
ultimately a means of checking on the licensee's manufacturing capacity.
For the licensee, the advantage of agreeing on royalties is that the amount
payable for the technology is spread over years and the benefit he derives
from the license depends on his output. It is useless if a licensee has to pay
a huge amount as a technology fee, which we call a lump sum royalty, and
then does not use the technology to secure a return on the investment
made.
There have been numerous attempts to help creators of intellectual property
to turn their rights into commercially successful products. The next audio segment
describes one of these, the creation of Innovation Centers.

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Audio Segment 4: Can you tell us something about innovation centers?

Innovation centers are a concept that appeared in the late 1970’s and
1980’s in some industrialized countries. Basically, they appeared for the first
time in conjunction with university research or government-funded research
laboratories in Western Europe and North America. The main function of an
innovation center is to bring a new technology and new development from
the researcher's desk or the laboratory to the market. It’s easy to say that
you have to transfer technology. It’s much more difficult actually to do it,
because the stage of development of an invention will greatly influence the
cost of the transfer.
If you have an invention that has been proved new and is therefore
patentable, and you have been granted a patent, you have taken the first
step, but this does not mean that the technology will actually work. It may
work well in laboratory conditions but never work in industrial applications.
Sometimes the market is not ready to receive it. Sometimes other conditions
or human factors interfere and you cannot transfer the technology. So in
fact innovation centers are similar to the business incubation centers of a
government or chamber of commerce.
The innovation center would help the inventor or researcher bring his
invention or other IPR on to the market. It could offer various services like,
intellectual property advice, assessment of inventions for economic viability
and technical feasibility or in relation to the legal environment in which the
invention has to work, and it would assist the inventor or researcher in
developing a business plan with which to attract investors and
manufacturers more easily, as a business plan gives a better idea of how
one would like to see the invention develop and be exploited as a
marketable product. Basically, it would serve as a bridge between research
and development on one hand and manufacturing on the other.

So in a way, the innovation center is an attempt to turn

intellectual property into intellectual capital?

That's right. That is indeed what an innovation center would do, ideally, to
facilitate the transfer of the invention from the research stage to the market.
There are successful innovation centers in many universities, not only in
industrialized countries but also in Mexico, Brazil and in Argentina, and I’ve
heard that they are also to be found in countries of the Far East.
Our task at WIPO is to encourage developing countries to establish
innovation centers as structures that will facilitate the marketing of
intellectual investments, in other words, the research results achieved at
national or university-based research laboratories, or by national inventors.

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Final Summary

Throughout your study of the various modules, you have learnt about
various types of intellectual property and their different types of protection. The
modules have stressed the benefits of the various protections in terms of the
holder’s rights. An underlying theme in all of these explanations was that creators
of intellectual property can make financial rewards by the exercise of their rights.
Just owning intellectual property rights does not generate money. To do this, the
owners of the rights must exploit them financially through various types of
commercial agreements including licensing arrangements and sales of rights. In a
sense, all of these commercial agreements are an attempt to turn intellectual
property into intellectual capital.
You have learned about the general structure of copyright law and studied
an overview of the
 works protected by copyright ,
 the rights granted to the owner of copyright;
 limitations on such rights;
 ownership and transfer of copyright; and
 enforcement of rights.
The Berne Convention stated that copyright covers “every production in the
literary, scientific and artistic domain, whatever may be the mode or form of
expression”. Covered under this broad term is every original work of authorship,
irrespective of its literary or artistic merit. The owner of copyright in a protected
work may use the work as he wishes, and may prevent others from using it without
his authorization. These rights are referred to as “exclusive rights”. Copyright
protects both economic rights and moral rights.
In addition to those mentioned above, the TRIPS Agreement included
another genre of work to be covered under copyright. This is multimedia production
and although there is no legal definition, there is a consensus that the combination
of sound, text, and images in digital format, which is made accessible by a
computer program is considered an original expression of authorship and is
therefore covered under the umbrella of copyright.
Related rights, also referred to as neighboring rights, or more specifically
“rights neighboring on copyright” protect the legal interests of certain persons or
organizations who contribute to making the works available to the public or those
who add creative, technical or organizational skill.
Traditionally, related rights have been granted to three categories of
beneficiaries: performers, producers, and broadcasters. The need for legal
protection of these three groups was identified in the Rome Convention in 1961,
which was an attempt to establish international regulations in a new field where

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national laws already existed. In other words, most States would normally have to
draft and enact laws before adhering to the Convention. The Rome Convention,
although imperfect and in need of revision, is still the only international benchmark
for protection in this field. Like copyright, the Rome Convention and national laws
do contain limitations on rights allowing for private use, use of short excerpts, and
use of the copyrighted works for teaching or scientific research.
The duration of protection of related rights, as stated in the Rome
Convention, is 20 years from the end of the year:
 the recording is made;
 the performance took place;
 the broadcast took place.
Conservatory or provisional measures refer to the remedies for infringement
or violation of related rights. These include civil remedies, criminal sanctions,
measures to be taken at the border and measures, remedies and sanctions against
abuses in respect of technical devices.
Related rights also protect the largely unwritten and unrecorded cultural
expression of many developing countries. Protection of related rights has become
part of a much larger picture and is a necessary precondition to participate in the
emerging system of international trade and investment.
The section on the patent area of intellectual property covered the
fundamental information. Patents are one of the oldest forms of intellectual
property protection and as with all forms of protection for intellectual property the
aim of a patent system is to encourage economic development by rewarding
intellectual creativity. This section explained that the aim of a patent is to
encourage economic development by giving reward to intellectual creativity.
Under patent protection, both the creation and its further development are
covered. A breakthrough in science like the invention of penicillin is as equally
important and protected as a new lever on a machine invented to make the
machine run faster. Patents protect inventions and in simple terms, an invention
may be defined as a new solution to a technical problem. The solution is the ‘idea’
and protection under patent law does not require that the invention be represented
in a physical embodiment. However, there are rules and exceptions to those things
that cannot be patented. These include: human genes, things found in nature and
machines that defy the laws of nature, such as a perpetual motion machine. Other
exclusions, which are common under national law, are scientific theories and
mathematical methods; schemes, rules and methods for doing business; and
methods of treatment for human or animals or diagnostic methods.
Once a patent application is on file, it is reviewed and examined by a
technical expert to ensure that it meets the requirements of patentibility. One
characteristic that an invention must have is: (1) it must be new or novel: (2) it must
involve an inventive step, (3) it must be capable of industrial application. In short,
a patent is a deal between a national government and the inventor. The state, by

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giving protection for a fixed term ensures that the inventor gets rewarded. After
expiration, which is typically 20 years after the expiration of the patent, the
invention is available for anyone’s use. Since there is no such thing as worldwide
protection, an inventor must pay application fees and annual protection fees to
each country where he wishes to be protected.
In the module on trademarks you learned that a trademark is a word, a logo,
a number, a letter, a slogan, a sound, a color, or sometimes even a smell which
identifies the source of goods and/or services with which the trademark is used.
Trademarks are one area of intellectual property and their purpose is to
protect the name of the product rather than the invention or idea behind the
product. Generally speaking, trademarks should be distinctive and should not be
deceptive.
The use of geographical indications an important method of indicating the
origin of goods and services. One of the aims of their use is to promote commerce
by informing the customer of the origin of the products. Often this may imply a
certain quality, which the customer may be looking for. They can be used for
industrial and agricultural products. Protection of such indications is on a national
basis but there are various international treaties that assist the protection in a range
of countries.
You have also learned about WIPO’s Treaties regarding the international
registration systems for the protection of trademarks and industrial design. The
role of WIPO in this process is to serve as the administrator that protects the main
systems of registration.
The Madrid System was created over 100 years ago and its purpose is to
monitor the international registration of trademarks. If an individual wants
protection of his trademark in numerous countries, he must first register it in his
country of origin. There is a dependency for five years whereby if the trademark is
refused in the country of origin, but accepted in the other designated countries, it
will be cancelled. International trademark protection is indefinite, however it must
be renewed every ten years. There is no limit to the amount of times a trademark
is renewed.
The Hague Agreement created the system of international registration of
industrial designs. Industrial design refers to the appearance of an object and it
differs from a patent. The main difference is that a patent protects technical
innovations and inventions while industrial design protects the appearance of an
object. The owner of an industrial design is protected for a fixed period. In most
countries protection lasts for either ten years or for fifteen to twenty years. There
has been a new directive for countries in the European Union, which grants the
owner of an industrial design twenty-five years of protection.
The Patent Cooperation Treaty provides a simplified procedure for an
inventor or applicant to apply for and eventually obtain patents in a large number
of countries. In addition, it promotes and facilitates the exchange of technical

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information contained in patent documents to industries and workers in the

relevant field.
To complete your understanding of the scope of intellectual property
protection in the marketplace, you have been exposed to the concept of unfair
competition and the sort of acts which can be considered as unfair competition, as
well as the remedies that can be used to ensure fairness in competition. The main
purposes of unfair competition law have been explained, namely: the protection of
competitors, the protection of consumers and the safeguarding of competition in
the interest of the public at large. By analyzing the different types of acts, which
represent unfair competition, you have been able to understand the
complementarity between intellectual property law and unfair competition law.
Finally, you concluded this introductory course by learning about the
protection of plant varieties as another aspect of intellectual property rights. This
sui generis protection accorded to new plant varieties, when they meet certain
conditions, seeks to acknowledge the achievements of breeders who make
substantial investments in the fields agriculture, horticulture and forestry. The
opportunity for them to obtain certain exclusive rights with respect to a new plant
variety, and thus recover costs, offers an important incentive to further their
activities, which result in the improvement of the quality and performance of plants
of all types.

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Study Note: This module should take around 3 hours to study

Module 12: Intellectual Property and

Development

Objectives

After completing the study of this module you should be able to:

1. Explain in 100 words why development is more than just economic

growth.

2. List those aspects of development that are in addition to economic

growth.

3. Explain in about 500 words how IP laws can be framed to encourage

development.

4. Give three examples of the use of IP regimes that encourage

development.

5. Describe in about 100 words the role of WIPO in development.

6. Give the date of the start of the WIPO Development Agenda.

7. List the names of the Development Agenda clusters.

8. Identify the cluster most closely associated with a particular issue.

9. Give three specific examples of projects arising from the Development

Agenda.

10. Give two examples of the way in which the Development Agenda has
been “mainstreamed” into WIPO’s work.

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What is Development?

Development is a broad concept to define, but important to understand

because it is among the key objectives of the global and many domestic
intellectual property systems. Development used to be the same as
modernization and economic growth. Indeed many experts in the past
considered these two features to be both a primary aim and indicator of
international development.
More recently, economic growth has been valued, not for its own sake,
but for facilitating human freedom. Experts like the Nobel prize-winning
economist Amartya Sen, renowned philosopher Martha Nussbaum and others
have called this the “capabilities approach” to development. Economic growth
can provide people with more money and as a result more freedom to make
choices in their lives. However that freedom is meaningless without the
capabilities to enjoy good health, food security, a clean environment, quality
education, vibrant arts and culture and so on. Intellectual property is, in one
way or another, linked to all of these essential things.

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Why Does Intellectual Property Matter for Development?

A well balanced system of granting and exploiting intellectual property

rights is a factor in economic growth as it encourages investment and trade,
but if designed and used appropriately, it can also help cultural creativity to
thrive, educate a population or workforce, drive technological innovation to
improve health and nutrition and yield other social benefits as well.
Intellectual property by itself neither helps nor hinders development
necessarily. It is how laws, policies and practices are designed and used in
different countries that determine whether IP is effective for development
purposes. Flexibilities in the international treaties and agreements that you
learned about in earlier modules can facilitate development because countries
can use them in a manner that enables them to pursue their own public
policies, either in specific fields like access to pharmaceutical products (for
instance, through compulsory licensing in some circumstances) or protection
of their biodiversity (with patents or another unique system), or more
generally, in establishing macro and microeconomic and institutional
conditions that support development.
For example, some countries may want cultural works to be widely
available in the public domain as early as possible, to allow others to freely
use the material, so these countries maintain the term of copyright protection
at the Berne Convention and TRIPS Agreement standard of 50 years after the
author’s death. Other countries may want to provide their cultural industries
with more revenues for a longer time, so have extended the term of protection
to the author’s life plus 70 years.
Concerning patents, you learned in a previous module that the TRIPS
Agreement standardizes the subject matter of protection: Patents must be
available for any inventions in all fields of technology that meet the criteria of
novelty, inventiveness and usefulness. But there is also some flexibility: WTO
members may exclude some inventions from protection if that is necessary to,
for example, preserve the structure of civil society or as it is expressed “to
protect ordre public” or for reasons of protection of morality; human, plant or
animal life or the environment. So while protecting ‘essentially biological’
inventions that resulted from only human intervention with patents is possible,
there is worldwide debate, not only in developing countries but also in places
like the United States, as to whether human or animal or plant genes, for
instance, should be patentable. The TRIPS Agreement is also flexible about
protecting higher life forms to the extent they satisfy the criteria of
patentability, like plants and animals, but it also allows other avenues such as
a system like plant breeders’ rights. Which of these flexible options a country
chooses will probably depend on a wide variety of social, cultural and
economic considerations.
Furthermore, to guarantee access to some important inventions that
are protected, like pharmaceuticals, countries are allowed to issue compulsory
patent licenses in some circumstances. This procedure has been used, for
example, to provide access to medicines in countries including Malaysia,
Indonesia, Brazil, Thailand and Ghana.

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Compulsory licensing is not normally the first choice for any country
trying to provide access to medicines. The TRIPS Agreement indicates that
certain steps should be taken before issuing a compulsory license, including
an attempt at voluntary negotiations. That suggestion does not apply in all
cases, such as national emergencies, extreme urgency or public non-
commercial uses. For example, in 2006, Thailand issued a compulsory licence
for one of its government organizations to produce generic anti-AIDS drugs,
without first consulting the patent owner, Merck. In subsequent years,
however, Thailand did try unsuccessfully to negotiate with anti-cancer drug
patent owners before issuing compulsory licences. Brief voluntary
negotiations also occurred in Canada before a compulsory licence was
recently issued for a Canadian company to export generic anti-AIDS drugs to
Rwanda, which lacked the capacity to produce the drugs itself.
Provisions dealing with compulsory licencing were a focus of the 2001
WTO’s Doha Ministerial Declaration on TRIPS and Public Health. That
Declaration later led to more flexibility, especially for countries (like Rwanda)
that typically cannot manufacturer pharmaceuticals locally, so rely on exports
from other countries. It also extended the deadline for least developed
countries to provide patent protection for pharmaceuticals until at least 2016.
So, if the least developed country does have manufacturing capacity, and the
medicine is not patented in that country, a compulsory licence would not be
needed.
To learn more about how compulsory licensing can work in the context
of public health, you might review this website from the World Trade
Organization, with which WIPO works closely on intellectual property matters:
http://www.wto.org/english/tratop_e/trips_e/public_health_faq_e.htm

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It is not only countries that can take advantage of flexible approaches

toward intellectual property protection; private companies and public
institutions like universities can flexibly manage intellectual property as well.
For instance, some companies or institutions might want to protect their
products indefinitely as trade secrets, rather than disclosing the details of an
invention to the public in exchange for 20 years of exclusive patent protection.
Those companies or institutions that choose patent protection might
manufacture and sell a product themselves, which brings economic value to
the organization and new products and services to the market. Or they could
work with partners to cross-license their intellectual property rights together in
order to gain the benefits of collaboration, such as access to complementary
technologies or new markets. Collaborating through patent licensing could be
an especially attractive option for government, universities and private sector
firms in developing countries, which may not yet have the research and
development capacity or access to the scientific and technical resources to
commercialize innovations alone.
Take the case of access to medicine again as a concrete illustration.
The most effective treatments for HIV/AIDS, for example, often involve a
combination of many different products, the patents for which are owned by
many different companies around the world. To address some of the
competition and coordination issues involved with intellectual property
licensing, a group of partners formed a “Medicines Patent Pool” that provides
a “one-stop-shop” for patent licenses. This model of intellectual property
management can help to create new revenue sources for the companies
involved, lower the costs of providing these drugs and, most important,
improve the health and lives of millions of people. You can learn more about
this particular way that intellectual property policies and practices can facilitate
development at
www.medicinespatentpool.org.

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The examples given raise important issues for public policy makers to
consider. The private sector—including large companies, small or medium
sized businesses and budding entrepreneurs—can also benefit from a
development-oriented view of intellectual property rights. Using intellectual
property rights to create shared value between companies and communities
can grow markets and create new ones, especially globally.
Thinking about intellectual property and development is something that
not only developing or least developed countries need to do. All countries face
the same basic questions about striking the right balance among various
related objectives. Similarly, all companies need to think about the role of
intellectual property in their business plans so as to seize new commercial
opportunities in the short and long terms.

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What is WIPO’s Role?

Development is at the core of WIPO’s mandate. When the organization

was first established, its role was to “promote the protection of intellectual
property throughout the world.” Upon becoming a specialized agency of the
United Nations in the mid-1970s, this role was more specifically connected to
development. Thereafter, WIPO has been tasked to promote creative
intellectual activity and technology transfer to developing countries “in order to
accelerate economic, social and cultural development.”
Of course, as we have learned already, this can be done with flexible
systems of intellectual property protection. WIPO promotes development
through intellectual property policy in several ways. In addition to being a
leading forum for negotiating new treaties and agreements (including their
flexibilities), WIPO

 administers some of the most important processes for protecting

intellectual property rights internationally,

 provides training and education,

 legislative and technical assistance

 serves as a reservoir of rich databases of intellectual property-related

information.

WIPO has, in the past, heard suggestions from its Member States, non-
governmental organizations and others to improve work in the area of
intellectual property and development. Some of these suggestions date back
several decades, since the issue of intellectual property and development
surfaced in the 1960s. None, however, have had as much impact as a formal
initiative, first advanced by Argentina and Brazil in 2004, for a new and
specific “Development Agenda.”

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The Development Agenda

The WIPO Development Agenda, sometimes called the “DA” for short,
is part of a change in the ways that links between intellectual property and
development are understood, and consequently in the way that development
issues are prioritized. For example, this could be by emphasizing flexibilities in
the intellectual property system that could help development. You will recall
from earlier in this module that development is no longer viewed as solely
about economic growth, and that it is increasingly appreciated how intellectual
property alone can or cannot impact development. It must be emphasized
again that nothing in the Development Agenda rejects the benefits of
intellectual property rights. To the contrary, the Agenda confirms that
intellectual property can and does facilitate development in many
circumstances.
It is because an understanding of these circumstances in local and
global contexts will help countries and organizations to better design,
administer and use intellectual property systems that the WIPO Development
Agenda seeks to further deepen appreciation of this topic. Recognizing both
the benefits and costs of intellectual property in light of social, cultural and
economic issues actually makes intellectual property a more important subject
than if the focus were on protection alone.
For example, copyright protection is very important for many kinds of
creators, including authors and book publishers. Without copyright protection,
it would be much more difficult to set the price and conditions of access to
books, which sustains the publishing industry. At the same time, however,
copyright protection may not provide the right market incentives to guarantee
that books are produced in a manner accessible to everyone, including
speakers of local languages or persons with perceptual disabilities. So the
international copyright system includes a mechanism – an appendix to the
Berne Convention –to permit countries to issue compulsory licenses
authorizing the translation of books into certain local languages. And
negotiations are ongoing among WIPO, its Member States, non-governmental
organizations and others about a groundbreaking new agreement for a
system to provide the perceptually disabled with access to copyright-protected
materials.
You can see the Berne Appendix: Special Provisions Regarding
Developing Countries by following a link given in the resources for this
module. Please look at the Appendix by clicking this link:
http://www.wipo.int/treaties/en/ip/berne/trtdocs_wo001.html. WIPO has also
created an entire website, www.visionip.org, dedicated to information about
access to copyright works for visually impaired persons.
Finding the right balance between intellectual property protections and
flexibilities like these is key to facilitating access to knowledge and improving
people’s lives throughout the world. It is an attempt to make the global
intellectual property system work better for everyone involved.

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The WIPO Development Agenda is part of a broader movement

reforming and updating the entire international trade framework. You may also
be aware of the so-called “Doha Development Agenda,” named after the city
in Qatar where the World Trade Organization’s current round of negotiations
began. Though these “agendas” are distinct from one another, cooperation
with other organizations including, but not limited to, the WTO on IP-related
issues is one of the specific recommendations adopted at the 2007 General
Assembly of WIPO Member States.
WIPO Member States adopted 45 such recommendations in total,
grouped into 6 clusters. These recommendations formally constitute the WIPO
Development Agenda. They aim to ensure that development considerations
form an integral part of the work of all sectors of the organization, in other
words, to “mainstream” development. Mainstreaming would mean, for
example, that all WIPO activities take account of the different potential
impacts of intellectual property on economic, social and cultural development.
It would be key to the design and delivery of technical assistance and
education; it would influence discussions about new treaties and agreements;
and it would be an important part of evaluating the successes or failures of
organizations working on intellectual property issues.
After the 45 recommendations arranged in 6 clusters were adopted at
WIPO’s 2007 General Assembly of Member States, much thought and
discussion was put into implementing them into practice.
It was agreed that this would happen through particular activities,
programs and “projects,” coordinated by a new division of WIPO: the
Development Agenda Coordination Division (DACD). In fact, the creation of
this learning module introducing the Development Agenda to you is one of the
concrete outcomes of an implementation project. The DACD serves as the
Secretariat for a new WIPO committee on development and intellectual
property (CDIP), coordinates the implementation and mainstreaming
( integration of the development agenda into all the activities of WIPO)of the
Development Agenda recommendations within WIPO, is the interface with
external stakeholders, and promotes better understanding of the Development
Agenda and its benefits.
This introductory lesson does not delve into the technical specifics of all
of the Development Agenda’s clusters, recommendations and implementation
projects. But it will give you some examples of the issues and outcomes of
this initiative. The 6 “clusters” of recommendations deal with the following
general topics:
- Technical assistance and capacity building (Cluster A).
- Norm-setting, flexibilities, public policy and public domain (Cluster B).
- Technology transfer, information and communication technologies
(ICT) and access to knowledge (Cluster C).
- Assessment, evaluation and impact studies (Cluster D).
- Institutional matters including mandate and governance (Cluster E).
- Other issues (Cluster F).

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Technical assistance and capacity building (Cluster A).

Recommendations in this cluster try to ensure, among other things, that
WIPO’s help with IP and development issues is transparent and responsive to
local requests. Of the cluster’s 14 recommendations, some suggest more
funding for development-oriented technical assistance, some offer guidelines
for hiring and reporting on the activities of staff and consultants, and some
address WIPO’s relationships with Member States and other organizations.
There are specific recommendations about topics of special importance, such
as the interface between intellectual property and competition policy, or
groups in particular need of help with IP issues, such as small and medium
sized enterprises. Recommendation 1 provides a good example of the themes
covered in this cluster:

1. WIPO technical assistance shall be, inter alia (among other things),
development-oriented, demand-driven and transparent, taking into account
the priorities and the special needs of developing countries, especially LDCs,
as well as the different levels of development of Member States …

This and other recommendations in Cluster A are being implemented,

among other ways, through projects such as increasing transparency by
creating a searchable database of WIPO’s technical assistance activities,
http://www.wipo.int/tad/en/. WIPO is also creating new nodes of the Global
Academy in developing countries, and supporting the development of national
IP strategies. The pilot project to set up “Start-Up” National IP Academies, for
example, will help developing countries and LDCs to establish IP training
institutions with minimum resources to meet their increasing demand for IP
specialists, professionals, government officials and other stakeholders.
Another project is to create a framework to assist all countries in
developing national IP strategies for innovation. For example it will directly
reference and support their development needs and priorities, and take into
account their specific economic circumstances and aspirations. The
framework, which will provide a conceptual basis for the design of IP
strategies, has strong links with others projects that aim to develop a practical
methodology, validated by a piloting process in selected countries, using a
series of practical tools. The framework will be developed by a cluster of
expert working groups comprised of eminent development economists from
around the world, IP experts and advisors from international organizations, in
the fields of trade, environment, culture and education, industry, health,
agriculture, and science and technology. The resulting framework, together
with the methodology and practical tools, will be made available to WIPO’s
Member States. WIPO will then provide its services to assist countries to
develop national IP strategies upon demand.

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Norm-setting, flexibilities, public policy and public domain (Cluster

B).
These eight recommendations are about making the process and
outcomes of negotiations over new intellectual property rules fairly balanced
and inclusive of various different perspectives. Very importantly, WIPO’s
activities in this respect shall take into account different levels of development
in different countries, as well as a balance between the costs and benefits of
intellectual property protection. The value of a robust public domain of
knowledge not protected by intellectual property rights is alluded to in several
recommendations. Issues that are especially important for some developing
countries, like the protection of genetic resources, traditional knowledge and
folklore, and access to knowledge and technology to foster creativity and
innovation, receive specific mention in recommendations within this cluster.
Many of these principles are captured well in Recommendation 15:

15. Norm-setting activities shall:

 be inclusive and member-driven;
 take into account different levels of development;
 take into consideration a balance between costs and benefits;
 be a participatory process, which takes into consideration the interests and
priorities of all WIPO Member States and the viewpoints of other
stakeholders, including accredited inter-governmental organizations
(IGOs) and NGOs; and
 be in line with the principle of neutrality of the WIPO Secretariat.

In the context of this cluster of recommendations for one of the

implementation projects WIPO has engaged an independent expert to prepare
studies on Intellectual Property and Public Domain.
Recognizing the importance of the public domain, the project will
comprise a series of surveys and studies that will analyze good practices and
the currently available tools for identifying content that is in the public domain
and to preserve such content from individual appropriation. The surveys and
studies should facilitate the subsequent possible steps in preparation of
guidelines and/or possible development of tools to facilitate the identification
of and access to public domain subject matter. The project is divided into
three components that will address the issue from the perspective of
copyright, trademarks and patents. A study about copyright and the public
domain was one of the first outcomes of this initiative. Linking what you
learned about Public Domain and Copyright in module two of this course,
http://www.wipo.int/meetings/en/doc_details.jsp?doc_id=147012.
A link to this document is also given in the resources section of this
module.
WIPO has also done work to study and promote flexibilities in the
intellectual property system, and to align its own activities embracing the

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United Nations Millennium Development Goals. In the Millennium Declaration,

all 189 member states of the United Nations set out within a single framework
the key challenges facing humanity at the threshold of the new millennium,
outlined a response to these challenges, and established concrete measures
for judging performance through a set of inter-related commitments, goals and
targets.
You can learn more about WIPO’s work related to the MDGs at:
http://www.wipo.int/ip-development/en/agenda/millennium_goals/.

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Technology transfer, information and communication technologies

(ICT) and access to knowledge (Cluster C).
Distributing the benefits of innovation and information as widely as
possible is a central aim of linking IP and development, so this cluster of eight
recommendations suggests several ways that may happen. Among those are
recommendations to encourage research collaborations and scientific
cooperation that might facilitate technology transfer to less developed
countries, and to expand the use of databases of intellectual property related
information, for example, of publicly available patent information.
Recommendation 25 is one of several that capture the essence of Cluster C:

25. To explore intellectual property-related policies and initiatives necessary to

promote the transfer and dissemination of technology, to the benefit of
developing countries and to take appropriate measures to enable developing
countries to fully understand and benefit from different provisions, pertaining
to flexibilities provided for in international agreements, as appropriate.

To implement this recommendation, along with several others, the

Development Agenda Coordination Division is working on a project called,
“Intellectual Property and Technology Transfer: Common Challenges –
Building Solutions,” which includes meetings, studies and a high-level expert
forum. This project involves preparation or updating and improving a series of
modules and materials relating to managing IP rights by academic and
research institutions, including on the setting up and running of technology
transfer offices at public research organizations, exploring technology transfer
mechanisms (in particular, licensing agreements) and enhancing the capacity
to draft patents.

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Assessment, evaluation and impact studies (Cluster D).

Before IP laws, policies and practices can be best used or improved,
their impact must be better assessed and understood. That is the focus of 5
recommendations in Cluster D. In addition to recommending a yearly review
and evaluation mechanism to assess all of WIPO’s development-oriented
activities against appropriate benchmarks, this cluster proposes some specific
topics to be studied, including open collaborative projects, intellectual property
in the informal economy, and economic, social and cultural impacts of
intellectual property. Recommendation 38, the last in this cluster, nicely
captures the overarching objective:

37. Upon request and as directed by Member States, WIPO may conduct
studies on the protection of intellectual property, to identify the possible links
and impacts between intellectual property and development.

The project on economic and social development consists of a series of

studies on the relationship between IP protection and various aspects of
economic performance in developing countries. They would seek to narrow
the knowledge gap faced by policymakers in those countries in designing and
implementing a development-promoting intellectual property (IP) regime. The
envisaged studies would focus on three broad themes:
 domestic innovation,
 the international and national diffusion of knowledge,
 and institutional features of the IP system and its economic
implications.
The benefits will be to ppromote better understanding of the socio-economic
effects of IP protection in developing countries, and create analytical capacity
in countries where little economic work on IP has been undertaken so far.
The separate project on open collaboration models will initiate and explore a
range of activities for exchanging experiences on open innovation
environments (including user-centric environments where users co-create
innovations through open collaborative agreements) in developed and
developing countries.

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Institutional matters including mandate and governance (Cluster

E).
Here is where WIPO’s own processes and activities, and its
relationships with other important inter- and non-governmental organizations,
are specifically considered. Some of the matters covered by these 6
recommendations are also addressed in other clusters, such as suggesting a
review of current technical assistance activities, cooperating with other United
Nations agencies, and enhancing the ability of stakeholders to participate in
decision-making processes. Take Recommendation 40, for example, which is
important because it emphasizes that intellectual property is only one part of a
comprehensive strategy for development. It must be related to issues like
trade, health, the environment, education, science and culture, which within
the purview of other United Nations bodies or multilateral organizations.

40. To request WIPO to intensify its cooperation on IP related issues with

United Nations agencies, according to Member States’ orientation, in
particular UNCTAD, UNEP, WHO, UNIDO, UNESCO and other relevant
international organizations, especially the WTO in order to strengthen the
coordination for maximum efficiency in undertaking development programs.

To implement some of the recommendations in this cluster, WIPO has

worked to involve more non-governmental organizations in its activities, and is
working more closely with other United Nations agencies. Moreover, WIPO is
working with independent experts to conduct a large-scale evaluation of its
technical assistance activities in the area of cooperation for development.
Expected benefits from this project include:

 adapting and strengthening WIPO’s existing management

framework to ensure that there is a strong focus across all
relevant programs on the impact of the Organization’s activities
on development, including technical assistance.

 a contribution to the monitoring and evaluation culture within the

Organization, and

 assistance to the systematic collection and use of performance

information to ensure accountability, and support informed
decision-making by the Organization and its stakeholders. This
will also increase the capacity and ability for independent and
objective evaluations of the development impact of WIPO’s
activities.

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Cluster F: Other issues.

There is only one recommendation in this cluster, Recommendation 45,
but it goes to the heart of the Development Agenda: IP protection and
enforcement should mutually benefit of knowledge producers and users, in a
broad, social context. This idea underpins many recommendations in other
clusters, such as those which emphasize the need to consider both the costs
and benefits of intellectual property protection, the links between intellectual
property and competition policy, the importance of recognizing different levels
of economic, social and cultural development, and so on. It is why language
and principles are shifting from “enforcement” of IP to instead focus on
“respect” for IP.

None of the implementation projects so far reference Recommendation 45

specifically. But this is because this recommendation, more than many other
recommendations, is fundamentally about making sure that the spirit of the
Development Agenda – balancing intellectual property protection and wider
societal interests – infuses general attitudes and activities at WIPO and
beyond. This is partly what “mainstreaming” development means.
As a practical example, during a recent meeting of WIPO’s Advisory
Committee on Intellectual Property Enforcement (ACE), the principles behind
Recommendation 45 had a clear impact. The ACE’s work includes a review of
methodologies applied in existing studies to measure the economic impact of
counterfeiting and piracy; research to identify different types of infractions and
motivations for IPR infringements, taking into account social, economic and
technological variables and different levels of development; targeted studies
with an aim to developing analytical methodologies that measure the social,
economic and commercial impact of counterfeiting and piracy on societies,
taking into account the diversity of economic and social realities as well as
different stages of development; and an analysis of various efforts, alternate
models and other possible options from a socio-economic welfare perspective
to address counterfeiting and piracy challenges.

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What does the future hold for issues of intellectual property and
development?
The Development Agenda is not exactly like most of the treaties and
agreements administered by WIPO because it is more policy than typical
international law, but it will have an ongoing impact on the organization, its
Member States and, indeed, all of those who are interested in the global
intellectual property system.
For one thing, more people now appreciate that intellectual property
must be understood as part of a carefully balanced system of laws, policies
and practices that recognize and encourage creativity and innovation, to the
benefit of society a whole. In that context, the Development Agenda is not
about promoting stronger or weaker intellectual property systems: it is about
promoting better intellectual property systems. That requires great sensitivity
to local social, cultural and economic circumstances, which WIPO and its
Member States are increasingly demonstrating.
This task is not for WIPO alone. Implementation of the principles
underpinning the Development Agenda must take place at regional, national
and local levels too. Everyone who holds a stake in the intellectual property
system needs to think critically about the outcomes they want to achieve, and
how intellectual property can be leveraged appropriately to those ends.

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Summary

A well balanced system of granting and exploiting intellectual property

rights is a factor in economic growth as it encourages investment and trade,
but if designed and used appropriately, it can also help cultural creativity to
thrive, educate a population or workforce, drive technological innovation to
improve health and nutrition and yield other social benefits as well. In other
words help development in its broadest sense.
It is how laws, policies and practices are designed and used in different
countries that determine whether IP is effective for development purposes.
Flexibilities in treaties and agreement are key to this. Such flexibilities are
inherent in the TRIPs agreement and may concern patents copyrights or other
forms of Intellectual Property.
Development is at the core of WIPO’s mandate and in 2004 a formal
initiative, first advanced by Argentina and Brazil, lead into what became called
a new and specific “Development Agenda.” At the 2007 General Assembly the
Member States of WIPO adopted 45 such recommendations relating to IP and
development, grouped into 6 clusters. These recommendations formally
constitute the WIPO Development Agenda. They aim to ensure that
development considerations form an integral part of the work of all sectors of
the organization, in other words, to “mainstream” development. Mainstreaming
became to mean that all WIPO activities take account of the different potential
impacts of intellectual property on economic, social and cultural development.
The 6 “clusters” of recommendations deal with the following general
topics:

- Technical assistance and capacity building (Cluster A).

- Norm-setting, flexibilities, public policy and public domain (Cluster B).

- Technology transfer, information and communication technologies

(ICT) and access to knowledge (Cluster C).

- Assessment, evaluation and impact studies (Cluster D).

- Institutional matters including mandate and governance (Cluster E).

- Other issues (Cluster F).

The Development Agenda is not exactly like most of the treaties and
agreements administered by WIPO because it is more policy than typical
international law, but it will have an ongoing impact on the organization, its
Member States and, indeed, all of those who are interested in the global
intellectual property system.

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Frequently Asked Questions (FAQs)

1. Is the WIPO development agenda an alternative to existing
intellectual property rights regime?
Well not quite. It is a new more modern way of thinking about the intellectual
property regime globally, and especially, but not only, in developing countries.
Rather than promoting intellectual property protection as an end in itself, the
development agenda suggests that we consider how intellectual property can
or cannot be used as a means to broader ends, including economic growth
and also population health, food security, environmental sustainability, cultural
diversity and so on. The development agenda recognises that achieving those
goals requires an appropriately balanced intellectual property system, and that
could involve making changes to existing intellectual property rules but it could
also mean using existing intellectual property rules in new ways, like the
creative commons licensing model which uses the existing copyright system
to facilitate sharing and collaboration.
2. Is the implementation of the WIPO development agenda going to
lead to an increase in infringements of patent rights?
No. There are aspects of the development agenda that will make it easier for
the citizens and businesses of developing countries to use the patent system.
For example the development agenda has led to projects that will build
capacity in local IP offices, or make it easier to access information about
patents and patented technologies. These projects will not undermine the
pattern system; they will improve it
In what way?
By making it easier for everyone, including people in developing countries, to
uses that patent system as it is, so it will not lead to more patent infringement,
it will lead to better use of the patent system
3. Isn’t it true that the technology transfer mentioned in the
development agenda is only related to patents, there is no role in other
IP such as trademarks?
No that is not true. For example, trademarks generally protect companies
branding and goodwill associated with that branding, so this is one of several
intellectual property tools that helps to facilitate the transfer of technology from
developed to developing countries for example. Or from the public sector to
the private sector, from universities to companies for instance. In fact
developing countries themselves are now home to some of the worlds most
valuable brands. Elsewhere in this course, we mention examples of TATA, the
Indian company which, amongst many other things, manufactures
automobiles and M-PESA, the mobile banking service that started in Kenya
and has since spread to many other countries. So these are very valuable
brands that can be protected by trademarks and these examples show that
trademarks are not just a tool used by developed countries but in fact can be
used by countries at any stage of development to protect brands and
associated goodwill.
It is common that when you are talking about technology transfer you are
talking about a patent issue because patents are a type of intellectual property

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right that protects technology. Copyrights operate, usually in the cultural

industries. Trademarks protect consumer recognition of valuable brands and
companies goodwill. Patents protect technology but if you are looking at
technology transfer you have got to look at the entire enterprise or the entire
package of intangible assets, and so the brand and the trademark is clearly an
important part of the process of technology transfer, patents are not the only
issue
4. Isn’t the development agenda just about giving technical
assistance to developing and the least developed countries?”
Not entirely, no. People in developed countries also have much to gain from
the development agenda. The development agenda is about making the
intellectual property system work better for everyone and it does that by
recognising that the right approach toward intellectual property might be
different, depending on local economics, social or cultural circumstances. The
key is to use the flexibilities that exist in the international system to create
policies and practices that best suit the particular situation in your country.
Could you give an example of a flexibility?
The TRIPS agreement makes it possible for countries to use compulsory
licensing of patents in certain circumstances. Where there is a health
emergency, for example, if it is necessarily to treat a pandemic like the Avian
Flu. The patent in that circumstance can sometimes be a challenge for making
and providing access to medicines in a timely and cost effective manner. So
the TRIPS agreement has a system of flexibility built in, that countries can use
what we call compulsory licensing, to compensate a patent owner for the fact
that a government may be using a patented invention of technology or
medicine without the patentees’ permission. It is important to note that the
patentee still receives compensation in these circumstances, but the licence is
compulsory or mandatory.
And that is what would be termed flexibility in the patent regime?
The international patent system is flexible enough to balance the protection of
intellectual property with global or national population and health concerns.
Is that actually the TRIPS rules that allow that or is it the patent rules in a
country?
It is a sequential process, so the TRIPS sets up the global framework. Rather
than requiring a one size fits all model of global intellectual property
protection, the international agreements set out the basic general framework
and each country can apply that framework in its local environments as
appropriate.
The key point is that the general provisions of the TRIPS agreement are
flexible enough to allow any country to implement it in a way that is most
appropriate for its local economic or social or cultural circumstances. An
important part of the development agenda is informing developing countries
about the existence of these flexibilities and helping developing countries,
through technical assistance and capacity building for example, to understand
how they can use these flexibilities most appropriately.

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5. The development agenda does not concern copyright does it?

Oh yes it does, all kinds of intellectual property rights play a role in
development. Now, copyright is more relevant to the cultural industries of
music and publishing and film, but it is also very important in the context of
other important development issues like universal education. Think, the
production, distribution and accessibility of text books, or on-line learning
materials, which are copyright protected. So the rules of copyright can’t be
ignored when it comes to promoting development for the development
agenda.
6. Is bio-piracy outside the remit of the development agenda?
The development agenda does not mention the issue of bio piracy formally or
specifically, but bio piracy is part of the broader context behind the
development agenda. Many developing countries are very rich in terms of
biological resources so they want to guarantee a fair system for providing
access to these resources and for sharing the benefits when these resources
are exploited, so the development agenda does include specific
recommendations for WIPO to co-operate with other organisations addressing
these kinds of challenges. So for example there is significant overlap between
the work of WIPO and the work of the convention and biological diversity, in
creating and international agreement on access and benefit sharing for
traditional knowledge and genetic resources.
And in fact if you view bio piracy as part of a broader issue related to
traditional knowledge and genetic resources of indigenous and local
communities then that can’t be divorced from the background of the
development agenda and the reality in which the agenda has been
implemented through practical projects.
7. Can you give some more examples of flexibilities in the TRIPS
agreement?
The TRIPS agreement contains some flexibilities which enable countries to
create domestic IP regime that suits their local circumstances. I mentioned
compulsory licensing as one example. There are other examples. Under the
TRIPS agreement it is not mandatory to provide patent protection for plants.
This can be done through a ‘sui generis’ or unique system for protecting plant
breeders’ rights for instance, instead of patenting plants countries have gone
for protecting plant breeder’s rights. The TRIPS agreement sets out minimum
terms for copyright protection. It has to last through the life of the author plus
fifty years, but it doesn’t require countries to go beyond that, so while some
countries, or some places like the United States and the European Union
have gone beyond the minimum requirements, that is not an obligation in the
TRIPS agreement. Now there is considerable debate in the international
community about whether the TRIPS agreement strikes precisely the right
balance and where improvements in the international system might be made,
but in general there are a lot of opportunities to use flexibilities. The key is
sharing information about what those flexibilities are and helping the countries
to determine when it is appropriate to use them.

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8. Can you explain in more detail what mainstreaming the

development agenda means?
Mainstreaming the development agenda means thinking about the
implications of intellectual property for all aspects of development. So that
means not only economic growth but also other key indicators of human
freedom and capabilities like a healthy population or a sustainable
environment or food security or universal education or cultural diversity for
example. What mainstreaming requires is to think about theses broad
important issues related to development in all of the activities of WIPO and all
the activities of WIPOs stakeholders. So that includes not only the
organisation itself but also member states. In their intellectual property office it
includes the academic research community; it includes intellectual property
practitioners, businesses that use intellectual property and non-governmental
organisations and civil society. Together the stakeholders need to think about
ways in which intellectual property can be used to create shared value, and
that idea of creating value through intellectual property has to, any
implications for these broad public policy issues related to development, must
inform all of their activities
9. How is the development agenda adopted in 2007 related to
previous development initiatives at WIPO?
When WIPO was first created its mandate was to promote the protection of
intellectual property around the world. When it became a specialised agency
of the United Nations, that mandate changed a little bit and it became
necessary to think about intellectual property as a tool for facilitating
development. That means not protecting intellectual property simply as an end
in itself but promoting intellectual property as a means to work broader public
policy objectives. WIPO worked on this for many years and in 2007 it was
proposed formally that there be a reorientation or realignment of the way in
which WIPO was conducting these activities relating to development and its
activities in that regard. So the development agenda adopted in 2007 is really
a realignment of WIPOs activities with its fundamental mandate as the
specialised agency of the United Nations responsible for intellectual property
and development.
10. Is the development agenda a treaty or an agreement like the
others already studied on the course?
No. The development agenda is different from the TRIPS agreement or the
Berne convention or the WIPO intranet treaties that you have heard about
elsewhere in the course, or the patent cooperation treaty that you have heard
about elsewhere in the course. The development agenda is a set of 45
recommendations. Those recommendations were debated and proposed by a
WIPO committee of member states and unanimously adopted by the general
assembly but it is not a treaty that must be complied with or must be
implemented into domestic law. It is more of a policy instrument that guides
the activities of WIPO and its member’s states, globally and domestically, in
their activities, including implementing other treaties, designing policies,
administering intellectual property systems and so on. It is not a treaty in itself.

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Web Resources
You can see the Berne Appendix: Special Provisions Regarding Developing
Countries by following a link given in the resources for this module by clicking
this link: http://www.wipo.int/treaties/en/ip/berne/trtdocs_wo001.html

WIPO has also created an entire website, http://www.visionip.org, dedicated

to information about access to copyright works for visually impaired persons

A study about copyright and the public domain was one of the first outcomes
of this initiative
http://www.wipo.int/meetings/en/doc_details.jsp?doc_id=147012.

You can learn more about WIPO’s work related to the MDGs at:
http://www.wipo.int/ip-development/en/agenda/millennium_goals/

Cluster C “Intellectual Property and Technology Transfer: Common

Challenges – Building Solutions,” You could learn more about the project, if
you wish to, at
http://www.wipo.int/meetings/en/doc_details.jsp?doc_id=156582

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Relevant Documents
The 45 Recommendations Adopted under the WIPO Development Agenda,
World Intellectual Property Organisation, http://www.wipo.int/ip-
development/en/agenda/recommendations.html
If you have a smart phone here are some resources that you can access on
the move

Development agenda concise description

Misconceptions concerning the development

agenda

Interview with Glyn Martin discussing the

Development Agenda and his role in the project

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 Special Module: The Marrakesh Treaty

Objectives ...........................................................................................................2
Study Note ..........................................................................................................2
Introduction .........................................................................................................2
1.0 The essential mechanisms ...........................................................................2
2.0 Definitions .....................................................................................................3
3.0 Additional built in flexibility ............................................................................4
4.0 Respect for the existing framework ..............................................................4
5.0 Additional measures .....................................................................................5
Further Reading..................................................................................................6
 Objectives

When you have completed this module you should be able to:

1. Summarize in around 100 words the aim of the Marrakesh Treaty.

2. Describe in around 100 words how the Marrakesh Treaty fits in with the exiting
legal framework.

3. Describe in around 300 words the approach adopted by the Marrakesh Treaty.

Study Note

You should take around 1 hour to study this module

Introduction

This module deals with the Marrakesh Treaty to facilitate access to published
works for persons who are blind, visually impaired, or otherwise print disabled. That
treaty was adopted on 27th June 2013 and is currently awaiting ratification and entry
into force.
The Berne Convention and the TRIPS Agreement have always allowed
member states to take specific measures in favour of the blind and the visually
impaired, mainly by means of exceptions and limitations. Despite this many countries
felt they were struggling on this point and that insufficient works were made available
to the blind and the visually impaired in a suitable format.

1.0 The essential mechanisms

This combination of on the one hand an existing solution and on the other hand
a feeling that the correct result was not always achieved gave rise to a dual starting
point.
The basic principle in article 4.1 takes the existing situation on board and turns
the option to provide for an exception or a limitation into a positive obligation to do so:
1. (a) Contracting Parties shall provide in their national copyright laws for a limitation
or exception to the right of reproduction, the right of distribution, and the right of
making available to the public as provided by the WIPO Copyright Treaty (WCT),
to facilitate the availability of works in accessible format copies for beneficiary
persons. The limitation or exception provided in national law should permit changes
needed to make the work accessible in the alternative format.
(b) Contracting Parties may also provide a limitation or exception to the right of
public performance to facilitate access to works for beneficiary persons.
And the finding that the existing option is not always working leads to member
states being given the option to put in place authorised entities that can take on
board the task of making accessible format copies of works available:

2
2. A Contracting Party may fulfill Article 4(1) for all rights identified therein by
providing a limitation or exception in its national copyright law such that:
a. Authorized entities shall be permitted, without the authorization of the copyright
rightholder, to make an accessible format copy of a work, obtain from another
authorized entity an accessible format copy, and supply those copies to
beneficiary persons by any means, including by non-commercial lending or by
electronic communication by wire or wireless means, and undertake any
intermediate steps to achieve those objectives, when all of the following
conditions are met:
(i) the authorized entity wishing to undertake said activity has lawful access to
that work or a copy of that work;
(ii) the work is converted to an accessible format copy, which may include any
means needed to navigate information in the accessible format, but does
not introduce changes other than those needed to make the work accessible
to the beneficiary person;
(iii) such accessible format copies are supplied exclusively to be used by
beneficiary persons; and
(iv) the activity is undertaken on a non-profit basis;
3. and
(a) A beneficiary person, or someone acting on his or her behalf including a primary
caretaker or caregiver, may make an accessible format copy of a work for the
personal use of the beneficiary person or otherwise may assist the beneficiary
person to make and use accessible format copies where the beneficiary person
has lawful access to that work or a copy of that work.

2.0 Definitions

These provisions work on the basis of a set of definitions:

1. The beneficiary persons are defined as follows (article 3):
A beneficiary person is a person who:
is blind;
(b) has a visual impairment or a perceptual or reading disability which cannot be
improved to give visual function substantially equivalent to that of a person who
has no such impairment or disability and so is unable to read printed works to
substantially the same degree as a person without an impairment or disability;
or
(c) is otherwise unable, through physical disability, to hold or manipulate a book or
to focus or move the eyes to the extent that would be normally acceptable for
reading;
regardless of any other disabilities.
2. Works, accessible format copy and authorised entity are defined as follows (article
2):
For the purposes of this Treaty:

3
 a. “works” means literary and artistic works within the meaning of Article 2(1) of
the Berne Convention for the Protection of Literary and Artistic Works, in the
form of text, notation and/or related illustrations, whether published or otherwise
made publicly available in any media;
b. “accessible format copy” means a copy of a work in an alternative manner or
form which gives a beneficiary person access to the work, including to permit
the person to have access as feasibly and comfortably as a person without
visual impairment or other print disability. The accessible format copy is used
exclusively by beneficiary persons and it must respect the integrity of the
original work, taking due consideration of the changes needed to make the work
accessible in the alternative format and of the accessibility needs of the
beneficiary persons;
c. “authorized entity” means an entity that is authorized or recognized by the
government to provide education, instructional training, adaptive reading or
information access to beneficiary persons on a non-profit basis. It also includes
a government institution or non-profit organization that provides the same
services to beneficiary persons as one of its primary activities or institutional
obligations.
An authorized entity establishes and follows its own practices:
(i) to establish that the persons it serves are beneficiary persons;
(ii) to limit to beneficiary persons and/or authorized entities its distribution and
making available of accessible format copies;
(iii) to discourage the reproduction, distribution and making available of
unauthorized copies; and
(iv) to maintain due care in, and records of, its handling of copies of works, while
respecting the privacy of beneficiary persons in accordance with Article 8.

3.0 Additional built in flexibility

There may or there may not have to be remuneration in conjunction with the
use of the limitations and exceptions that are provided for by national laws to
implement this treaty. The Treaty leaves that specifically to the national laws
concerned.
It is of course the case that commercial operators will also make appropriate
formats available on the market. Contracting parties can stimulate that by making use
of the option that the use of the limitations and exceptions in confined to those
situations where a particular accessible format cannot be obtained commercially by
the beneficiary under reasonable terms.

4.0 Respect for the existing framework

The Marrakesh Treaty quite deliberately sets out to inscribe itself in the line of
the other existing intellectual property treaties. Article 1 makes it clear that there will
be no derogations from any obligations under any existing treaty and article 11 clearly

4
imposes respect for the three-step test whenever limitations and exceptions are
introduced in application of the Marrakesh Treaty.
This treaty is therefore nothing more, but also nothing less, than an add-on to
the existing legal framework and that add on respects the basic principles of the
existing legal framework. It merely facilitates the use of limitations and exceptions in
favour of the blind and the visually impaired and for that purposes a couple of
additional specific measure have been added.

5.0 Additional measures

One of the problems that were experienced specifically by developing and least
developing countries was the difficulty to import in acceptable circumstances copies
of foreign works. Adding to that the requirement of an acceptable format for the blind
and the visually impaired aggravated the situation further. Article 5 tries to remedy that
problem by allowing the cross-border exchange of accessible format copies:

1 Contracting Parties shall provide that if an accessible format copy is made

under a limitation or exception or pursuant to operation of law, that accessible
format copy may be distributed or made available by an authorized entity to a
beneficiary person or an authorized entity in another Contracting Party.

And article 6 adds to that the permission to import accessible format copies:
To the extent that the national law of a Contracting Party would permit a
beneficiary person, someone acting on his or her behalf, or an authorized entity, to
make an accessible format copy of a work, the national law of that Contracting Party
shall also permit them to import an accessible format copy for the benefit of beneficiary
persons, without the authorization of the rightholder.
Finally, technological measures can make it impossible in practice to produce
accessible format copies. Article 7 remedies that and makes it impossible to overrule
the exceptions and limitations that implement the Marrakesh Treaty by means of
technological measures:
Contracting Parties shall take appropriate measures, as necessary, to ensure
that when they provide adequate legal protection and effective legal remedies against
the circumvention of effective technological measures, this legal protection does not
prevent beneficiary persons from enjoying the limitations and exceptions provided for
in this Treaty.
There are various issues that still arise in an Internet context that relate to
copyright. Many of these issues are still developing and have not yet been addressed
by legislators at national and/or international level. Some other issues have been
addressed already and have been dealt with in the WCT and the WPPT, also referred
to as the WIPO Internet Treaties.
The issues that are dealt with include:
 Digitization and the integration of various classes of works – the challenge to
copyright
 How use of works on the Internet affects copyright

5
  The impact on private international law
 Infringement issues
 The role of traditional defenses against infringement
 The role of technical devices to prevent piracy
 The role of technical devices to facilitate the administration and clearance of
intellectual property rights

Further Reading

http://www.wipo.int/dc2013/en/