TRIPS -- Introduction © 2006-2007 David W. Opderbeck

TRIPS -- IntroductionTRIPS -- Introduction

© 2006-2007 David W. Opderbeck


““Trade Related Aspects of Trade Related Aspects of Intellectual Property”Intellectual Property”

Adopted under General Agreement Adopted under General Agreement on Tariffs and Trade (“GATT”) on Tariffs and Trade (“GATT”)

National treatment and relatively National treatment and relatively strong minimum standardsstrong minimum standards

Administered by World Trade Administered by World Trade Organization (“WTO”) and enforced Organization (“WTO”) and enforced through WTO sanctionsthrough WTO sanctions


Article 7 – Objectives: “The protection and Article 7 – Objectives: “The protection and enforcement of intellectual property rights enforcement of intellectual property rights should contribute to the promotion of should contribute to the promotion of technological innovation and to the transfer technological innovation and to the transfer and dissemination of technology, to the and dissemination of technology, to the mutual advantage of producers and users of mutual advantage of producers and users of technological knowledge and in a manner technological knowledge and in a manner conducive to social and economic welfare, conducive to social and economic welfare, and to a balance of rights and obligations.”and to a balance of rights and obligations.”– What views about IPRs does this presupposeWhat views about IPRs does this presuppose


Part I, General PrinciplesPart I, General Principles– Article 3 – Article 3 – National TreatmentNational Treatment– Article 4 – Most Favored Nation Treatment: any Article 4 – Most Favored Nation Treatment: any

special privilege granted to one member special privilege granted to one member country automatically applies to all member country automatically applies to all member countriescountries

– Article 8 – public health / non-abuse: may adopt Article 8 – public health / non-abuse: may adopt measures “necessary to protect public health measures “necessary to protect public health and nutrition, and to promote the public interest and nutrition, and to promote the public interest in sectors of vital importance to their socio-in sectors of vital importance to their socio-economic and technological development” economic and technological development”

TRIPS -- CopyrightsTRIPS -- Copyrights

Article 9(1) – Relation to Berne Article 9(1) – Relation to Berne Convention – all rights covered except Convention – all rights covered except moral rightsmoral rights– Why not cover moral rightsWhy not cover moral rights– Does this fill the holes we covered re: Does this fill the holes we covered re:

copyrights under the Berne Convention?copyrights under the Berne Convention? Definition of “author”?Definition of “author”? Scope of fair use rights?Scope of fair use rights?

Article 9(2) – Article 9(2) – “Copyright protection shall “Copyright protection shall extend to expressions and not to ideas, extend to expressions and not to ideas, procedures, methods of operation or procedures, methods of operation or mathematical concepts as such.”mathematical concepts as such.”


Article 10 -- Computer programs Article 10 -- Computer programs protected; data compilations protected protected; data compilations protected as compilations if compilation is an as compilations if compilation is an “intellectual creation”, but underlying “intellectual creation”, but underlying data not necessarily protectibledata not necessarily protectible– Does this resolve “sweat of the brow” and Does this resolve “sweat of the brow” and

database issues?database issues?


EU Database DirectiveEU Database Directive– Article 3 – mirrors TRIPS “intellectual creation” languageArticle 3 – mirrors TRIPS “intellectual creation” language– Article 5 – covers reproduction “by an means and in whole Article 5 – covers reproduction “by an means and in whole

or in part”or in part”– Article 6 – exceptions – “illustration for teaching or scientific Article 6 – exceptions – “illustration for teaching or scientific

research,” with attribution for “non-commercial purpose”research,” with attribution for “non-commercial purpose”– Article 7 – “member states shall provide a right for the Article 7 – “member states shall provide a right for the

maker of a database which shows that there has been maker of a database which shows that there has been qualitatively and/or quantitatively a substantial investment qualitatively and/or quantitatively a substantial investment in either the obtaining, verification or presentation of the in either the obtaining, verification or presentation of the contents to prevent extraction and/or re-utilization of the contents to prevent extraction and/or re-utilization of the whole or of a substantial part, evaluated qualitatively whole or of a substantial part, evaluated qualitatively and/or quantitatively, of the contents of that database”and/or quantitatively, of the contents of that database”

– Article 7(3) – right is transferable by assignment or licenseArticle 7(3) – right is transferable by assignment or license– Article 8 – public right to extract and/or reutilize Article 8 – public right to extract and/or reutilize

“insubstantial parts” of the database’s contents“insubstantial parts” of the database’s contents– Article 10(1) – 15 year termArticle 10(1) – 15 year term

TRIPS – Copyrights – TRIPS – Copyrights – British Horseracing British Horseracing CaseCase FactsFacts

– P is governing authority of British horseracing P is governing authority of British horseracing industryindustry

– P compiles electronic database of all registered P compiles electronic database of all registered horses, jockeys, ratings, race dates, times, entry horses, jockeys, ratings, race dates, times, entry conditions, etc.conditions, etc.

– Database work costs Database work costs ££4M and involves 80 4M and involves 80 employeesemployees

– Pre-race information is verified for accuracyPre-race information is verified for accuracy– D is a bookmaker. Uses info from BHB database D is a bookmaker. Uses info from BHB database

on its Internet betting site (date, time, place and on its Internet betting site (date, time, place and name of the races, with the list of runners and name of the races, with the list of runners and riders) riders) http://www.willhill.com/iibs/EN/sportsbook.ahttp://www.willhill.com/iibs/EN/sportsbook.aspsp

TRIPS – Copyrights – TRIPS – Copyrights – British Horseracing British Horseracing CaseCase AnalysisAnalysis

– D argued that D argued that only “databaseness,” and not individual bits only “databaseness,” and not individual bits

of data, is protectible.of data, is protectible. Regular updating of database results in Regular updating of database results in

multiple databasesmultiple databases it only used “insignificant” parts of the it only used “insignificant” parts of the

database compared to the wholedatabase compared to the whole– Lower court rejected both of these argumentsLower court rejected both of these arguments– On appeal, because of conflicting cases from On appeal, because of conflicting cases from

other jurisdictions, higher court referred the other jurisdictions, higher court referred the question to the ECJ question to the ECJ

TRIPS – Copyrights – TRIPS – Copyrights – British Horseracing British Horseracing CaseCase ECJ decision: ECJ subsequently decided that ECJ decision: ECJ subsequently decided that

BH’s database was not protectible.BH’s database was not protectible. The ECJ held that the kind of info D used must The ECJ held that the kind of info D used must

be gathered by BH in the ordinary course of its be gathered by BH in the ordinary course of its administrative duties, apart from creating any administrative duties, apart from creating any database; the database is only incidental to database; the database is only incidental to BH’s primary duties. Therefore, BH does not BH’s primary duties. Therefore, BH does not have rights in this data.have rights in this data.

ECJ also held that D had not extracted or re-ECJ also held that D had not extracted or re-utilized a “substantial part” of the database, utilized a “substantial part” of the database, because it was only small amounts of data in because it was only small amounts of data in relation to the wholerelation to the whole

TRIPS -- PatentsTRIPS -- Patents Article 27 – Article 27 – ProtectibleProtectible Subject Matter Subject Matter – –

“patents shall be available for any inventions, “patents shall be available for any inventions, whether products or processes, in all fields of whether products or processes, in all fields of technology, provided that they are new, technology, provided that they are new, involve an inventive step and are capable of involve an inventive step and are capable of industrial application “industrial application “

Article 27(2) exception: “Members may Article 27(2) exception: “Members may exclude from patentability inventions, the exclude from patentability inventions, the prevention within their territory of the prevention within their territory of the commercial exploitation of which is necessary commercial exploitation of which is necessary to protect to protect ordre publicordre public or morality, including or morality, including to protect human, animal or plant life or to protect human, animal or plant life or health or to avoid serious prejudice to the health or to avoid serious prejudice to the environment”environment”

TRIPS -- PatentsTRIPS -- Patents

Article 27(3) exceptions: Members may Article 27(3) exceptions: Members may exclude from patentability: “(a) diagnostic, exclude from patentability: “(a) diagnostic, therapeutic and surgical methods for the therapeutic and surgical methods for the treatment of humans or animals; (b) plants treatment of humans or animals; (b) plants and animals other than micro-organisms, and animals other than micro-organisms, and essentially biological processes for the and essentially biological processes for the production of plants or animals other than production of plants or animals other than non-biological and microbiological non-biological and microbiological processes. However, Members shall provide processes. However, Members shall provide for the protection of plant varieties either by for the protection of plant varieties either by patents or by an effective patents or by an effective sui generissui generis system system or by any combination thereof.”or by any combination thereof.”

TRIPS -- PatentsTRIPS -- Patents

Does this fill holes in Paris Convention?Does this fill holes in Paris Convention?– Definition of patentable subject matter?Definition of patentable subject matter?– Novelty vs. Absolute Novelty?Novelty vs. Absolute Novelty?– Public policy exceptions?Public policy exceptions?

TRIPS – Patents – Welcome TRIPS – Patents – Welcome Case – Industrial Application Case – Industrial Application and Medical Exceptionsand Medical Exceptions

Facts: method of treating Facts: method of treating leukemia using known leukemia using known compounds which were used in compounds which were used in the past to treat malariathe past to treat malaria

Issue: is a new medical use of a Issue: is a new medical use of a known compound patentable?known compound patentable?

TRIPS – Patents – Welcome TRIPS – Patents – Welcome Case – Industrial Application Case – Industrial Application and Medical Exceptionsand Medical Exceptions ““I respectfully think a deep-seated sense that the art I respectfully think a deep-seated sense that the art

of the physician or the surgeon in alleviating human of the physician or the surgeon in alleviating human suffering does not belong to the area of economic suffering does not belong to the area of economic endeavor or trade and commerce…. ‘We are endeavor or trade and commerce…. ‘We are confronted here with saving human life or alleviating confronted here with saving human life or alleviating human suffering and one should take great care lest a human suffering and one should take great care lest a restriction … should affect human life or health”restriction … should affect human life or health”

““The award of limited monopolies is a standard way of The award of limited monopolies is a standard way of helping to compensate for the expense of research. helping to compensate for the expense of research. And I respectfully agree that the discovery of new And I respectfully agree that the discovery of new properties or uses of known pharmaceutical drugs properties or uses of known pharmaceutical drugs does merit encouragement. In a broad sense, does merit encouragement. In a broad sense, however, the discovery of a new drug is different from however, the discovery of a new drug is different from the discovery of new uses for an old one.”the discovery of new uses for an old one.”

TRIPS – Patents – Welcome TRIPS – Patents – Welcome Case – Industrial Application Case – Industrial Application and Medical Exceptionsand Medical Exceptions

U.S.: New use of a known medicinal U.S.: New use of a known medicinal compound may be patentablecompound may be patentable

UK / European approach – new use of a UK / European approach – new use of a known drug is really a process patent, known drug is really a process patent, and processes of medical treatment and processes of medical treatment should not be patentable.should not be patentable.

Holding: Not for the courts to allow Holding: Not for the courts to allow patents for new uses of known drugs – patents for new uses of known drugs – for the legislaturefor the legislature

TRIPS – TrademarksTRIPS – Trademarks

Article 15Article 15: “Any sign, or any combination of : “Any sign, or any combination of signs, capable of distinguishing the goods or signs, capable of distinguishing the goods or services of one undertaking from those of services of one undertaking from those of other undertakings, shall be capable of other undertakings, shall be capable of constituting a trademark.” constituting a trademark.”

Article 16: Article 16: – Infringement based on “likelihood of Infringement based on “likelihood of

confusion”confusion”– Standards for well-known mark: “take Standards for well-known mark: “take

account of the knowledge of the trademark account of the knowledge of the trademark in the relevant sector of the public, including in the relevant sector of the public, including knowledge in the Member concerned which knowledge in the Member concerned which has been obtained as a result of the has been obtained as a result of the promotion of the trademark.”promotion of the trademark.”

TRIPS – TrademarksTRIPS – Trademarks Article 16: Article 16:

– Infringement of well-known mark by dissimilar Infringement of well-known mark by dissimilar goods: actionable “provided that use of that goods: actionable “provided that use of that trademark in relation to those goods or services trademark in relation to those goods or services would indicate a connection between those goods would indicate a connection between those goods or services and the owner of the registered or services and the owner of the registered trademark and provided that the interests of the trademark and provided that the interests of the owner of the registered trademark are likely to be owner of the registered trademark are likely to be damaged by such use.”damaged by such use.”

Article 17: members may provide a fair use defense Article 17: members may provide a fair use defense or other exceptions “provided that such exceptions or other exceptions “provided that such exceptions take account of the legitimate interests of the owner take account of the legitimate interests of the owner of the trademark and of third parties.”of the trademark and of third parties.”

Article 18: minimum seven year term, “renewable Article 18: minimum seven year term, “renewable indefinitely”indefinitely”

TRIPS – TrademarksTRIPS – Trademarks

Does this fill holes in Paris Does this fill holes in Paris Convention?Convention?– How to define distinctiveness?How to define distinctiveness?– Standard for infringement?Standard for infringement?– Definition of “famous” mark?Definition of “famous” mark?– Fair Use of Marks?Fair Use of Marks?– Use-based vs. Registration-based Use-based vs. Registration-based

system?system?

TRIPS – Trademarks – TRIPS – Trademarks – Geographic IndicationsGeographic Indications

Article 22Article 22– (1): “Geographical indications are, for the (1): “Geographical indications are, for the

purposes of this Agreement, indications which purposes of this Agreement, indications which identify a good as originating in the territory identify a good as originating in the territory of a Member, or a region or locality in that of a Member, or a region or locality in that territory, where a given quality, reputation or territory, where a given quality, reputation or other characteristic of the good is essentially other characteristic of the good is essentially attributable to its geographical origin.”attributable to its geographical origin.”

– (2): prohibits false designation of geographic (2): prohibits false designation of geographic origin and unfair competitionorigin and unfair competition

Article 23: special protection for wines Article 23: special protection for wines and spritsand sprits

TRIPS – Trademarks – TRIPS – Trademarks – Geographic Indications – Geographic Indications – Taittinger CaseTaittinger Case

Facts: D sells “Elderflower Facts: D sells “Elderflower Champagne”Champagne”

Issue: Will D’s product cause Issue: Will D’s product cause confusion or erode the distinctiveness confusion or erode the distinctiveness of the CHAMPAGNE designationof the CHAMPAGNE designation


““When the case is tried in an atmosphere of When the case is tried in an atmosphere of educated persons, many of whom are well educated persons, many of whom are well acquainted with the qualities of various wines, it acquainted with the qualities of various wines, it may seem absurd that persons should be may seem absurd that persons should be deceived by what may appear to be a transparent deceived by what may appear to be a transparent impersonation… It is right not to base any test on impersonation… It is right not to base any test on whether a moron in a hurry would be confused, whether a moron in a hurry would be confused, but it is proper to take into account the ignorant but it is proper to take into account the ignorant and the unwary.”and the unwary.”– C.f. Enjoy Cocaine case: universe of ordinary purchasers C.f. Enjoy Cocaine case: universe of ordinary purchasers

“consists of a vast multitude which includes the ignorant, the unthinking and the credulous, who, in making purchases, do not stop to analyze, but are governed by appearances and general impressions.”


Continued use of “Champagne” mark will result in “a blurring or erosion of the uniqueness that now attends the word ‘champagne,’ so that the exclusive reputation of the champagne houses would be debased.”

“Plainly, those with any knowledge of wine will not buy the defendants’ product instead of Champagne.”– “I do not think the defendants’ product would

reduce the first plaintiffs’ sales in any significant way.” But… allowing D to continue will erode Ps’ goodwill.


What about this mark: What about this mark: – CHAMPAGNE HONEY MUSTARD SPLASH for “salad dressing”CHAMPAGNE HONEY MUSTARD SPLASH for “salad dressing”– CHAMPAGNE CAMPAIGN for “retail and online store services CHAMPAGNE CAMPAIGN for “retail and online store services

featuring clothing.”featuring clothing.”– CHAMPAGNE CAT for “retail store … featuring toys, shirts, CHAMPAGNE CAT for “retail store … featuring toys, shirts,

watches, ice cream…”watches, ice cream…”– THE CHAMPAGNE OF WATER for “Drinking water; namely, THE CHAMPAGNE OF WATER for “Drinking water; namely,

Spring Water and Artesian Water.”Spring Water and Artesian Water.”

TRIPS – Trademarks – TRIPS – Trademarks – Geographic Indications – Geographic Indications – Pilsner CasePilsner Case

Pilsen Urquell made in PlzenPilsen Urquell made in Plzen Tuborg uses “Pilsner” on its label and Tuborg uses “Pilsner” on its label and

in advertising (in advertising (http://www.tuborg.co.uk/Tuborg.aspxhttp://www.tuborg.co.uk/Tuborg.aspx))


Issue:Issue:– Is PILSNER an “Appellation of Origin” Is PILSNER an “Appellation of Origin”

under the Lisbon Agreement or is it a under the Lisbon Agreement or is it a generic term for a type of beergeneric term for a type of beer Lisbon Agreement: Appellation of Origin “is Lisbon Agreement: Appellation of Origin “is

the geographical denomination of a country, the geographical denomination of a country, a region or a locality which serves to a region or a locality which serves to designate a product which is native to it and designate a product which is native to it and of which its quality or character is owed of which its quality or character is owed exclusively or essentially to its geographical exclusively or essentially to its geographical milieu…”milieu…”


Analysis:Analysis:– Lower court assumed that if it was not an Lower court assumed that if it was not an

“Appellation of Origin” it could not serve as a “Appellation of Origin” it could not serve as a mark because of geographical descriptivenessmark because of geographical descriptiveness

– However, Lisbon Agreement states that However, Lisbon Agreement states that Appellation of Origin which subsequently Appellation of Origin which subsequently becomes generic is still protectiblebecomes generic is still protectible

– Note limited number of signatories to Lisbon Note limited number of signatories to Lisbon Agreement: Agreement: http://www.wipo.int/treaties/en/ShowResults.jsphttp://www.wipo.int/treaties/en/ShowResults.jsp?lang=en&treaty_id=10?lang=en&treaty_id=10

TRIPS – Trademarks – TRIPS – Trademarks – Well-Known Marks – Duff Well-Known Marks – Duff Beer CaseBeer Case

Facts: Facts: – D selling DUFF beer. D selling DUFF beer. – D claims it took efforts to limit D claims it took efforts to limit

association with SIMPSONS seriesassociation with SIMPSONS series– No actual DUFF beer product; a fictional No actual DUFF beer product; a fictional

product on the television showproduct on the television show

TRIPS – Trademarks – TRIPS – Trademarks – Well-Known Marks – Duff Well-Known Marks – Duff Beer CaseBeer Case

Likely association in public mind between Likely association in public mind between “Simpsons” brand and characters and “Simpsons” brand and characters and DUFF beer even though manufacturer of DUFF beer even though manufacturer of DUFF beer did not use any Simpsons DUFF beer did not use any Simpsons characters and made the can look differentcharacters and made the can look different

Consistent with Art. 16 of TRIPS? (remedy Consistent with Art. 16 of TRIPS? (remedy for famous marks for famous marks “provided that use of that “provided that use of that trademark in relation to those goods or services would trademark in relation to those goods or services would indicate a connection between those goods or services and indicate a connection between those goods or services and the owner of the registered trademark and provided that the the owner of the registered trademark and provided that the interests of the owner of the registered trademark are likely interests of the owner of the registered trademark are likely to be damaged by such use.”to be damaged by such use.”

TRIPS – Trade SecretsTRIPS – Trade Secrets

Article 39: protection for information Article 39: protection for information that isthat is– Secret (not generally known or readily Secret (not generally known or readily

accessible)accessible)– Has commercial value because it is Has commercial value because it is

secretsecret– Has been subject to reasonable steps to Has been subject to reasonable steps to

be kept secretbe kept secret

TRIPS – Trade Secrets – TRIPS – Trade Secrets – Lancashire CaseLancashire Case

FactsFacts– P makes supplies and components for gas fires; P makes supplies and components for gas fires;

run by two brothersrun by two brothers– Younger brother’s plumbing business failed and Younger brother’s plumbing business failed and

was hired by older brotherwas hired by older brother– Younger brother helped develop a process for Younger brother helped develop a process for

mass-producing P’s products more efficiently mass-producing P’s products more efficiently (using molds)(using molds)

– No written agreementsNo written agreements– Inconsistent security proceduresInconsistent security procedures– Younger brother broke off to establish his own Younger brother broke off to establish his own

competing businesscompeting business


Classes of “secret” informationClasses of “secret” information– Information that is trivial or easily accessible by the Information that is trivial or easily accessible by the

public – not protectiblepublic – not protectible– Confidential information which, once learned, necessarily Confidential information which, once learned, necessarily

remains in the servant’s head and becomes part of his remains in the servant’s head and becomes part of his own skill and knowledge – protectible only with own skill and knowledge – protectible only with reasonable restrictive covenantreasonable restrictive covenant

– Specific trade secrets so confidential that, even though Specific trade secrets so confidential that, even though they are learned by heart, cannot lawfully be used for they are learned by heart, cannot lawfully be used for anyone’s benefit but the master’s – protectible only if has anyone’s benefit but the master’s – protectible only if has “the necessary quality of confidence about it”; was “the necessary quality of confidence about it”; was “imparted in circumstances importing an obligation of “imparted in circumstances importing an obligation of confidence”; “unauthorized use of the information to the confidence”; “unauthorized use of the information to the detriment of the party communicating it.”detriment of the party communicating it.”


Holding:Holding:– Not clear that any of the information Not clear that any of the information

taken by younger brother was truly taken by younger brother was truly confidential – more like information confidential – more like information learned in the ordinary course of a tradelearned in the ordinary course of a trade

– However, injunctive relief grantedHowever, injunctive relief granted

Documents

TRIPS -- Introduction © 2006-2007 David W. Opderbeck