In the intellectual property arena, Congress enacted the Leahy-Smith America Invents Act[4] in September 2011, providing a complete overhaul of the U.S. patent system. The next year, high-stakes patent trials resulted in three eye-popping verdicts, each exceeding $1 billion.[5]  By the end of the 2012 Term, the United States Supreme Court has reviewed an unusually large number of patent cases.[6]  As Timothy Holbrook reminded us:

Starting in around 2000, the Supreme Court became active, if not even hyperactive, in patent law. . . . Additionally, the Supreme Court’s intervention is no longer on the periphery of patent law. The cases they have decided go right to the substance of patent law: the doctrine of equivalents and prosecution history estoppel, subject matter eligibility, induced infringement, the statutory experimental use defense, to name but a few.[7]

Of great interest in the 2012 Term was Association for Molecular Pathology v. Myriad Genetics, Inc.[8]  Lying at the intersection of intellectual property and public health, this case concerned the patentability of composition and method claims covering two isolated human genes associated with breast and ovarian cancers as well as their alterations and mutations. In a surprisingly short decision, Justice Clarence Thomas held that “a naturally occurring DNA segment is a product of nature and not patent eligible merely because it has been isolated, but that [synthetically created DNA segment known as complementary DNA] is patent eligible because it is not naturally occurring.”[9]  He further noted that the case did not involve patent claims in “an innovative method of manipulating genes while searching for the BRCA1 and BRCA2 genes,” “patents on new applications of knowledge about the BRCA1 and BRCA2 genes,” and “the patentability of DNA in which the order of the naturally occurring nucleotides has been altered.”[10]  Although it is too early to assess the full implications of this narrowly written decision, it is not hard to appreciate the decision’s potential impact on U.S. biotechnology and life science industries. Myriad Genetics will also raise important questions about the appropriate level of patent protection in relation to the development of biologics[11] and diagnostic kits.[12]

At the international level, there has been a decade-long, but still vibrant, debate about the major impediments the Agreement on Trade-Related Aspects of Intellectual Property Rights[13] (“TRIPS Agreement”) has generated to access to essential medicines in less developed countries—a term used collectively to cover both developed and least developed countries as identified within the World Trade Organization (“WTO”).[14]  Since the TRIPS Agreement entered into force in January 1995, it not only has taken away the wide policy space less developed countries once enjoyed at the international level,[15] but it has also resulted in needless deaths and suffering to patients that have acquired either the human immunodeficiency virus (“HIV”) or the Acquired Immune Deficiency Syndrome (“AIDS”).[16]  The pandemic caused by HIV/AIDS, malaria, and tuberculosis has also greatly reduced the productivity of many countries in sub-Saharan Africa.[17]

In December 2013, WTO member states met in the Ninth Ministerial Conference in Bali, with the hope of reviving the Doha Development Round of Trade Negotiations (“Doha Round”).[18]  This ministerial conference was held a few months after WTO members agreed at the Council for Trade-Related Aspects of Intellectual Property Rights (“TRIPS Council”) to extend the transition period for least developed countries.[19]  Article 66 of the TRIPS Agreement initially set the period at ten years.[20]  In November 2005, shortly before the Sixth Ministerial Conference in Hong Kong, WTO members agreed to extend the period for seven-and-a-half years until July 1, 2013, as long as the extension-seeking country has not yet met the TRIPS requirements or has not already offered protection in excess of those requirements.[21]  Building on Haiti’s formal request for another extension on behalf of the Least Developed Countries Group,[22] the June 2013 TRIPS Council decision further extended the transition period for eight years until July 1, 2021 without the earlier “non-rollback” commitment.[23]

Notwithstanding this recent extension for least developed countries, there remains another deadline that is highly important to the global access to medicines debate. This deadline concerns the ratification of the protocol to amend the TRIPS Agreement, which WTO member states adopted also shortly before the Hong Kong Ministerial.[24]  If ratified by two-thirds of the WTO membership, the new Article 31bis would allow countries with insufficient or no manufacturing capacity to import generic versions of patented pharmaceuticals. Although the initial deadline for ratification was December 1, 2007, that deadline has since been extended four times to December 31, 2015. As of this writing, slightly less than a third of the 159 WTO member states have ratified the proposed amendment.[25]  If the amendment fails to attain the requisite ratifications by the new deadline, this deadline will have to be extended again.[26]

Sadly, with all the interrelated developments in the intellectual property and public health arenas both within and outside the United States, the domestic debate remains surprisingly disconnected from the international debate. Because of this disconnect, the laws and policies Congress and the administration adopt often do not synchronize with developments abroad. To help bridge this disconnect, this Article discusses the interrelationship between intellectual property and public health in the context of communicable diseases. This type of disease is intentionally picked to highlight how developments abroad could easily affect what happens at home, and vice versa.

Parts I to III of this Article recount three distinct “virostories”—stories about viruses responsible for AIDS, the Severe Acute Respiratory Syndrome (“SARS”),[27] and the avian influenza.[28]  Part I discusses the ongoing developments within the WTO concerning efforts to address the access-to-medicines problems in relation to HIV/AIDS and other pandemics. Part II documents the unusual race among research and health institutions in Canada, Hong Kong, and the United States to patent technologies involving the isolated gene sequences of the SARS coronavirus. This Part also explores the use of patenting as a defensive measure and the development of patent pools as a solution to prevent the creation of a patent thicket. Part III examines the recent efforts by Indonesia, India, and other members of the Non-Aligned Movement to claim sovereignty over viruses found within their jurisdictions. This Part focuses on the H5N1 strain of the avian influenza virus in Indonesia.

To help illustrate the need to take a global, holistic, multidisciplinary socio-legal approach, which will be the focus of the second half of this Article, Parts I to III embrace the narrative technique. Such a technique enables the stories to be told in a way that would be meaningful to those participating in both the intellectual property and public health debates. The thick descriptions the article provides also highlight related issues on cross- border trade, global governance, human development, North-South relations, international sovereignty, human rights protection, and medical and biological ethics. With a wide range of characters, openings, plot twists, and endings, these virostories provide insight into the different facets of the international patent debate. By bringing together HIV/AIDS, SARS, and H5N1, this Article will further remind policymakers that the discussion on the TRIPS Agreement should not focus so much on the HIV/AIDS crisis in the less developed world to the point that they ignore other similar problems created by an out-of-balance intellectual property system.[29]

Part IV draws seven important lessons from the three earlier narratives to advance a new, integrated approach to setting international intellectual property norms. This new approach takes account of both the existing problems concerning the TRIPS Agreement and the new problems precipitated by the negotiation of the Anti-Counterfeiting Trade Agreement (“ACTA”),[30] the Trans-Pacific Partnership (“TPP”) Agreement,[31] and other nonmultilateral trade and investment agreements.[32]  Tying domestic laws and policies to the international debate, this Part focuses on three sets of issues that often come up in the international intellectual property norm- setting process: negotiation gains, the negotiation process, and negotiated outcomes.

By bringing together both the descriptive and the prescriptive, this Article seeks to drive home the message that the international intellectual property and public health debates could easily spill over into the domestic debates, and vice versa. Just as viruses do not recognize national boundaries[33]—as health professionals have repeatedly warned us— policymakers and commentators should also think more holistically and globally about the connections between the domestic and international debates and between developments in the intellectual property and public health arenas. After all, there are non-altruistic reasons for developed countries to promote access to essential medicines in the less developed world.

Featured here is the Introduction of a paper by , IP Osgoode Research Affiliate, Kern Family Chair in Intellectual Property Law and Founding Director of the Intellectual Property Law Center at Drake University Law School. Born and raised in Hong Kong, Professor Yu is a leading expert in international intellectual property and communications law. He also writes and lectures extensively on international trade, international and comparative law, and the transition of the legal systems in China and Hong Kong. The full article was published in 45 Ariz.St. L. J. 1564 (2013) and can also be found .

[1] Pub. L. No. 111-148, 124 Stat. 119 (2010).

[2] Pub. L. No. 111-152, 124 Stat. 1029 (2010).

[3] Nat’l Fed’n of Indep. Bus. v. Sebelius, 132 S. Ct. 2566, 2608 (2012).

[4] Pub. L. No. 112-29, 125 Stat. 284 (2011).

[5] See Amanda Bronstad, IP Awards Dominate, NAT’L L.J., Mar. 4, 2013, http://www.law.com/jsp/nlj/PubArticleNLJ.jsp?id=1202590587509&slreturn=20131006195123 (reporting the verdicts from the lawsuit Carnegie Mellon University filed against Marvell Technology, the lawsuit Apple filed against Samsung Electronics, and the lawsuit Monsanto filed against DuPont).

[6] For a discussion of the Court’s growing interest, see generally Timothy R. Holbrook, Explaining the Supreme Court’s Interest in Patent Law, 3 IP THEORY 62 (2013).

[7] Id. at 63–64 (footnotes omitted). 8. 133 S. Ct. 2107 (2013).

[8] 133 S. Ct. 2107 (2013).

[9] Id. at 2111.

[10] Id. at 2119–20.

[11] For discussions of intellectual property issues in relation to biologics, see generally Donna M. Gitter, Innovators and Imitators: An Analysis of Proposed Legislation Implementing an Abbreviated Approval Pathway for Follow-on Biologics in the United States, 35 FLA. ST. U. L. REV. 555 (2008); Christopher M. Holman, Maintaining Incentives for Healthcare Innovation: A Response to the FTC’s Report on Follow-on Biologics, 11 MINN. J.L. SCI. & TECH. 755 (2010); Gregory N. Mandel, The Generic Biologics Debate: Industry’s Unintended Admission that Biotech Patents Fail Enablement, 11 VA. J.L. & TECH. 8 (2006); Symposium, Follow-on Biologics: Implementation Challenges and Opportunities, 41 SETON HALL L. REV. 501 (2011).

[12] See, e.g., EDSON BEAS RODRIGUES JR., THE GENERAL EXCEPTION CLAUSES OF THE TRIPS AGREEMENT: PROMOTING SUSTAINABLE DEVELOPMENT 168–69 (2012) (discussing the impact of gene patents on the development of diagnostic kits); Rochelle C. Dreyfuss & James P. Evans, From Bilski Back to Benson: Preemption, Inventing Around, and the Case of Genetic Diagnostics, 63 STAN. L. REV. 1349, 1361–70 (2011) (providing a case study of patent-related issues arising in genetic diagnostics).

[13] Agreement on Trade-Related Aspects of Intellectual Property Rights, Apr. 15, 1994, Marrakesh AgreementEstablishing the World Trade Organization, Annex 1C, 108 Stat. 4809, 869 U.N.T.S. 299 [hereinafter TRIPS Agreement].

[14] See Peter K. Yu, The International Enclosure Movement, 82 IND. L.J. 827, 858–62 (2007) (discussing these deleterious impacts). For book-length discussions of access-to- medicines problems in relation to the TRIPS Agreement, see generally SUDIP CHAUDHURI, THE WTO AND INDIA’S PHARMACEUTICALS INDUSTRY: PATENT PROTECTION, TRIPS, AND DEVELOPING COUNTRIES (2005); HOLGER HESTERMEYER, HUMAN RIGHTS AND THE WTO: THE CASE OF PATENTS AND ACCESS TO MEDICINES (2008); CYNTHIA M. HO, ACCESS TO MEDICINE IN THE GLOBAL ECONOMY: INTERNATIONAL AGREEMENTS ON PATENTS AND RELATED RIGHTS (2011); INTELLECTUAL PROPERTY, PHARMACEUTICALS, AND PUBLIC HEALTH: ACCESS TO DRUGS IN DEVELOPING COUNTRIES (Kenneth C. Shadlen et al. eds., 2012); VALBONA MUZAKA, THE POLITICS OF INTELLECTUAL PROPERTY RIGHTS AND ACCESS TO MEDICINES (2011); NEGOTIATING HEALTH: INTELLECTUAL PROPERTY AND ACCESS TO MEDICINES (Pedro Roffe et al. eds., 2006) [hereinafter NEGOTIATING HEALTH].

[15] See generally Yu, The International Enclosure Movement, supra note 14, at 855–72 (discussing the growing enclosure of the policy space of less developed countries at the international level).

[16] For discussions of access-to-medicines problems in relation to HIV/AIDS, see generally THE GLOBAL GOVERNANCE OF HIV/AIDS: INTELLECTUAL PROPERTY AND ACCESS TO ESSENTIAL MEDICINES (Obijiofor Aginam, John Harrington & Peter K. Yu eds., 2013) [hereinafter GLOBAL GOVERNANCE OF HIV/AIDS]; THE POLITICAL ECONOMY OF HIV/AIDS IN DEVELOPING COUNTRIES: TRIPS, PUBLIC HEALTH SYSTEMS AND FREE ACCESS (Benjamin Coriat ed., 2008) [hereinafter POLITICAL ECONOMY OF HIV/AIDS].

[17] See FRANKLYN LISK, GLOBAL INSTITUTIONS AND THE HIV/AIDS EPIDEMIC: RESPONDING TO AN INTERNATIONAL CRISIS 82–92 (2009) (discussing the impact of HIV/AIDS on human resource capacity); Wolfgang Hein et al., Introduction: Globalization, HIV/AIDS and the Rise of Global Health Governance, in GLOBAL HEALTH GOVERNANCE AND THE FIGHT AGAINST HIV/AIDS 1, 7 (Wolfgang Hein et al., eds., 2007) [hereinafter FIGHT AGAINST HIV/AIDS] (“HIV/AIDS and infectious diseases strike hardest at the productive parts of the population, at the pool of experienced individuals that would qualify for leading positions in society, leading to economic decline.”); Colin McInnes, National Security and Global Health Governance, in GLOBAL HEALTH GOVERNANCE: CRISIS, INSTITUTIONS AND POLITICAL ECONOMY 42, 48 (Adrian Kay & Owain David Williams eds., 2009) [hereinafter GLOBAL HEALTH GOVERNANCE] (noting the “disproportionate impact [of HIV/AIDS] upon workers in what should be the most productive period of their lives”); Geoff Tansey, Introduction: Legal Fictions and Public Health, in NEGOTIATING HEALTH, supra note 14, at 1, 2 (noting that, in rural Africa, “HIV/AIDS is devastating farming families and undermining their ability to farm”); Srividhya Ragavan, The Jekyll and Hyde Story of International Trade: The Supreme Court in PhRMA v. Walsh and the TRIPS Agreement, 38 U. RICH. L. REV. 777, 821 (2004) [hereinafter Ragavan, Jekyll and Hyde] (“An epidemic increase of AIDS reduced life expectancy and affected labor and economic output, as the younger casualties increase. Consequently, national productivity declined in several developing nations since the loss of labor from the loss of each life affected a proportionate value of output.” (footnotes omitted)); Yu, The International Enclosure Movement, supra note 14, at 855 (“At the macro level, health problems could also lower the productivity of a country—to the point that it will fall behind its trading partners in terms of economic development, technological innovation, industrial progress, and national competitiveness.”).

[18] Press Release, World Trade Org. [WTO], Bali Ministerial to Be Held 3–6 December 2013 (Dec. 11, 2012), http://www.wto.org/english/news_e/news12_e/gc_11dec12_e.htm.

[19] Press Release, WTO, The Least Developed Get Eight Years More Leeway on Protecting Intellectual Property (June 11, 2013), http://www.wto.org/english/news_e/ news13_e/trip_11jun13_e.htm.

[20] TRIPS Agreement art. 66.

[21] Press Release, WTO, Poorest Countries Given More Time to Apply Intellectual Property Rules (Nov. 29, 2005), http://www.wto.org/english/news_e/pres05_e/pr424_e.htm.

[22] Communication from Haiti on Behalf of the LDC Group, Request for an Extension of the Transitional Period Under Article 66.1 of the TRIPS Agreement, IP/C/W/583 (Nov. 5, 2012). Haiti initially proposed to extend the transition period “for as long as the WTO Member remains a least developed country.” That proposal, though eventually failed, earned the support of the Joint United Nations Programme on HIV/AIDS (UNAIDS), the United Nations Development Programme (UNDP), and more than 300 civil society organizations. See UNAIDS & UNDP, TRIPS Transition Period Extensions for Least-developed Countries 6 (UNAIDS, Issue Brief, 2013), http://www.unaids.org/en/media/unaids/contentassets/documents/ unaidspublication/2013/JC2474_TRIPS-transition-period-extensions_en.pdf [hereinafter UNAIDS/UNDP Issue Brief] (calling on the WTO members to give “close and immediate attention” to the extension request from least developed countries); Catherine Saez, WTO: LDCs to Press for Extension for TRIPS, Plain Packaging Back, INTELL. PROP. WATCH (Feb. 26, 2013, 2:15 PM), http://www.ip-watch.org/2013/02/26/wto-ldcs-to-press-for-extension-for-trips-plain- packaging-back (reporting the support least developed countries received from UNAIDS, UNDP, and civil society organizations).

[23] Council for Trade-Related Aspects of Intellectual Property [TRIPS Council], Extension of the Transition Period Under Article 66.1 for Least Developed Country Members: Decision of the Council for TRIPS of 11 June 2013, IP/C/64 (June 11, 2013). For discussions of this extension, see generally Frederick M. Abbott, Technical Note: The LDC TRIPS Transition Extension and the Question of Rollback (ICTSD Programme on Innovation, Technology and Intellectual Property, Policy Brief No. 15, 2013), available at http://ictsd.org/ downloads/2013/05/the-ldc-trips-transition-extension-and-the-question-of-rollback.pdf; Arno Hold & Bryan Christopher Mercurio, After the Second Extension of the Transition Period for LDCs: How Can the WTO Gradually Integrate the Poorest Countries into TRIPS? (NCCR Trade Regulation, World Trade Institute, University of Bern, Working Paper No. 2013/42, 2013), available at http://ssrn.com/abstract=2302335.

[24] General Council, Amendment of the TRIPS Agreement, WT/L/641 (Dec. 8, 2005) [hereinafter TRIPS Amendment], available at http://www.wto.org/english/ tratop_e/trips_e/wtl641_e.htm; see also Yu, The International Enclosure Movement, supra note 14, at 872–86 (tracing the development of Article 31bis of the TRIPS Agreement).

[25] Members Accepting Amendment of the TRIPS Agreement, WTO, http://www.wto.org/english/tratop_e/trips_e/amendment_e.htm (last updated Oct. 21, 2013) [hereinafter Members Accepting Amendment].

[26] See General Council, Implementation of Paragraph 6 of the Doha Declaration on the TRIPS Agreement and Public Health, ¶ 11, WT/L/540 (Sept. 1, 2003), 43 I.L.M. 509 (2004) [hereinafter August 30 Decision] (stating that the waivers granted in this decision “shall terminate for each Member on the date on which an amendment to the TRIPS Agreement replacing its provisions takes effect for that Member”).

[27] For discussions of SARS, see generally THOMAS ABRAHAM, TWENTY-FIRST CENTURY PLAGUE: THE STORY OF SARS (2007); TIM BROOKES, BEHIND THE MASK: HOW THE WORLD SURVIVED SARS, THE FIRST EPIDEMIC OF THE 21ST CENTURY (2004); DAVID P. FIDLER, SARS, GOVERNANCE AND THE GLOBALIZATION OF DISEASE (2004); KARL TARO GREENFELD, CHINA SYNDROME: THE TRUE STORY OF THE 21ST CENTURY’S FIRST GREAT EPIDEMIC (2006); WORLD HEALTH ORG. [WHO], SARS: HOW A GLOBAL EPIDEMIC WAS STOPPED (2006) [hereinafter HOW A GLOBAL EPIDEMIC WAS STOPPED].

[28] See generally AVIAN INFLUENZA: SCIENCE, POLICY AND POLITICS (Ian Scoones ed., 2010) [hereinafter AVIAN INFLUENZA] (discussing avian influenza).

[29] As the U.K. Commission on Intellectual Property Rights reminded us:

It is particularly important not to allow the debate in [the intellectual property] area to be influenced unduly by the HIV/AIDS experience, dramatic though it is. Apart from HIV/AIDS, which is the biggest single cause of mortality in developing countries, TB and malaria claim almost as many lives. Together all three diseases claimed nearly six million lives [in 2001], and led to debilitating illness for millions more. In addition, there are a number of less common diseases which are collectively important. These include, for instance, measles, sleeping sickness, leishmaniasis and Chagas disease.

COMM’N ON INTELLECTUAL PROP. RIGHTS, INTEGRATING INTELLECTUAL PROPERTY RIGHTS AND
DEVELOPMENT POLICY: REPORT OF THE COMMISSION ON INTELLECTUAL PROPERTY RIGHTS 30
(2002) [hereinafter IPR COMMISSION REPORT] (footnote omitted).

[30] Anti-Counterfeiting Trade Agreement, opened for signature May 1, 2011, 50 I.L.M. 243 (2011) [hereinafter ACTA].

[31] See Trans-Pacific Partnership, OFFICE OF THE U.S. TRADE REP., http://www.ustr.gov/tpp (last visited Nov. 7, 2013) (providing up-to-date information about the TPP).

[32] See, e.g., Central America–Dominican Republic–United States Free Trade Agreement, May 28, 2004 [hereinafter CAFTA-DR], available at http://www.ustr.gov/trade- agreements/free-trade-agreements/cafta-dr-dominican-republic-central-america-fta/final-text; United States–Australia Free Trade Agreement, U.S.-Austl., May 18, 2004 [hereinafter AUSFTA], available at http://www.ustr.gov/trade-agreements/free-trade-agreements/australian- fta/final-text; United States–Singapore Free Trade Agreement, U.S.-Sing., May 6, 2003 [hereinafter SUSFTA], available at http://www.ustr.gov/sites/default/files/ uploads/agreements/fta/singapore/asset_upload_file708_4036.pdf. For discussions of bilateral, plurilateral, and regional trade agreements, see sources cited in Peter K. Yu, Intellectual Property and Human Rights in the Nonmultilateral Era, 64 FLA. L. REV. 1045, 1046 n.1 (2012). For a discussion of intellectual property provisions in international investment agreements, see generally Bryan Mercurio, Awakening the Sleeping Giant: Intellectual Property Rights in International Investment Agreements, 15 J. INT’L ECON. L. 871 (2012).

[33] As Colin McInnes observed:

Health threats, the provision of health care services and the market for pharmaceuticals are increasingly transborder in nature. In terms of health security, this makes defence ‘at the border’ a near impossibility despite efforts by states to do just that. The state can no longer function as a self- contained vessel for health provision (and indeed health security), rather it has become permeable. This is most obliviously the case with infectious disease where the processes of globalization have enabled disease to spread more quickly.

McInnes, supra note 17, at 44 (citation omitted); accord FIDLER, supra note 27, at 13–16 (discussing the “germs do not recognize borders” mantra of public health); MARK W. ZACHER & TANIA J. KEEFE, THE POLITICS OF GLOBAL HEALTH GOVERNANCE: UNITED BY CONTAGION 1 (2008) (“[T]he world is becoming an ever smaller place, and microbes that cause devastating diseases do not stop for border guards.”).

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The post Transplanting the Canadian UGC Exception to Hong Kong: Part 3 appeared first on IPOsgoode.

Entitled "Can the Canadian UGC Exception Be Transplanted Abroad?", this article builds on the excellent  on the international law aspects of the Canadian UGC exception chaired by Prof. David Vaver. The panel also featured presentations by Barry Sookman, a partner of the law firm of McCarthy Tétrault, and Prof. Joost Blom of the Faculty of Law of the University of British Columbia.

Although the panel presenters examined the international law aspects of section 29.21, including its compliance with the Berne Convention�����Ի� the WTO TRIPS Agreement, one issue that has not been covered much is whether this exception would serve as an ideal model for other jurisdictions that are now undertaking digital copyright reform. Using Hong Kong as an example, my forthcoming article will argue that the Canadian UGC exception, with appropriate modifications, can be—and should be—transplanted abroad.

This article begins by discussing the efforts by the Hong Kong government to transplant copyright laws from abroad as part of its digital copyright reform. It further examines the benefits and drawbacks of legal transplants. Using the US Digital Millennium Copyright Act of 1998 as a point of comparison, this article argues that the Canadian UGC exception provides a timely and attractive model for legal transplant.

The article then discusses specifically the UGC exception proposal I submitted to the Hong Kong government. Focusing on two major aspects of legal transplant—modelling and adaptation—it discusses the policy choices the submission considered. It also addresses the key objections raised by copyright holders and their industry groups, in particular their claim that the Canadian UGC exception may not comply with the TRIPS Agreement.

This article concludes by recounting the Hong Kong government’s recently-released  on the parody consultation, which sadly echoed the concerns raised by copyright holders and their industry groups. Although I strongly disagree with the government's preliminary analysis of the proposed UGC exception, this article takes the government's international compliance concerns seriously and offers additional modifications to further adapt the proposed transplant.

To begin with, the government could easily build the relevant WTO standards into the proposed UGC exception, similar to the existing provisions in the Hong Kong Copyright Ordinance and the laws of other jurisdictions. The government could also introduce a fair dealing exception for UGC. If it takes the position that fair dealing exceptions meet international standards, a fair dealing exception for UGC will clearly meet those standards.

In addition, the government could introduce a quid pro quo arrangement that allows authors and copyright owners to use the internet users’ derivative creations for predominantly non-commercial purposes. If significant commercial interests are involved, the government could also introduce a profit-sharing arrangement that requires internet users and intermediaries to provide equitable remuneration to copyright owners. Levy systems, for example, have been widely practiced in Canada, Europe, the United States and other parts of the world.

Even if the government remains reluctant to legalize the creation of UGC, in light of the ongoing, unsettled international copyright policy debate, the government could introduce laws to prevent internet users from being criminally prosecuted or sued in civil actions. The government could also institute a five-year sunset period for the proposed exception if it considers a permanent exception unsuitable for a rapidly changing licensing environment.

In sum, regardless of whether one agrees with the Hong Kong government's highly restrictive interpretation of the TRIPS Agreement, many ways still exist to address its international compliance concerns. From the standpoint of examining the expediency and viability of transplanting the Canadian UGC exception abroad, it is also important to separate drafting problems from modelling problems. A good model of legal transplant should not be abandoned when adaptations can be made to improve the transplanted law.

Peter K. Yu, an affiliated scholar of IP Osgoode, holds the Kern Family Chair in Intellectual Property Law at Drake University Law School in the United States. Born and raised in Hong Kong, he serves as the general editor of The WIPO Journal published by the World Intellectual Property Organization and chairs the Committee on International Intellectual Property of the American Branch of the International Law Association.

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As part of this consultation exercise, I submitted a on behalf of the Journalism Media Studies Centre of the University of Hong Kong. This paper, which was repeatedly cited in the government’s recently-released , made three main assertions. First, none of the three identified options alone can adequately address the needs, interests and concerns of internet users in Hong Kong. Because each option serves a different purpose and has varying strengths, the government should consider adopting a combination of all three identified options.

Second, both civil and criminal exceptions, with appropriate qualifications, should be created for parodies, satires, caricatures and pastiches. Although the creation of a fair dealing exception is highly welcome, a separate criminal exception will still be needed even if that exception is to be adopted. After all, an internet user could be exempted from criminal sanctions even though the court did not find his or her dealing with the copyright work fair.

Finally, in addition to the three identified options, the government should consider adopting a fourth option not identified in the consultation paper – an exception for predominantly noncommercial user-generated content (UGC). This option is badly needed because even a broad, unlimited copyright exception for parody, satire, caricature or pastiche would not cover most of the derivative creations generated by internet users. Examples of these creations are modified photos, altered lyrics and home-made videos of music performances.

The proposal for this UGC exception is of particular interest to IPilogue readers, because it draws heavily on section . For reasons ranging from shared legislative experiences to protection against international isolation, the proposal calls for a virtually verbatim transplant of the Canadian provision. Specifically included are the provision’s three key qualifying conditions: identification of the underlying work, legality of the work or copy used, and the absence of a substantial adverse impact on the original work.

The only substantive change made was the replacement of the word “solely” with “predominantly” in the remaining qualifying condition concerning noncommercial purposes. Although this change has arguably broadened the exception to cover a wider array of UGC works, it was made primarily to clarify situations where the UGC in question does not fall squarely within the area of noncommercial UGC. A case in point is when the UGC developer has received inconsequential advertising revenue from an internet or social media platform.

Legal commentators generally disfavor the unadapted transplant of foreign copyright laws, due largely to their ineffectiveness and insensitivity to local conditions. Nevertheless, the proposed transplant would provide an important compromise needed to advance the digital copyright reform debate in Hong Kong. A UGC exception is also badly needed considering the government’s hitherto inadequate response to the needs and interests of internet users. Because users will play an increasingly important role in internet development, the proposed transplant would further strengthen Hong Kong’s knowledge-based economy while transforming the region into an internet service and information technology hub.

Notwithstanding these many benefits, the transplant effort is fraught with challenges. In anticipation of the potential criticisms from policymakers, copyright owners and their industry groups, the position paper explains in detail why the proposed UGC exception would comply with the TRIPS Agreement (in particular its provisions on the three-step test and criminal intellectual property enforcement). The paper also addresses additional questions concerning the lack of case law in regard to the Canadian UGC exception, the potential complications of rights in the underlying works and the loophole the proposed exception might create for commercial pirates.

Peter K. Yu, an affiliated scholar of IP Osgoode, holds the Kern Family Chair in Intellectual Property Law at Drake University Law School in the United States. Born and raised in Hong Kong, he serves as the general editor of The WIPO Journal published by the World Intellectual Property Organization and chairs the Committee on International Intellectual Property of the American Branch of the International Law Association.

The post Transplanting the Canadian UGC Exception to Hong Kong: Part 1 appeared first on IPOsgoode.

As the final contribution to the "ATRIP Passes 30" Symposium, which collects the reminiscences of the past and current ATRIP presidents, this short essay provides, in chronological order, some key information about all the pre-ATRIP Round Tables and ATRIP Congresses. This short history not only documents the historical origins, rapid growth and past accomplishments of an important transnational professional association, but also reflects the rapid development of the intellectual property field in the past three decades.

***

This symposium collects the reminiscences of the past and current presidents of the International Association for the Advancement of Teaching and Research in Intellectual Property (ATRIP). As shown in this collection, the World Intellectual Property Organization (WIPO) has played an instrumental role in both the formation of ATRIP and the development of intellectual property as a field of teaching and research. In the past three decades, WIPO has also offered important and continuing support to ATRIP Congresses. It not only has made available its staff (including members of the WIPO Academy), but has also provided generous funding support to ATRIP delegates from developing countries.

Given the close and longstanding ties between WIPO and ATRIP, it is logical for The WIPO Journal to pay tribute to the latter and to document the historical origins and noted accomplishments of this transnational professional academic organisation. Through a trip down memory lane, we not only can learn more about the organisation’s rapid growth and past challenges, but can also better understand the development of the intellectual property field in general. This symposium should be of great interest to all intellectual property professors and researchers, in particular past and present ATRIP members.

Of great interest are the historical origins of ATRIP (including WIPO’s role in the early and much lesser known Round Tables), the focus of its early annual meetings on the teaching of and research in intellectual property (in particular the discussion and dissemination of syllabi of intellectual property courses), the subsequent exploration of intellectual property issues relating to universities and other academic institutions, the relationship between the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS Agreement) of the World Trade Organization (WTO) and the session on national reports (which remains active and is often held on the last day of an ATRIP Congress) and the emergence of specific conference themes in the mid-2000s (which now lend themselves to books published in the ATRIP Series by Edward Elgar Publishing).

In addition, the symposium contributions reflect both the foresight and pioneering effort of WIPO and ATRIP leaders, many of whom have now become elder statesmen in the intellectual property field. The contributions also vividly capture the camaraderie among intellectual property professors and researchers—a trait that, sadly, is not always present in the legal academia. Perhaps because the intellectual property field did not come of age until two decades ago, scholars in this field have always been more open, collegial and supportive of each other, even when they disagree on key issues and developments.

Featured here is the beginning of a paper by , IP Osgoode Research Affiliate, Kern Family Chair in Intellectual Property Law and Founding Director of the Intellectual Property Law Center at Drake University Law School. Born and raised in Hong Kong, Professor Yu is a leading expert in international intellectual property and communications law. He also writes and lectures extensively on international trade, international and comparative law, and the transition of the legal systems in China and Hong Kong. The full article can be found .

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As this chapter will show, the case of fake Beijing Olympics merchandise is rather curious. Even though there undeniably is a significant reduction of this merchandise in Beijing and other major cities during the Olympic Games, fake merchandise was widely present in other parts of the country. To a large extent, the presence of fake Olympic merchandise has shown that the challenge of confronting counterfeiting in China is more a reality than an excuse. It also provides an instructive example for understanding what the Chinese government can and cannot do in its effort to combat massive counterfeiting, the necessary complements for success, and the remaining challenges concerning efforts to protect trademark rights in such a large, complex, and highly populous country.

This chapter begins by describing the measures that the Chinese government and the Beijing municipality had taken in the run-up to the Beijing Olympics. It then explains why the case of fake Beijing Olympics merchandise provides an instructive example of the challenges to combating massive counterfeiting in China. In particular, this chapter explains the local protectionism problem, the need for both the government will and the people’s will, and the inevitable trade-offs concerning the use of enforcement resources. The chapter concludes with some lessons on the future protection of trademark rights in China.

Featured here is an abstract of a paper by , IP Osgoode Research Affiliate, Kern Family Chair in Intellectual Property Law and Founding Director of the Intellectual Property Law Center at Drake University Law School. Born and raised in Hong Kong, Professor Yu is a leading expert in international intellectual property and communications law. He also writes and lectures extensively on international trade, international and comparative law, and the transition of the legal systems in China and Hong Kong. The full article can be found .

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It is therefore no surprise that copyright holders seeking to protect their works in multiple markets remain frustrated by the “territorial mess” created by national divergences in laws, policies, and institutions, not to mention the additional differences in market capacities and consumer expectations.

Although countries have occasionally enforced laws extraterritorially to abate this “territorial mess,” especially in situations involving the Internet, a less intrusive approach is to harmonize the laws of different countries. Since the nineteenth century, sovereign governments have worked with each other to address cross-border challenges by establishing international intellectual property agreements. These agreements ranged from the Paris, Berne, and Rome Conventions to the Agreement on Trade-Related Aspects of Intellectual Property Rights (“TRIPS Agreement”) of the World Trade Organization (“WTO”) to the 1996 Internet Treaties of the World Intellectual Property Organization (“WIPO”).

While territorial challenges posed by national borders continue to exist and remain quite significant, rapid globalization, the increased mobilization of goods and people, and the arrival of the Internet and new communications technologies have further exacerbated these challenges. In the mid-1990s, the popularization of the Internet led commentators and netizens to question the success and appropriateness of using existing laws and regulations to govern the borderless Cyberspace. In A Declaration of the Independence of Cyberspace, for example, John Perry Barlow provocatively declared:

Governments of the Industrial World, you weary giants of flesh and steel, I come from Cyberspace, the new home of Mind. On behalf of the future, I ask you of the past to leave us alone. You are not welcome among us. You have no sovereignty where we gather.

We have no elected government, nor are we likely to have one, so I address you with no greater authority than that with which liberty itself always speaks. I declare the global social space we are building to be naturally independent of the tyrannies you seek to impose on us. You have no moral right to rule us nor do you possess any methods of enforcement we have true reason to fear.

By now, it is quite clear that Cyberspace, though borderless, is far from unregulable. As Lawrence Lessig, Joel Reidenberg, Tim Wu, and many others have reminded us, code can become law. By manipulating or regulating code, countries have successfully fortified borders to assert their longstanding, and often much-needed, sovereign control. After all, political scientists Robert Keohane and Joseph Nye have noted, “information does not flow in a vacuum, but in political space that is already occupied.”

Notwithstanding its regulability, the borderless Cyberspace continues to pose major challenges to the enforcement of intellectual property rights. To alleviate these challenges, the House and the Senate introduced, respectively, bills to enact the Stop Online Piracy Act (“SOPA”) and the PROTECT IP Act (“PIPA”). These proposed statutes seek to target “rogue” websites that facilitate online piracy and counterfeiting. At the international level, the United States, Japan, members of the European Union, and other like-minded countries also aggressively pushed for the adoption of the Anti-Counterfeiting Trade Agreement (“ACTA”). As of this writing, the United States is busy negotiating the Trans-Pacific Partnership Agreement, which is anticipated to include intellectual property provisions pertaining to cross-border enforcement.

Because David Levine’s article and the attendant commentaries in this Symposium already cover many of these issues, this Article focuses on an issue commentators have somewhat ignored: the deployment of region-based restrictions to protect copyrighted content. These restrictions show that, while technology undoubtedly has exacerbated challenges posed by territorial boundaries, rights holders, with the help of national governments, have also successfully co-opted technology to strengthen the protection of their copyrighted content.

A leading example of such technology is the use of region codes by the movie, software, and game industries to protect content stored on digital video discs (“DVDs”)—or what the home electronics industry has now rebranded as “digital versatile discs.” Designed as technological protection measures, DVD region codes direct machines to allow access to the protected content only if the product was coded to be played in the authorized geographic region. The playback control mechanism initiated by these region codes can be found on both DVD players and computers containing DVD-ROM drives. Although a number of legal commentators have briefly analyzed DVD region codes in the context of digital rights management, very few have examined the expediency of using region-based restrictions to protect media content. This Article seeks to fill this void by critically evaluating the use of such restrictions to protect intellectual property rights.

Part I of this Article provides a historical background of DVD region codes and a brief overview of the technology involved. Part II advances four justifications for the deployment of DVD region codes. This Part critically evaluates the strengths and weaknesses of these justifications. Part III identifies four areas in which DVD region codes have created unintended consequences: consumption, competition, cultural rights, and censorship. Part IV advances three modest proposals to address the shortcomings of DVD region codes. Specifically, this Part discusses (1) the voluntary removal of these codes; (2) the provision of affordable multiregion players; and (3) the introduction of a right to circumvent. Part V concludes with an explanation of why a better and deeper understanding of region-based restrictions is both timely and important. By linking DVD region codes to streaming platforms, device-embedded applications, cloud computing, and other emergent technologies, this Part warns that the impact of region-based restrictions on consumers is likely to increase in the near future.

Featured here is the first part of a paper by , Kern Family Chair in Intellectual Property Law and Founding Director of the Intellectual Property Law Center at Drake University Law School. Born and raised in Hong Kong, Professor Yu is a leading expert in international intellectual property and communications law. He also writes and lectures extensively on international trade, international and comparative law, and the transition of the legal systems in China and Hong Kong. The full article can be found .

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In addition to the United States and the European Union, emerging countries such as China and India have negotiated their own nonmultilateral trade agreements. Although these agreements bear some similarities to FTAs and EPAs, they also differ significantly in terms of their language, underlying goals, and negotiating approaches.

It remains to be seen whether these myriad agreements will eventually spark a race among the major trading powers, or even result in a “battle of the FTAs.” It is also unclear whether the recent agreements will subsequently be consolidated into a new multilateral arrangement. Nevertheless, there is no denying that the establishment of these agreements has ushered in a new era of nonmultilateralism, which has raised difficult questions concerning appropriate policy responses. The arrival of this era has also rendered inadequate the existing literature on the interrelationship among various international regimes.

The relationship between intellectual property and human rights is an area that deserves our renewed attention. Although commentators have examined at length the conflict and tension between these two regimes, as well as the human rights impact of the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS Agreement), the intellectual property provisions in nonmultilateral agreements have generated new issues and problems while bringing to the debate many new voices. With the recent adoption of the Anti-Counterfeiting Trade Agreement (ACTA) and the ongoing negotiation of the Trans-Pacific Partnership Agreement (TPP), it is high time we revisit the debate on intellectual property and human rights.

This Article closely examines the human rights impact of the intellectual property provisions in TRIPS-plus nonmultilateral agreements. Part I demonstrates that the debate on intellectual property and human rights deserves our renewed attention. This Part further identifies five sets of new developments that justify a reexamination of the complex interplay between intellectual property and human rights.

Part II outlines the challenges inherent in any analysis of the interface between intellectual property and human rights. Building on the human rights framework for intellectual property I have previously developed, this Part notes the overlap between the intellectual property rights protected under TRIPS-plus nonmultilateral agreements and the rights recognized in existing international or regional human rights instruments. It underscores the importance of distinguishing the human rights attributes of intellectual property rights from the non-human rights aspects of intellectual property protection.

Part III examines the relationship between TRIPS-plus nonmultilateral agreements and the human rights system. This Part discusses the compatibilities between intellectual property provisions in these agreements and the human rights system as well as the resulting synergies created within the system. This Part also examines the various impediments nonmultilateral agreements pose to greater protection of human rights. It discusses, in particular, the conflicts and inconsistencies within these agreements, the lost opportunities for promoting human rights, and the indirect systemic tension that the agreements have generated within the human rights system.

Part IV concludes with a discussion of normative and systemic adjustments that seek to alleviate the tension or conflict between TRIPS-plus nonmultilateral agreements and the international human rights system. It is my hope that these adjustments will help to strike a more appropriate balance between the protection and enforcement of intellectual property rights and the commitments made in international or regional human rights instruments.

Featured here is the first part of a paper by , Kern Family Chair in Intellectual Property Law and Founding Director of the Intellectual Property Law Center at Drake University Law School. Born and raised in Hong Kong, Professor Yu is a leading expert in international intellectual property and communications law. He also writes and lectures extensively on international trade, international and comparative law, and the transition of the legal systems in China and Hong Kong. The full article can be found .

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Although I have discussed the various concerns raised by the highly controversial ACTA and the increasingly intrusive digital copyright enforcement agenda, I have yet to explore what a combination of these initiatives would mean for U.S. individuals, technology developers, and small and mid-sized firms. This Essay picks up that task by exploring whether—and if so, why—these entities should be concerned about this half-cooked alphabet soup.

Part II of this Essay identifies six different concerns and challenges ACTA poses to U.S. consumers, technology developers, and small and mid-sized firms. Part III explores the ongoing negotiation of TPP. Although the secretive and dynamic nature of the TPP negotiations has prevented this Essay from providing a detailed analysis of the emerging agreement, this Part explains why TPP is likely to be more dangerous than ACTA from a public interest standpoint. Part IV concludes by highlighting the challenges recently created by SOPA and PIPA—two pieces of legislation that are as problematic as, if not more problematic than, ACTA and TPP.

Featured here is the first part of a paper by , Kern Family Chair in Intellectual Property Law and Founding Director of the Intellectual Property Law Center at Drake University Law School. The paper was originally published in the Drake Law Review Discourse. Born and raised in Hong Kong, Professor Yu is a leading expert in international intellectual property and communications law. He also writes and lectures extensively on international trade, international and comparative law, and the transition of the legal systems in China and Hong Kong. The full article can be found .

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Professor Peter Yu holds the Kern Family Chair in Intellectual Property Law and is the founding director of the Intellectual Property Law Center at Drake University Law School. He writes extensively on international trade, international and comparative law and the transition of legal systems in China and Hong Kong, and is the author or editor of three books and more than 40 articles and book chapters. Professor Yu has spoken at events organized by the World Intellectual Property Organization, the International Telecommunication Union, the UN Conference on Trade and Development and the UN Educational, Scientific and Cultural Organization.

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