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6 J. Marshall Rev. Intell. Prop. L. 365, *
1 of 100 DOCUMENTS
Copyright (c) 2007 The John Marshall School of Law

The John Marshall Law School Review of Intellectual Property Law
Spring, 2007
6 J. Marshall Rev. Intell. Prop. L. 365
LENGTH: 3487 words
ARTICLE: Let's Make a Deal: Negotiating Resolution of Intellectual Property Disputes Through Mandatory Mediation
at the Federal Circuit
NAME: WENDY LEVENSON DEAN*
BIO: Copyright © 2007 The John Marshall Law School
* Wendy Levenson Dean, J.D., Vanderbilt University School of Law, 1996, is the Circuit Mediation Officer
for the U.S. Court of Appeals for the Federal Circuit. Before joining the newly-created Circuit Mediation Office,
Ms. Dean served in the court's Senior Staff Attorney's Office. Preceding her tenure at the court, Ms. Dean
practiced at the Washington, D.C. office of Arnold & Porter LLP. Ms. Dean wishes to thank Federal Circuit
Senior Staff Attorney J. Douglas Steere and Circuit Librarian Patricia M. McDermott for their assistance with
this article. The opinions expressed in this article are those of Ms. Dean and are not meant to represent the
opinions of the court.
LEXISNEXIS SUMMARY:
... This program offers the parties incentives to settle, such as providing neutral mediators with intellectual property
expertise at no cost to the litigants. ... Indeed, regarding intellectual property disputes, "the most significant benefits of
mediation often are conservation of resources, confidentiality, control over selecting and tailoring the process, selecting
the neutral, and determining the outcome." ... Flexible and creative resolutions As Chief Circuit Mediator Amend
frequently tells mediating parties, "generally, the Federal Circuit can only give the litigants a thumbs-up or a thumbs-
down." ... The docketing statement is the initial screening tool used by Mediation Office staff (the Chief Circuit
Mediator and Circuit Mediation Officer) in considering which appeals might be good candidates for mediation. ...
Before making a decision whether to assign a case to mandatory mediation, the Chief Circuit Mediator or Circuit
Mediation Officer may call counsel with additional questions, starting with a call to any side that has indicated a
reluctance to participate in mediation to better understand possible impediments to settlement. ... The Guidelines
provide for maximum confidentiality at all stages of the mediation process and even the fact of participation in
mediation is generally unknown to the court.
HIGHLIGHT: ABSTRACT
In 2006, the United States Court of Appeals for the Federal Circuit implemented a mandatory mediation program for
parties in all counseled cases, including intellectual property disputes. This program offers the parties incentives to
settle, such as providing neutral mediators with intellectual property expertise at no cost to the litigants. This article
explains how the Federal Circuit's Mediation Program works and provides an overview of the Guidelines. This article
concludes that the Federal Circuit firmly stands behind the mandatory mediation program for intellectual property
disputes and believes the process can only serve to benefit all parties involved.
"I was never ruined but twice: once when I lost a lawsuit and once when I won one." n1
Page 3
Voltaire
"Let us never negotiate out of fear. But let us never fear to negotiate." n2
John Fitzgerald Kennedy
TEXT:
[*365] I. INTRODUCTION
On October 3, 2005, the United States Court of Appeals for the Federal Circuit became the last of the thirteen
United States Courts of Appeals to enact an alternative dispute resolution program. The program is designed to help
parties negotiate settlement of docketed appeals before oral argument. n3 Participation by the parties in the initial pilot
program was entirely voluntary. The pilot program relied exclusively on volunteer neutrals. n4
Page 4
[*366] On September 18, 2006, the court adopted a permanent, mandatory appellate mediation program, n5
followed by the appointments of both James M. Amend, n6 as the court's Chief Circuit Mediator, and a Circuit
Mediation Officer to administer the program and serve as Mr. Amend's deputy. The court's mediation program offers
parties a risk-free, non-binding opportunity to settle their disputes in a confidential, timely, creative way, by utilizing the
services of an experienced mediator with intellectual property subject matter expertise. The parties do not pay the
mediator for his or her service.
II. WHY APPELLATE MEDIATION OF INTELLECTUAL PROPERTY DISPUTES?
Mediation can serve the needs of parties to intellectual property disputes in many cases, especially when the
preservation or creation of business relationships, such as a relationship between a licensor and licensee, is desirable.
n7 However, conventional wisdom argues against successful mediation at the appellate level, most obviously because
the lower tribunal has already declared a winner and a loser. n8 To the contrary, appellate mediation continues to be
successful in federal appellate courts. n9
Page 5
The unpredictability of results on appeal may be one reason mediation works even after a judgment has been entered.
n10 In particular, the lower tribunal "winners"
[*367] in intellectual property disputes may not have as much confidence in a favorable appellate outcome as
appellees in suits involving other subject matter. n11
A. Alternative Forms of Resolution Support the Continuation of Timely Issuance of Quality Precedent from the
Federal Circuit
Nearly 1800 appeals were filed with the court last year, approximately one-third of which involved intellectual
property. Chief Judge Paul R. Michel states that "[p]atent infringement cases . . . have climbed steadily over the last 10
years . . . . [and have] become increasingly time-consuming and difficult to decide. Most involve advanced technologies
of great complexity." n12 Accordingly, even though "the total number of appeals filed has risen only modestly in the
last few years, the amount of labor required to resolve them has increased greatly." n13 Chief Judge Michel reports that
the percentage of judge time expended on intellectual property appeals is considerable and, overall, the court's workload
is increasing. n14
Page 6
[*368] Appellate mediation clearly benefits the court by easing its workload and, on that ground alone, benefits
the bar by allowing the court to maintain the timely issuance of quality decisions in those cases that do not settle. n15
B. Mediation can provide better results for intellectual property litigants
Mediation provides litigants liberties and advantages unavailable in traditional appellate court proceedings. Indeed,
regarding intellectual property disputes, "the most significant benefits [of mediation] often are conservation of
resources, confidentiality, control over selecting and tailoring the process, selecting the neutral, and determining the
outcome." n16 These benefits are discussed in more detail below.
1. Quicker Resolution
Against the backdrop of the Federal Circuit's growing workload and the absence of increased adjudicative
resources, it should be no surprise that mediation provides parties with an opportunity for a quicker resolution of their
disputes. The mediation process can begin within weeks of docketing; thus, the parties need not passively wait in a
queue of appeals on the court's docket. n17
Consider also, as one commentator noted: "More than 97 percent of all filed cases will settle. Therefore, you know
that your own matter, even if you file a lawsuit, is overwhelmingly likely to result in an agreed outcome. Statistically, a
lawsuit just delays the inevitable agreement." n18
Page 7
[*369] 2. Flexible and creative resolutions

As Chief Circuit Mediator Amend frequently tells mediating parties, "generally, the Federal Circuit can only give
the litigants a thumbs-up or a thumbs-down." That is, one side prevails, at least in part, and the other side loses.
In contrast, a mediated remedy may incorporate innovative solutions to long-running disputes:
Perhaps a cross-license is of mutual interest to the parties, or perhaps the parties' competing interests
can be accommodated by geographic limitations or restrictions on the scope of use. Perhaps a patent right
could be traded for a trade secret or a copyright. These are all solutions that the parties themselves could
discover and create, while the courts cannot. By negotiating a win-win solution, parties who may have a
history of cross-licensing or cooperation can continue to cooperate in harmony, without upsetting the
balance of the entire relationship. n19
Outside the confines of the traditional public court paradigm, parties are free to explore royalty rate negotiation,
cross-licensing, mergers and virtually any other business (versus judicial) solution that can be imagined. n20
Additionally, "[p]arties who enjoy the freedom of creating a settlement which meets their interests are more likely to
honor those agreements," thereby avoiding future judicial enforcement action. n21
3. Privacy
In most instances, a mediated resolution shields the participants from the prying eyes of the public. n22 Further,
the privacy of the mediation process enables parties to protect trade secrets and other proprietary information. n23
There are no written transcripts or opinions, and settlement terms may be kept secret with the parties and mediators
bound by confidentiality agreements. n24
Page 8
[*370] In sum, mediation at the appellate level offers an unprecedented opportunity to candidly explore creative
"win-win" solutions to difficult and potentially embarrassing problems, while preserving existing -- or even developing
new -- business relationships and models. Parties have the chance to avoid significant delay and expense associated with
both an appeal and a possible remand, allowing them to get back to running their businesses.
Now, at the Federal Circuit, parties have the opportunity to explore their unique needs and concerns with the
mediator, an expert in intellectual property subject matter, in a non-binding process, without paying a fee for this
valuable service.
III. HOW THE FEDERAL CIRCUIT PROGRAM WORKS.
All counseled cases are eligible for participation. n25 A docketing statement is included in the docketing packet
sent from the Clerk's Office to be completed by the principal attorney of record. n26 The docketing statement is the
initial screening tool used by Mediation Office staff (the Chief Circuit Mediator and Circuit Mediation Officer) in
considering which appeals might be good candidates for mediation. n27
Questions pertinent to selection for mediation include inquiries about settlement history and the candid query, "Do
you believe that this case may be amenable to mediation?" n28 Counsel is directed to explain why a case may not be
ripe for mediation and to provide "any other information relevant to the inclusion of this case in the court's mediation
program." n29
While counsels' answers to the above questions are helpful, with the court's decision to shift to a mandatory
program in late 2006, such answers are not dispositive of whether a case will ultimately be selected for mediation. n30
In analyzing settlement potential, court staff will also review notice(s) of appeal, judgments and other germane rulings,
and relevant pleadings from the lower tribunal. n31 Before making a decision whether to assign a case to mandatory
mediation, the Chief Circuit Mediator or Circuit Mediation Officer may call counsel with additional questions, starting
with a call to any side that has indicated a reluctance to participate in mediation to better understand possible
impediments to settlement. n32
Page 9
Once the Mediation Office has decided that an appeal should be included in the mediation program, the parties will be
notified, a date for an initial face-to-face or telephonic mediation session will be set, and a mediator will be assigned.
n33 In addition to the court's on-staff Chief Circuit Mediator, the court has recruited a cadre
[*371] of experts in intellectual property matters to serve the parties as mediators on an entirely volunteer basis.
n34 Frequently the briefing schedule will be extended to allow the parties to, at least temporarily, focus resources on
settlement. n35
Volunteer mediators are given wide latitude in how to conduct the mediation process after assignment, largely in
deference to their extensive experience as mediators. n36 In-house (i.e., court staff conducted) mediations follow a
more standard format. Mediations are commonly conducted at the Federal Circuit facilities in Washington, D.C. One
week before the mediation session the parties submit confidential mediation statements to the Chief Circuit Mediator.
These statements are not made part of the public record and are not shared with opposing parties. The statement must
include, among other things, identification and candid discussion of: related cases; relevant authority; jurisdictional
issues; prior settlement efforts; each side's strongest and weakest issues; positions that cannot be compromised; and any
other factors that may frustrate or further settlement.
The Federal Circuit's Appellate Mediation Guidelines require participation not only by the principal attorney, but by
a party representative with actual settlement authority. n37 "Actual settlement authority" does not simply mean a person
allowed to accept or offer a minimum or maximum dollar amount. Rather, the Guidelines contemplate that a party
representative is an individual who can make independent decisions based on developments at the mediation, and who
has the knowledge necessary to generate and consider creative solutions.
The Guidelines provide for maximum confidentiality at all stages of the mediation process and even the fact of
participation in mediation is generally unknown to the court. n38 Under no circumstances do mediators (volunteer or
staff) communicate with the merits panel about specific mediation proceedings, including the identity of any involved
parties or counsel. n39
IV. CONCLUSION
The Federal Circuit takes its new mediation program seriously n40 and very much hopes to see it succeed. n41 Chief
Judge Michel views the program as a means of
[*372] relieving the mounting pressures on the bench and enhancing the options available to the bar for dispute
resolution. n42
While a court can expect good faith participation in its alternative dispute resolution program, it cannot compel
settlement, even through a "mandatory" mediation program. n43 Nonetheless, counsel should encourage their clients to
come to the mediator's table with enthusiastic and open minds. Mediation can offer a custom-tailored approach to
unique problems, yielding results that satisfy broad interests.
Through mediation parties can affirmatively shape their business's destinies, efficiently, creatively, and
collaboratively crafting a favorable outcome in many intellectual property disputes.
"[O]n way to think of modern litigation is negotiation done inefficiently and with an attitude." n44
-James Pooley
Legal Topics:
For related research and practice materials, see the following legal topics:
Civil ProcedureAlternative Dispute ResolutionMandatory ADRCivil ProcedureAlternative Dispute
ResolutionMediationsTrade Secrets LawFederal & State RegulationGeneral Overview
FOOTNOTES:
n1 I AN EDITOR'S TREASURY: A CONTINUING ANTHOLOGY OF PROSE, VERSE, AND

LITERARY CURIOSA 1032 (H. Mayes ed. 1968).
n2 John F. Kennedy, President of the United States of America, Inaugural Speech (Jan. 20, 1961).
n3 Federal Circuit Mediation Program, http://fedcir.gov/mediation.html (last visited March 29, 2007). In
1974, the United States Court of Appeals for the Second Circuit initiated the first court - annexed appellate
mediation program. Shawn P. Davisson, Note, Privatization and Self-Determination in the Circuits: Utilizing the
Private Sector Within the Evolving Framework of Federal Appellate Mediation, 21 OHIO ST. J. ON DISP.
RESOL. 953, 958 (2006). The Sixth Circuit adopted a program in 1981, and the remaining circuits (other than
the Federal Circuit) established appellate mediation programs through the 1990s. Id.
n4 Philip J. McConnaughay, ADR of Intellectual Property Disputes, 2002 SOFTIC SYMPOSIUM 1 (Nov.
15, 2002), http;//www.softic.or.jp/symposium/open_materials/11th/en/PMcCon.pdf. "Mediation . . . is the
process by which a neutral third party attempts to assist disputing parties in reaching a voluntary resolution of
their dispute." Id. Mediation is the form of ADR utilized by all twelve federal circuit appeals courts and may be
either facilitative or evaluative (or a combination of both approaches). See generally S. Gale Dick, The
Surprising Success of Appellate Mediation, 13 ALTERNATIVES TO HIGH COSTS OF LITIG. 41, 48 (1995).
n5 U.S. COURT OF APPEALS FOR THE FEDERAL CIRCUIT, APPELLATE MEDIATION PROGRAM
GUIDELINES 1, http://fedcir.gov/guideline06.pdf (last visited March 29, 2007) [hereinafter Guidelines]. With
the exception of the Eighth Circuit, all federal appellate mediation programs are mandatory. See Gilbert J.
Ginsburg, The Case for a Mediation Program in the Federal Circuit, 50 AM. U. L. REV. 1379, 1380 (Aug.
2001).
n6 Mr. Amend obtained his J.D. from University of Michigan, magna cum laude, in 1967, Mr. Amend was a
Fulbright Fulbright Scholar at the London School of Economics from 1967 to 1968, and litigated numerous
patent, trademark and unfair competition matters during his thirty-eight-year tenure with Kirkland & Ellis LLP.
Id. Mr. Amend has served as a mediator of intellectual property disputes and was appointed Special Master by
the United States District Courts for the Eastern District of Wisconsin and the District of Arizona to conduct
claim construction hearings. Id. Mr. Amend is the author of Patent Law-A Primer for Federal District Court
Judges, 1st ed. published by the Berkeley Center for Law and Technology, 1998, 2nd ed. 2007.
n7 Nancy Neal Yeend & Cathy Rincon, ADR and Intellectual Property: A Prudent Option, 36 IDEA 601,
603(1996).
n8 Dana Curtis & John Toker, Representing Clients in Appellate Mediation: The Last Frontier, JAMS
DISPUTE RESOLUTION ALERT, December 2000, at 1, available at http://www.jamsadr.com/images/PDF/dra-
2000-12.pdf.
n9 See S. G. Dick, supra note 4, at 49 ("[T]here is no denying the success of appellate ADR. In fact, the 50
and 60 percent settlement rates [of cases selected for mediation] by some appeals courts rival those found in
trial-level programs and even some private contexts."); see also Kevin R. Casey, Mediation on the Horizon in
the U.S. Court of Appeals for the Federal Circuit, THE ADR ADVISOR, Spring 2005, at 5 ("Sister federal
appellate court mediation programs have been successful . . . . [M]ost circuits report between a 35% and 45%
settlement rate. The programs have enabled courts to accommodate increased filings without additional judges,
saved money, and increased party satisfaction.").
n10 See Curtis & Toker, supra note 8, at 1 ("Appeals from judgments entered as a matter of law, such as
summary judgments . . . are particularly risky because the appellate courts review these appeals de novo. The
reversal rate in these cases is approximately 30 percent.").
n11 Jessie Seyfer, Panel Advises IP Litigators to Wake Up and Smell the Reversals, THE RECORDER, Vol.
131, No. 14 (Jan. 22, 2007) ("With intellectual property litigation . . . [the] mix of high vulnerability and low
predictability makes these disputes perfect candidates for alternative dispute resolution and especially
mediation[.]"); Curtis & Toker, supra note 8, at 2. ("Often a party who prevails on appeal merely wins an
opportunity to return to the trial court.").
n12 Hon. Paul R. Michel, Chief Judge, United States Court of Appeals for the Federal Circuit, Address to
the Federal Circuit Bar Association: The State of the Court (June 29, 2006) (revised July 10, 2006) [hereinafter
Michel, June 29].
n13 Id.
n14 Hon. Paul R. Michel, Chief Judge, United States Court of Appeals for the Federal Circuit, State of the
Court Address at the Federal Circuit Judicial Conference, In the Matter of The Federal Circuit: A National Court
of Appeals Approaching a Quarter Century (May 19, 2006) [hereinafter Michel, May 19]. Chief Judge Michel
recently noted:
[P]atent cases have replaced personnel cases as our most numerous. And of course that represents
a shift in workload because by-and-large the patent cases are more complex and more time-
consuming than the [personnel cases] . . . . The net effect of these changes, I suggest, is that the
workload for our 12 active judges has gone up considerably. We have many more patent cases;
they are more complicated. They take a lot more time. Many of them are close. Many of them
have numerous difficult issues. Yet, we have the same 12 judges to perform all this work.
Consequently, our judges are hard-pressed to maintain the same speed and quality as in the past.
Id. See also Immigration Litigation Reduction: Hearing on Immigration Reform Before the Senate Judiciary
Committee, 109th Cong. 132-33 (2006) (statement of Hon. Paul R. Michel, Chief Judge, United States Court of
Appeals for the Federal Circuit).
We are one of the smallest circuit courts, based on total number of staff and judges . . . . The court
has 12 active judgeships with one vacancy [filled in September 2006 by Circuit Judge Kimberly
Moore], and enjoys the part-time support of four colleagues who have taken senior status. All
appeals with counsel are argued unless the parties waive oral argument. Preparation is done
entirely by the judges, assisted by three "elbow" law clerks . . . . Opinions are written by the
judges with assistance of law clerks, not by staff attorneys.
Id. Further, there is the possibility of expansion of the courts patent jurisdiction with proposed patent reform
legislation. See 152 CONG. REC. S8804-01, S8831 (daily ed. Aug. 3, 2006) (statement of Sen. Orrin Hatch)
("Section 8 [of S. 3818] also contains a provision allowing for interlocutory appeals of decisions involving the
claim construction of a patent").
n15 Richard Becker, Mediation in the New Mexico Court of Appeals, 1 J. APP. PRAC. & PROCESS 367,
369 (Summer, 1999).
Experience has shown that appellate mediation endeavors create a potential for several important
benefits, including a reduced number of cases for the appellate court to decide, fewer remands
and secondary appeals, the streamlining of appeals through partial resolution of issues, the
satisfaction of parties underlying needs and interests and the reduction of time a case spends on
appeal.
Id.
n16 See Yeend & Rincon, supra note 8, at 604.
n17 McConnaughay, supar note 4, at 3 (asserting that "[p]roperly managed . . . ADR mechanisms . . . . are
able to commence immediately (i.e., there is not an entire docket of cases competing for the attention of the
adjudicator")).
n18 James Pooley, Successful Mediation of Intellectual Property Disputes, IPFRONTLINE.COM,

http://www.ipfrontline.com/printtemplate.asp?id=8171 (last visited April 6, 2007).
n19 Kristine F. Dorrain, Alternative Dispute Resolution in Intellectual Property Dispute, THE METRO.
CORP. COUNS., Feb. 2006, at 31.
n20 See McConnaughay supra note 4, at 5.
n21 Yeend & Ricon, supra note 7, at 606.
n22 Tom Arnold, WHY ADR, PATENT LITIGATION 1013, 1040 (Practicing Law Institute 1999).
n23 Id.
n24 See Yeend & Ricon, supra note 7, at 605.

In a mediation situation, any evidence produced for the mediation may not be used in a
subsequent proceeding involving the same parties, except for evidence that would be admissible
at trial regardless of the mediation proceeding. This is of great benefit for those intellectual
property cases involving trade secrets, such as business or technical information, or for
corporations wishing to avoid negative publicity.
Id.
n25 Guidelines, supra note 5, at 1.
n26 Id.
n27 Id. at 1-2.
n28 United States Court of Appeals for the Federal Circuit, Docketing Statement 2,
http://fedcir.gov/docketing_jan_2007.pdf (last visited March 29, 2007).
n29 Id.
n30 Order Revising Appellate Mediation Program (Fed. Cir. 2006), available at
http://fedcir.gov/enbanc06.pdf (implementing mandatory attendance for "at least one mediation session").
n31 Guidelines, supra note 5, at 1.
n32 Id. at 1, 3.
n33 Id. at 3 (requiring at least one face-to-face meeting between the parties and their respective principal
counsels).
n34 U.S. Court of Appeals for the Federal Circuit, List of Mediators, http://fedcir.gov/mediators.html
(credentials and biographies of the court's roster of volunteer mediators). Pursuant to the Federal Circuit's
Appellate Mediation Guidelines, litigants share responsibility for travel, food, and lodging costs incurred by
volunteer mediators if asked by the parties to travel to conduct mediation sessions. Guidelines, supra note 5, at
1.
n35 See Guidelines, supra note 5, at 3.
n36 Id. at 3.
n37 Id.
n38 Id. at 2--3 (explaining the confidentiality responsibilities of the mediator). Each party, party
representative, attorney and person, party or attorney assisting them also must maintain confidentiality with
respect to any settlement communications made or received during or incident to the mediation process. Id. at 3
("The fact that a case is in mediation is confidential unless all participants agree otherwise.").
n39 Id. at 2-3.

n40 See id. at 4. Paragraph I of the Guidelines makes non-cooperation with the Circuit Mediation Office
sanctionable. Id.
n41 See Michel, June 29, supra note 12, at 5. (stating the court's workload "situation underscores the
importance of making the court's . . . mediation program more productive").
n42 See Michel, May 19, supra note 14, at 11 (explaining that the court's mediation program "is another
major initiative and it's intended to meet the squeeze we're in where we have more cases and bigger cases but the
same number of judges. This is one of the methods that we hope will allow us to stay current and stay careful.").
n43 See generally Klay v. All Defendants, 389 F.3d 1191, 1200 (11th Cir. 2004) (interpreting the Federal
Arbitration Act the court recognized, "[i]n the absence of an agreement to arbitrate, a court cannot compel the
parties to settle their dispute in an arbitral forum."); Volt Info. Sci., Inc. v. Bd. of Tr. of Leland Stanford Junior
Univ., 489 U.S. 468, 479 (1989) ("Arbitration under the [Federal Arbitration] Act is a matter of consent, not
coercion"); Fed. R. Civ. P. 16(c)(9) (2006).
n44 Pooley, supra note 18.

Page 15Page 15
11 Ohio St. J. on Disp. Resol. 227, *
2 of 100 DOCUMENTS
Copyright (c) 1996 Ohio State Journal on Dispute Resolution

Ohio State Journal on Dispute Resolution
1996
11 Ohio St. J. on Disp. Resol. 227
LENGTH: 7453 words
Note & Comment: Alternative Dispute Resolution in International Intellectual Property Disputes
NAME: Jennifer Mills
LEXISNEXIS SUMMARY:
... In light of recent trade agreements between the United States and other nations, the use of alternative dispute
resolution (ADR) in intellectual property disputes between parties of different nationalities should experience a
significant increase. ... This note will explore the use of ADR in international patent disputes, discuss recent treaties
that have addressed ADR procedures, and analyze the structure of the World Intellectual Property Organization (WIPO)
arbitration center that opened in Geneva in October of 1994. ... Advantages of Using ADR in International Intellectual
property disputes In a global market that is continually evolving, the advantages of solving international intellectual
property disputes through ADR methods are significant. ... Expedient settlement is of paramount importance in the
rapidly changing technology of today's market, where patents and the technology being disputed may actually become
obsolete before a matter reaches the litigation stage. ... Unlike the WIPO Centre, GATT also provides disputing parties
with binding mediation panels.
TEXT:
[*227]
I. Introduction
Intellectual property n1 is intangible, and unlike with conventional property, the value of intellectual property does
not lie in the individual possession of the property. The value of intellectual property lies in its exclusive use and
licensing by the owner. Because intellectual property is essentially information, it has become very hard to protect in the
current global economy as information transfer and communications have reached unprecedented levels of accessibility
and sophistication. Today, intellectual property is emerging as one of the most valuable commodities in the global
market. In many ways, the global economy is coming to depend on technology. n2 The United States and other nations
have entered into multilateral treaties which have mechanisms to increase the protection of intellectual property.
Arbitration and mediation mechanisms have been outlined in recent multilateral agreements with the recognition that
traditional litigation is no longer an effective means of settling international intellectual property disputes. n3
In light of recent trade agreements between the United States and other nations, the use of alternative dispute resolution
(ADR) in intellectual property disputes between parties of different nationalities should experience a significant
increase. n4 The trend of increasing access to ADR in international intellectual property disputes should provide for
more efficient and economical resolution of these disputes. n5 By their nature, intellectual property disputes often
involve technical information. Areas of intellectual property, such as patents, often involve issues of law and technology
that are rarely addressed by judges, and thus, the judges are unfamiliar with these issues. n6 Therefore, the use of ADR,
with arbitrators and mediators with experience in the technical field at issue, will save time and effort and
Page 16Page 16
[*228] will likely lead to more equitable results. n7

The nature of international disputes lends itself to conflicts as a result of diverse legal systems and tribunal
procedures. n8 Also, international intellectual property disputes often involve nations that may have very different ideas
regarding intellectual property and the level of protection that it should be afforded. n9 Finally, the use of ADR in
intellectual property disputes will alleviate the burden that courts face when disputed technology has gone beyond the
scope of the status quo legal systems. n10 This note will explore the use of ADR in international patent disputes,
discuss recent treaties that have addressed ADR procedures, and analyze the structure of the World Intellectual Property
Organization (WIPO) arbitration center that opened in Geneva in October of 1994. n11
II. ADR of Patent Disputes in the United States
Page 17Page 17
Only during the past decade has the United States recognized arbitration and mediation as useful tools in patent
disputes. n12 The United States forbade arbitration of patent disputes prior to 1983 because patents were viewed to
involve the public interest. n13 The belief was that the government had a duty to intervene in private patent disputes
through the court system to enforce the public interest. The rule that patent disputes were non-arbitrational was not
reversed until Congress enacted legislation in 1983. n14 Since this change, patent arbitration has gradually been
gaining acceptance in the United States. As the legal community recognizes that ADR may be suitable for intellectual
property settlements domestically, the opportunities for using ADR to solve international disputes become even more
apparent.
[*229]
III. Fundamental Problems of International Intellectual Property Disputes
One of the fundamental problems in international intellectual property law disputes is the myriad conceptual
differences in the way in which different nations view intellectual property rights. Until the recent ratification of the
General Agreement on Tariffs and Trade (GATT), n15 which resulted in dramatic changes in domestic patent law in the
United States, n16 domestic law required that patent applications be maintained in secret, and disclosure not be made
until the granting of the patent. The secrecy of pending applications distinguished domestic law from foreign patent
registration procedures, where disclosure occurs at the time of filing.
In addition to registration differences among nations, the view of intellectual property's role in society varies
internationally as well. In the United States, the granting of a patent is viewed as a quid pro quo where the inventor
receives a monopoly on her invention for a period of twenty years, n17 and the public receives the benefit of having the
knowledge placed in the public domain at the end of the term. Other nations view patents as an exclusive right of the
inventor. In Japan, the public does not have a stake in intellectual property during the term of the patent, despite the fact
that some have observed that sixty percent of Japanese economic progress has been a result of technology advancement.
n18
Page 18Page 18
The differing international views of intellectual property go beyond the role of the public with respect to intellectual
property. Some nations view intellectual property as a tool used by industrialized nations to control less developed
nations. The less industrialized nations, such as India, give very little legal protection to intellectual property within
their borders. n19 Because less industrialized nations provide little protection for intellectual property,
[*230] the owner of intellectual property has few means to protect her property in these nations. Thus, in order to
protect their intellectual property, many individuals will not enter the markets of less industrialized or third-world
nations, and progress is further deterred in these nations. n20 Mechanisms employed under international agreements,
that include ADR provisions, may provide better means for protecting intellectual property in less developed nations,
and industrialized nations may then decide to enter the markets in these nations.
As we realize the fundamental differences that exist in intellectual property philosophy, the emergence of new
technology will continue to increase the amount of international litigation. Increased international litigation has led to a
need for arbitration for all forms of international intellectual property disputes. n21 Significant technological changes
have occurred which will have a paramount effect on international transactions and relations. Revolutions in the
development of transportation, communications, and information have created a new global business environment.
Highly technical intellectual property, such as patents and copyrights, are not the only areas needing increased
protection in the global economy. Other branches of intellectual property, such as trademarks and trade secrets, may be a
corporation's most valuable asset. n22 Trademark protection is an area where irreparable harm can occur if disputes are
bogged down in lengthy litigation. n23 Thus, all areas of intellectual property require the flexible and expedient
settlement that ADR mechanisms may provide for the parties.
IV. Advantages of Using ADR in International Intellectual property disputes
Page 19Page 19
In a global market that is continually evolving, the advantages of solving international intellectual property disputes
through ADR methods are significant. ADR methods provide specific benefits that are particularly important to
intellectual property matters. n24 Complex issues, such as choice of law or jurisdiction, will no longer be problematic
when dispute settlement procedures are outlined in multilateral agreements. Other advantages of ADR methods in
international intellectual property disputes
[*231] include expediency, confidentiality, tribunals with technical experts, and emphasis on settlement instead of
determination of rights. n25
The advantages of using ADR are particularly important in technical cases, such as those involving patents. n26
Expedient settlement is of paramount importance in the rapidly changing technology of today's market, where patents
and the technology being disputed may actually become obsolete before a matter reaches the litigation stage. n27
Another danger that the expediency of the ADR methods may prevent is the saturation of a market with infringing
materials. n28 A danger exists in the delay inherent in traditional litigation because a market can become so saturated
with infringing material that by the time the dispute reaches trial, no mechanism can correct the injury to the damaged
party. Thus, one of the strongest arguments for the implementation of further ADR is that the time frame of intellectual
property disputes may be shortened, and parties may be able to correct their injuries.
The second advantage of ADR in international intellectual property disputes is the confidentiality that ADR
provides to parties in patent and technology disputes. n29 In areas of technology, such as trade secrets, where
confidentiality is imperative, the litigation system and discovery process may deter parties from seeking restitution for
infringements of protected technology. n30 The confidentiality of ADR methods provides a further benefit that
international litigation under the International Court of Justice or domestic courts cannot provide.
Page 20Page 20
A third advantage of ADR is that mediation used in international intellectual property disputes is problem solving and
not right determinative. n31 The fact that mediation focuses on solving the problem and not on the rights of the
individuals is the key to its effectiveness in dispute settlement. One of the fundamental problems with intellectual
property disputes is the existence of different views that developed and undeveloped countries have with respect to
intellectual property rights. n32 By focusing on
[*232] problem solving and not exclusively on the rights of each party, settlement may be reached through
compromise. Determining rights, especially when dealing with two or more distinct legal systems, may prove
problematic in any dispute. Concentrating on settlement gives the parties a more tangible goal and the ability to fashion
a remedy more suited to their particular problem. n33
One ADR tool that has been implemented in international intellectual property disputes is mediation panels.
Mediation panels are advantageous because mediators may be chosen who have some relevant technical expertise. n34
Expert mediators will alleviate the need to educate a judge and a jury in technical matters and will decrease the
factfinder's reliance upon technical expert opinion. The failure to have an expert mediator in the area of technology may
lead to a "draconian result." n35 In the twenty-first century, ADR is likely to emerge as a powerful tool for settlement in
international intellectual property disputes. This is a result of international trade agreements which outline ADR
procedures such as the dispute resolution provisions in the General Agreement on Tariffs and Trade (GATT). n36
V. GATT: Alternative Dispute Resolution of Intellectual Property Disputes Through Mediation Panels
Page 21Page 21
Disputes involving intellectual property are often the result of varying standards of protection for intellectual property
in individual nations. n37 More highly developed industrial nations tend to provide higher standards of intellectual
property protection than less-developed nations. n38 For these reasons, intellectual property protection was introduced
at the insistence of the United States into the Uruguay Round GATT talks. n39 Ratified in 1994, n40 GATT has had a
significant effect on United States intellectual
[*233] property law. GATT effectively rewrote United States patent statutes, redefining the patent term
commencement and changing the duration of a utility patent. n41 These changes placed the United States in line with
the rest of the world in many aspects of patent law. n42 The final round of GATT talks resulted in an agreement on the
Trade-Related Aspects of Intellectual Property Rights (TRIPS), which should provide better international standards of
protection to intellectual property. n43 The Dispute Settlement Understanding under GATT is to be used to cover
TRIPS. n44
Page 22Page 22
One method established by GATT to improve intellectual property protection is the creation of a General Council to
monitor the use of the agreements and individual nations' compliance with the agreement provisions. n45 Essentially,
GATT functions as an agreement between governments to regulate trade disputes. n46 All members subject to the
provisions in GATT are under the authority of the World Trade Organization (WTO). n47 The WTO has the objective
of providing a stable framework for world trade. n48 Dispute settlement procedures are also provided to any member of
GATT who requests dispute resolution. n49
[*234] Dispute settlement is carried out by third-party panels of experts who are members of GATT and who are
appointed by the General Council. n50
GATT is not self-executing. Parties may only rely upon the underlying principles of GATT being utilized and
enforced in the national courts and agencies. n51 GATT does not establish a court system to construe GATT or to settle
disputes arising under GATT. Disputes between nations under GATT are often to be settled using GATT panel
decisions. n52 Once a decision is rendered, the panel recommends the member concerned conform to the terms of the
agreements. In addition, the panel may suggest effective means of implementing its recommendations. n53 The panel
may not issue binding judgments which "add to or diminish the rights and obligations provided in the covered
agreements." n54
GATT has developed a sophisticated system of dispute panels that are comprised of international jurists and
experts. n55 These panels should prove useful in patent disputes where experts in the substantive area of the technology
at issue may participate on the panels with international jurists, allowing technical expertise to complement an
international legal decision. GATT panels provide a powerful force in promoting fair international competition,
especially in the area of intellectual property, where trademarks, copyright, and patents are often infringed across
borders. Under GATT procedures, a party may file a complaint which is then reviewedby GATT committees and the
panels of experts who investigate the dispute and report their recommendations. n56 While this process should expedite
settlements in international intellectual property disputes, member nations of GATT have been asking for even better
dispute resolution mechanisms that would include shorter time limits. n57
Page 23Page 23
GATT should enable industrialized nations to provide improved protection to their citizens' intellectual property. The
dispute mechanisms that have been established by GATT may be a significant step toward overcoming the problems
previously experienced in international intellectual property disputes. The standards of protection employed by GATT
through mechanisms such as mediation panels may finally satisfy industrialized nations, such as the United States, who
have been frustrated by what they
[*235] view as inadequate protection under the World Intellectual Property Organization in less industrialized
markets.
VI. WIPO: World Intellectual Property Organization
The World Intellectual Property Organization (WIPO) was established as a specialized agency of the United
Nations on July 14, 1967, to administer treaties n58 dealing with intellectual property. WIPO falls under the jurisdiction
of the International Court of Justice, n59 and the process for settling disputes in this system is both complex and
lengthy. In recent years, WIPO has been viewed as deficient in dispute settlement because few enforcement mechanisms
exist within the WIPO structure. n60 For these reasons, WIPO has sought to introduce new methods of dispute
resolution that may prove more efficient in addressing the unique disputes of the global intellectual property market.
One method of solving the problems of international intellectual property disputes is the harmonization of intellectual
property treatment. n61 Another means of providing intellectual property protection that WIPO has pursued is the
opening of the WIPO Arbitration Centre (Centre) at its headquarters in Geneva. The Centre offers dispute settlement
between private parties in areas of intellectual property law in the international sphere.
Page 24Page 24
The Centre provides a structure for arbitration, mediation, expedited arbitration, and combinations of mediation and
arbitration for private parties with intellectual property disputes. n62 The Centre administers arbitration and mediation
procedures through the use of qualified neutral parties from around the world. n63 The Centre also provides a forum for
discussion of international intellectual property issues and will conduct training programs for mediators. n64 Parties
may refer disputes to the Centre through the use of an arbitration clause in a contract or through a submission agreement
from
[*236] opposing parties in an existing dispute. n65 Additionally, the Centre provides a schedule of costs and fees
for arbitrators and mediators that are calculated based upon the amount of money in dispute. n66
Mediation at the Centre is carried out using neutral intermediaries. The mediation is non-binding, and the parties
may pull out of the settlement procedures at any time before a settlement is signed. n67 However, if the parties fail to
reach a settlement, a method of arbitration exists at the Centre that calls for a combination of mediation and arbitration.
n68 Under this method, when a dispute is not settled through mediation within a prearranged time frame, the dispute
goes directly to arbitration. n69
Arbitration is carried out using either a single arbitrator or a three-member panel composed of neutral arbitrators.
Unless other procedures are chosen by the parties, each side in a dispute settlement using a three-member panel may
choose one neutral party, and the Centre will choose the third. n70 Arbitration, unlike mediation, is binding upon the
parties, and a party may not withdraw from the process before a settlement is reached. n71 Also, a method for
expedited arbitration is outlined by WIPO that allows for an expedited award decision, and thereby a reduction in the
cost of settlement. n72
During the initial months of the Centre's existence, no arbitration has occured between parties. However, the
Centre is used as a forum to discuss arbitration and mediation in international intellectual property disputes. n73 WIPO
anticipates a delay before any dispute resolution process actually takes place because members of WIPO are just
beginning to include arbitration clauses in their international intellectual property contracts. n74
Page 25Page 25
Previously, WIPO administered all of the major international intellectual property disputes, including one of the most
encompassing bilateral intellectual property agreements, n75 the Paris Agreement. Other
[*237] treaties, such as the Patent Cooperation Treaty (administered under WIPO), tried to harmonize patent rules
internationally. n76 However, this protection was limited to member countries. The most protective and far reaching
international intellectual property agreement, however, appears to be included in GATT. Presently, GATT is the
multilateral treaty that provides the most encompassing treatment of intellectual property disputes. However, it is
uncertain whether GATT can provide adequate protection, n77 or solve all of the inadequacies of the previously
existing patent dispute mechanisms.
WIPO has no effective means to enforce an individual nation's intellectual property laws. The world market has
demonstrated WIPO's ineffectiveness in providing a protection mechanism for intellectual property. A need has
developed for a system that is "trade-based and flexible" enough to meet the needs of an international community. n78
WIPO also works with other groups to protect intellectual property, such as the International Association for the
Protection of Industrial Property (IAPIP). n79 The IAPIP is a non-governmental, multinational organization which
works to protect intellectual property and advocates the use of ADR in intellectual property disputes. n80 WIPO's
recognition of the impending need for change in both the public and the private sector has led to the opening of the
Arbitration Centre in Geneva.
VII. Problems in International Forums: GATT v. WIPO
When an individual has a problem in a foreign nation, the individual often must deal with a foreign legal system to
seek compensation. This process presents many complex issues, including choice of law questions, the existence of
equitable remedies, and the measure of damages. n81 Under both WIPO and GATT, the treatment of the dispute may be
resolved under structured dispute conventions that may alleviate many of these problems.
Page 26Page 26
As two forums have emerged to deal with multilateral treaties in the

[*238] current international intellectual property arena, concern is growing as to how GATT and WIPO will work
together without, as one commentator stated, "a wasteful struggle for turf." n82 This concern becomes more acute in
light of the opening of the new Arbitration Centre in Geneva, an attempt by WIPO to expand its role in international
intellectual property disputes. The Arbitration Centre will overcome one of the largest obstacles to using WIPO in
intellectual property disputes: having to appear before the International Court of Justice, which involves complex and
time consuming procedures, especially for parties who are in need of expeditious remedies. Most nations recognize the
increased use of arbitration and other methods of dispute resolution as a necessity. The IAPIP, whose Congress has been
examining proposals for the administration of effective dispute resolution between private parties under international
arbitration in WIPO since 1992, is also recognized by the world community as an important administrative body for
dispute resolution. n83
Advantages and disadvantages for the protection of intellectual property exist in both WIPO and GATT with
respect to resolving disputes in the international sphere. GATT provides a better standard for protection of intellectual
property because, unlike the treaties enforced by WIPO, GATT lays down minimum standards of patent protection and
provides a workable definition of what is patentable. n84 Unlike the WIPO Centre, GATT also provides disputing
parties with binding mediation panels. However, WIPO still maintains a significant role in the registration of
international patents and the development of international patent legislation. n85 Also, WIPO has years of experience
and background in dealing with international intellectual property issues, for which GATT cannot immediately
compensate. However, both GATT and WIPO are entering new areas in the use of arbitration and mediation with
respect to intellectual property disputes.
GATT appeals to developed countries for intellectual property protection, while WIPO is more likely to appeal to
developing countries who see intellectual property as a tool of control and not a commodity for trade. n86 Significant
tension exists between GATT and WIPO, as two independent systems of patent protection and dispute resolution seem
to be emerging in both. In light of recent trends, the role these two independent bodies will have in relation to each other
seems unclear.
WIPO, however, is only effective for those countries who choose to
[*239] join the convention. Many developing countries have declined to join because doing so would be against
their best interests and they would have little to gain by joining WIPO. On the other hand, GATT provides incentives for
developing nations to join outside the area of intellectual property. Developing countries view the protection of
intellectual property as a domination tool used by the more advanced nations, who tend to generate more of the valuable
patents and copyrights used in today's market, and therefore resist the intellectual property protection. Thus, GATT
would provide better protection to industrialized nations because incentives exist within it to encourage less developed
nations to join. n87 Also, GATT is more flexible in adapting to emerging technological innovation under the TRIPS
agreement. n88 In the end, GATT will most likely emerge as the dominating force in international intellectual property
disputes because the United States, a leader in intellectual property development, has been a strong supporter of GATT.
VIII. Conclusion
The overwhelming benefits of using ADR methods for international trade disputes should encourage greater use of
ADR methods in such disputes. Recent decisions seem to indicate a trend toward an increased use of arbitration and
mediation in international intellectual property disputes. This trend will most likely continue as international
jurisprudence evolves to accommodate advances in technology and information transfer in our society.
ADR is a likely mechanism to alleviate the obstacles present within international intellectual property disputes that
exist due to different cultural views of intellectual property and jurisprudence. The flexibility and communication that
ADR methods encourage will decrease many of the obstacles to efficient resolution of intellectual property disputes in
the global market. As alternative dispute resolution becomes more prevalent, cooperation between WIPO and GATT
should be developed, utilizing the strengths of both organizations to foster effective arbitration and mediation rules
throughout the global market.
Legal Topics:
International LawDispute ResolutionArbitration & MediationGeneral OverviewInternational Trade LawDispute
ResolutionArbitrationInternational Trade LawTrade AgreementsIntellectual Property Provisions
FOOTNOTES:
n1 "Intellectual property," for purposes of this Note, includes all forms of intellectual property such as
patents, copyright, trademarks, and trade secrets unless otherwise indicated.
n2 Rory J. Radding, Intellectual Property Concerns in a Changing Europe: The U.S. Perspective, 7 Int'l L.
Practicum 41, 41 (1994).
n3 World Intellectual Property Organization, Press Release No. 93, Oct. 1, 1993 [hereinafter WIPO].
n4 One of the most recent and significant trade agreements that the United States has entered into is the
General Agreement on Tariffs and Trade (GATT), which contains a significant number of dispute resolution
provisions. See GATT, infra note 15.
n5 WIPO, supra note 3.
n6 Tom Arnold et al., Patent ADR Handbook § 5.02 (1991).
n7 Id.

n9 Eileen Hill, Trade-Related Aspects of Intellectual Property Rights; General Agreement on Tariffs and
Trade, Business America, Sept. 10, 1990, at 17. See also, Tara Kalagher Giunta & Lily H. Shang, Ownership of
Information in a Global Economy, 27 Geo. Wash. J. Int'l L. & Econ. 327, 329 (1993-94).
n11 Id.
n12 35 U.S.C. § 294 (1988).
n13 In the United States, the patent is viewed as a monopoly for the inventor for a fixed term of years in
return for the public retaining use after the term expires. The power of Congress to grant patents is a
Constitutional right as a means to advance science.
n14 35 U.S.C. § 294 (1988); see also, Gary B. Born, International Commercial Arbitration in the United
States 366 (1994).
n15 General Agreement on Tariffs and Trade--Final Act Embodying the Results of the Uruguay Round of
Multilateral Trade Negotiations, April 15, 1994.
n16 See Intellectual Property; GATT Bill Brings Major Reforms to Domestic Intellectual Property Law,
Daily Report for Executives, Dec. 5, 1994, at 231.
n17 The term for patents in the United States was changed by GATT. The term for a patent has changed
from a term of seventeen years from the date that the patent was granted, to a period of twenty years from the
date of filing. 35 U.S.C.A. § 154(a)(2) (West Supp. 1995).
n18 Mark S. Cohen, Japanese Patent Law and the WIPO Patent Law Harmonization Treaty: A Comparative
Analysis, 4 Fordham Intell. Prop., Media & Ent. L.J. 847, 849-50 (1994).
n19 Luxman Nathan, Will the Pirates Walk the Plank? Prospects for Reform in India's Intellectual Property
Rights Standards, 6 Helvidius, Colum. U. Undergraduate J.L. & Pub. Pol'y 44, 44-46 (1994).
n20 Luxman, supra note 19, at 44-46.
n22 Floyd A. Mandell, In Trademark Litigation, Success Often Depends on Timing and Foresight, Nat'l L.J.,
May 16, 1994, at c22.
n23 Id.
n24 Arnold, supra note 6, at § 5.01.

n25 ADR More Than a Means of Resolving Disputes--Maintain Relationships, Save Time and Money,
Leapfrog Outside Firms, Corp. Legal Times, May 1994, at 1 [hereinafter ADR].
n26 Allan J. Kaufman, Conflict Resolution: ADR Offers Legitimate, Flexible Options, Mich. Law. Wkly,
Oct. 17, 1994, at 5.
n27 Arnold, supra note 6, § 5.03.
n28 Robert G. Krupka et al., Section 337 and the GATT: The Problem or the Solution, 42 Am. U. L. Rev.
779, 783 (1993).
n29 Arnold, supra note 6, § 5.05.
n30 Id.
n31 ADR, supra note 25, at 1.
n32 Developing countries feel there should be a lower standard of intellectual property protection for their
nations because of the great need that exists in developing countries for the advancement of technology. See
Hill, supra note 9, at 17.
n33 ADR, supra note 25, at 1.
n34 Corporate Legal Times Roundtable, Corp. Legal Times, May 1993, at 21.
n35 Martin Fox, Attorneys Praise Alternate Methods to Settle Disputes, N.Y. L. J, May 26, 1994, at 1.
n36 GATT, supra note 15, annex. to art. VI.
n37 Coopers & Lybrand: EC Commentaries, Dec. 22, 1994, § 14.1.
n38 Hill, supra note 9, at 17.
n39 GATT was originally proposed in 1947. The latest rounds of talks involving intellectual property took
place during the Uruguay Round in Geneva. See Peter Truell, The Outlook: Trading Places in Global Commerce,
Wall St. J., Aug. 14, 1989, at 1.
n40 GATT was passed by the House of Representatives on November 29, 1994, and by the Senate on
December 1, 1994. President Clinton then signed the agreement into law on December 8, 1994. Global Trade
Pact Signed by Clinton, Chi. Trib., Dec. 8, 1994, at 1.
n41 The utility patent term in the United States increased from a seventeen-year term commencing with the
grant of a patent to a twenty-year term commencing at the date of filing. The term for a design patent, fourteen
years, however, remained the same. A design patent is distinguished from a utility patent by the fact that a utility
patent must have a "use," while a design patent must be "aesthetic." See 35 U.S.C.A. § 101 (West Supp. 1995);
Thomas G. Field, Jr., Intellectual Property: Some Practical and Legal Fundamentals, 35 IDEA: J. L. & Tech. 79,
89 (1994).
n42 As a result of GATT, the United States became a first-to-file nation. Under a first-to-file system, patent
applicants are not required to prove they are the inventors of the technology. The applicant must simply be the
first to file the application. See Leaffer, infra note 48, at 290.
n43 Hill, supra note 9, at 17.
n44 GATT, supra note 15, Agreement on Trade-Related Aspects of Intellectual Property Rights, annex 1C.
n45 The World Trade Organization was created under GATT to administer the trade provisions of the
agreement. GATT, supra note 15, Agreement Establishing the World Trade Organization, art. I.
n46 Id.
n47 GATT, supra note 15, Agreement Establishing the World Trade Organization, art. IV.
n48 Marshall A. Leaffer, Protecting United States Intellectual Property Abroad: Toward a New
Multilateralism, 76 Iowa L. Rev. 273, 298 (1991).
n49 Tara Kalagher Giunta & Lily H. Shang, Ownership of Information in a Global Economy, 27 Geo. Wash.
J. Int'l L. & Econ. 327, 329 (1993-94).
n50 Leaffer, supra note 48, at 301.
n51 Al J. Daniel, Jr., Agricultural Reform: The European Community, The Uruguay Round, and
International Dispute Resolution, 46 Ark. L. Rev. 873, 905 (1994).
n52 Id. at 906.
n53 GATT, supra note 15, annex. 2, art. XIX, § 1.
n54 Id, at § 2.
n55 Daniel, supra note 51, at 907.
n57 Id. at 302.
n58 Specifically, WIPO administers the Paris Convention, the Berne Convention, the Madrid Agreement,
and the Rome Convention. See Cordray, infra note 60, at 122.
n60 Monique L. Cordray, GATT v. WIPO, 76 J. Pat. & Trademark Off. Soc'y, 121, 131-32 (1994).
n61 Attempts at international harmonization had been tried for several years. However, the United States, a
leader in world intellectual property, resisted changing to a first-to-file nation.
n63 Id.
n64 WIPO Arbitration Center: International Center for the Resolution of Intellectual Property
DisputesIntroductory Information, Oct. 1994.
n65 WIPO, The Services of the WIPO Arbitration Center, Oct. 1994, at 9.
n66 Id. at 40-48.
n67 Id. at 23-28.
n68 Id. at 35.
n69 WIPO, WIPO Mediation Rules-- WIPO Arbitration Rules-- WIPO Expedited Arbitration Rules 74-75
(1994) [hereinafter Rules].
n70 Lawrence Mattis, et al., International Developments Trade: IP Treaty Developments, 4 No., 11 J.
Proprietary Rts. 28, 28 (1992).
n71 Rules, supra note 69m at 74-75 (1994).
n72 WIPO Arbitration Center: International Center for the Resolution of Intellectual Property
DisputesIntroductory Information, Oct. 1994 [hereinafter Center].
n73 WIPO, supra note 65, at 49.
n74 Center, supra note 72.
n75 Giunta & Shang, supra note 49, at 334.
n76 Alan S. Gutterman, International Intellectual Property: A Summary of Recent Developments and Issues
for the Coming Decade, 8 Santa Clara Computer & High Tech L.J. 335, 339 (1992).
n79 Seeking New Industrial Property Rules in a Changing World, Daily Yomiuri, April 7, 1992, at 3
[hereinafter Changing World].
n80 Id.
n81 Williard Alonzo Stanback, International Intellectual Property Protection: An Integrated Solution to the
Inadequate Problem, 29 Va. J. Int'l L. 517, 518 (1988).
n83 Changing World, supra note 79, at 3.
n84 Frances Williams, GATT Joins Battle for Rights to Protect-Frances Williams on Differences with WIPO
over Intellectual Property Jurisdiction, Fin. Times, July 7, 1994, at 7.
n85 Id.
n87 Cordray, supra note 60, at 131-32.
n88 Michael L. Doane, TRIPS and International Intellectual Property Protection in an Age of Advancing
Technology, 9 Am. U. J. Int'l L. & Pol'y 465, 483 (1994).
Page 33Page 33
3 Tex. Intell. Prop. L.J. 23, *
9 of 100 DOCUMENTS
Copyright (c) 1994 State Bar of Texas, Intellectual Property Law Section
Texas Intellectual Property Law Journal
FALL, 1994
3 Tex. Intell. Prop. L.J. 23
LENGTH: 4906 words
ARTICLE: INTELLECTUAL PROPERTY MEDIATIONS: SPECIAL TECHNIQUES FOR A SPECIAL FIELD +
+ Copyright © 1994, Margaret E. Anderson.
NAME: Margaret E. Anderson *
BIO:
* Browning, Bushman, Anderson & Brookhart, Houston, Texas.
LEXISNEXIS SUMMARY:
... Statistics indicate that mediation itself is a powerful process; approximately 60% of all cases that go into mediation
do settle, i.e., without regard to the skill of the mediator. ... A client will enter the mediation with a much different
attitude -- a more positive, confident, creative and settlement-minded attitude -- if it has been his decision to mediate.
This begins the process of giving the client an additional psychological stake in helping to make the mediation process
work. ... 2) Either during an intake conference, or in follow-up phone calls, the mediator can give each party some
suggestions for what to do during the mediation and some things to think about, at a time when the party in fact has time
to think about these things. ... 3) The mediator has time to brainstorm the unhurried and carefully gleaned input from
both sides and is therefore more likely to enter the mediation proper with many ideas in mind concerning the particular
manner in which the mediation should be conducted, and often even with substantive ideas for possible settlement
terms. ... Another goal of the intake conference is to begin to explore, in a non-threatening manner, the party's "walk-
away alternatives" to a negotiated settlement. ... This does not mean that once a mediator chooses to stop caucusing and
get into plenary session, that must go on indefinitely. ...
TEXT:
[*23] Statistics indicate that mediation itself is a powerful process; approximately 60% of all cases that go into
mediation do settle, i.e., without regard to the skill of the mediator. I know of no studies or statistics breaking out
intellectual property mediations, but my personal guess is that the success rate is probably a bit lower. I have found,
however, that my own personal success rate has improved since I have tried different techniques, not typical of many
attorney mediator styles.
This paper is not about "the" way to do IP mediations; it is about flexibility and making educated choices. Many
attorneys (and even mediators) are not fully aware of the wide range of styles and techniques possible. I believe that the
success rate of intellectual property mediations could be increased far beyond the 60% average if both counsel and
mediators in the field expand their repertoire.
Page 34Page 34
[*24] I. Threshold Questions

1) Do you, or more properly, does your client, really want to settle the case preferentially to going to trial? If you
are in the mediation "doing your time" only because you were pressured into it by the judge, answer this question "no."
2) Would you or your client like to see a result that goes beyond the limits on what a court can give you? A court
can give, or refuse, an injunction, and can give, or deny, monetary relief, the amount of which may vary. What this
second question means is, would you like to explore solutions that would allow for additional features such as cross-
licensing, joint ventures, phase-out periods, or even more creative tailor-made solutions? In general, IP cases are more
susceptible to win-win solutions than are general civil tort cases.
Any answer that begins with "yes, but" counts as a "yes" on this question. Typical "buts" are: We already know the
other side will not go for that sort of thing -- in fact they are totally unreasonable; our client does not wish to "get in
bed" with the other side -- there is too much bad blood between them; we have tried to negotiate along these lines
before, and it didn't work. I have seen and heard of too many cases where people had such opinions going into a
mediation and were in fact able to come to a mutually acceptable agreement, only to be discouraged by the "buts." A
mediator who can speak confidentially with both sides and steer each side without necessarily revealing the confidences
of the other and, most especially, who is more objective and more neutral even than counsel, can often accomplish
things or help the parties accomplish things that everyone initially thought were impossible.
3) Is the case complicated? IP cases frequently are. It is likely to take hours for a mediator to get a handle on the
facts, and each side's respective view of those facts. Are the issues necessary to the parties' decision more numerous
and/or complex than "who will pay how much to whom?" Typically, IP cases tend to be fact-intensive, involving many
issues, each of which is complex.
4) Is an acceptable settlement agreement likely to be more complicated than a simple document stating how much
will be paid by one party to another? For example, many settlements in IP cases involve licenses, complex agreements
in which many different issues must be considered.
5) Are one or both of the parties sizable corporations?
II. Conventional Attorney Mediator Techniques

If, in a given case, you answered "yes" to one or more of the above questions, there are a number of common
attorney mediator techniques or philosophies that, in my opinion, should, at best, be used as fall-back techniques. In my
experience, these techniques and philosophies are not only unsuccessful, they can even be counter-productive.
Page 35Page 35
[*25] A. Continuous Session

What this usually amounts to, in practice, is trying to complete a mediation, including a signed agreement (at least
an agreement in principle) in one day. Often, the one day extends far into the evening or night. Some of the
philosophies behind the use of this technique seem to be: if the parties are allowed to break the momentum, go away,
and think about the situation, they will not settle; if you can keep people holed up long enough, they will eventually
become miserable enough to agree to something as a means of escape; if they are there "under duress," i.e., only
because the judge pushed it, given the opportunity, they will escape and never return.
Recall that at least one of the premises, based on the questions above, for considering the effectiveness of these
typical techniques is that your client is not simply there under duress, but really would like to settle. Such a client is
unlikely to lose his desire to settle simply because he is allowed to go home at a reasonable time, when his circuits have
become overloaded with the complexity of the case itself and the various ideas for settlement and people are beginning
to talk (and think) in circles.
Even if your client is mediating reluctantly, do you really want him to sign off on an agreement, even if it is just an
agreement in principle that, if he had a little time for calm reflection, he would not sign? If the agreement involves
some type of ongoing relationship, e.g., a license, how likely is it that things will go smoothly in the performance of that
agreement if, after reflection, the parties regret having entered into it? Moreover, if they do, and are later unhappy, who
are they likely to blame? Possibly their attorney, who "let" it happen to them. The best (win-win) settlement
agreements in IP cases are usually just too complex to complete in one day.
Sizable corporations' representatives are not likely to be pressured, by attempted psychological incarceration,
deprival of food, and/or arm twisting, into making a decision for their own immediate personal comfort, particularly if
large sums and/or injunctive issues regarding valuable technology are involved and/or their principals can afford to go
to trial. In other words, many clients are simply too strong, too sophisticated, and/or have too much at stake to fall for
this technique. The rules and the mediators can say what they will about the need for party representatives to come into
a mediation with full authority to settle. No large corporation is going to send a representative with a blank check, nor
is it going to send its CEO to every mediation in which the corporation may be involved. If the mediation process has
convinced the corporate representative that her authorization limit should be modified, she will at least need to be able
to "phone home" during normal business hours and, in many instances, will need to return personally to the home office
and discuss the situation in detail, in order to obtain the modification. For reasons developed more fully below, the
success of the mediation, i.e., settlement, may actually depend on recessing and reconvening. Conversely, if such a
corporate representative is pressured to make a yes-or-no decision now, the answer will probably be "no."
Page 36Page 36
Another difficulty with one-day mediations in complex cases is that the mediator may well spend at least half a day in
caucuses getting a handle on the facts, and the motivations and positions of the parties, and letting them get things off
their chests. By the time true mediation, i.e., facilitated negotiation, gets started, say early to mid-afternoon, it is
virtually hopeless to expect to settle a case of such complexity before people begin to burn out. This problem is not, in
my experience, solved by having the parties submit lengthy documentation to the mediator in advance.
[*26] Such documentation inevitably focuses on the merits of the case, which often prove to be relatively
unimportant in obtaining settlement. There is no substitute for in-person interviews that allow the mediator to become
aware of the parties' (as opposed to the lawyers') views of the facts, their attitudes, their business considerations and
concerns, etc.
Finally, the mediator, who concentrates intensely on what the parties and counsel are saying, can often be more
helpful if he has "think breaks." Some of my best ideas have come to me while lunching separately from the others or
during overnight (or longer) recesses. The same goes for the parties. In addition, these "think breaks" are emotional
breaks that help the parties return to more logical and creative ways of thinking.
B. Use of Caucusing, Virtually Exclusively, as "The" Process

This technique is so common that many practicing attorneys equate mediation with shuttle diplomacy. There are
often very good reasons for using the caucus process. However, good reasons do not include: (a) that the mediator
doesn't know any other way to proceed; or (b) that the mediator takes the path of least resistance for himself, when a
plenary session (harder work for the mediator) might be more effective in bringing the parties to a better and a more
acceptable agreement and/or eliminating some of the ill feelings that have built up and that could interfere with smooth
performance of the agreement.
Where, as is often the case in IP suits, both parties are corporations or other business entities and may even have
dealt with each other previously; where their considerations for what will and will not be an acceptable settlement are
essentially business considerations; there is often not the same need to keep them separated, as some believe prevail in a
more emotionally charged general civil case, e.g., the parents of a child who has been killed in an auto accident
negotiating with the other driver.
While most IP mediations require some caucusing, caucusing exclusively is inefficient and inhibits creative
brainstorming. Worse, it can tend to keep the parties polarized, or even increase their animosity. This is especially true
where the mediator relies heavily on unpleasant, "strongarm" tactics; the parties may transfer their anger and resentment
at these tactics at least partially to their opponents. This effect is even further exacerbated where each party remains in a
given room, with the mediator shuttling between them; if the parties have to change rooms for caucusing, they at least
have some contact with each other in passing back and forth. Finally, caucusing discourages participation by the
parties, as opposed to their counsel, the importance of which is discussed more fully below.
C. Bringing Out Respective Weakness in the Parties' Cases as the Primary (or Perhaps Exclusive) Tool of the Mediator
This is another one of those techniques that is so common that many attorneys believe it is "the" way a mediator
can precipitate a settlement. In my experience, and in my extensive study of the Harvard negotiation method, this
should be used selectively in a manner I shall detail more fully below.
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[*27] Pitfalls of this technique are particularly (though not exclusively) relevant to threshold questions 3 and 4
above. The best way to appreciate the first of them is so simple, it rarely occurs to us; just reflect on personal
experiences in which a cause you strongly believe in was attacked or slammed. What was the effect of that attack on
you? Did it make you question your position and become more amenable to settling with your opponent? If you are
like most attorneys, and indeed most people, more likely it made you want to stand and fight.
While this technique can, and often does, work, it tends to work by causing parties to gradually, incrementally, give
ground on their (typically numerical) positions, resulting in a compromise. Such a compromise is usually better than
going through with trial, and the parties usually realize that. Nevertheless, both go away dissatisfied and with a bad
taste in their mouths. While settlement sometimes means both parties go away less than pleased, it is not, as some
would have you believe, of the essence of mediation.
This leads us to the ramifications vis-a-vis Threshold Question 2 above. If the fault-finding technique is used too
soon and/or too crudely, it may squelch the sort of win-win solution that is possible, particularly in commercial or
business litigation.
III. Alternate Techniques
A. Mediation by Agreement
To enhance the chances that your mediator can and will use the other techniques detailed below, I strongly
recommend that you urge your clients to enter into mediation by agreement, rather than waiting for a court order (or
heavy suggestion). It is highly unlikely that a judge will pressure you into having a second mediation if you have
already done this. Meanwhile, mediation by agreement can achieve several very important goals.
It is the first opportunity to begin the client empowerment, and involvement of the client in the process, which is so
important to the most successful and satisfactory mediations. A client will enter the mediation with a much different
attitude -- a more positive, confident, creative and settlement-minded attitude -- if it has been his decision to mediate.
This begins the process of giving the client an additional psychological stake in helping to make the mediation process
work.
With mediation by agreement, it is also easier to "shop" mediators and choose those who are familiar with and who
are willing to use the techniques detailed below, if you and your client have decided that those are the approaches you
would prefer. Such a mediator sees the parties and/or their counsel rather than the court as the source of his
employment; and while one would certainly not want a manipulatable yes-man for a mediator, this knowledge on his
part will tend to make him more receptive to the idea of working with the parties to develop a process with which they
are comfortable.
A caveat: Some attorney mediators are so into the more conventional techniques listed above that if you ask them if
they can use the techniques detailed below, they may give a positive answer without fully realizing just what it is that
you desire, or without experience in using these techniques. It is therefore advisable to interview the prospective
mediators in some detail and to ask for references.
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[*28] B. Intake Conferences

I have experienced considerable improvement, particularly in patent or other complex cases, by having a separate
intake conference with each party, respectively, prior to the day we begin mediation proper. During these intake
conferences, we accomplish many of the same things that otherwise must be done in lengthy first caucuses in a
conventional mediation. Thus, when the mediation actually begins, we are ready to really being negotiating very early
in the day.
During the intake conference with one party, the other party is not tapping his toe and watching his attorney's clock
run. The mediator is not rushing the party in intake, because of awareness of what might be happening psychologically
with an opposing party who has to wait, wonder, and watch the clock run.
With an intake conference the mediator can accomplish several significant things:
1) She is briefed on the (usually complex) facts and the parties' interests.
2) Either during an intake conference, or in follow-up phone calls, the mediator can give each party some
suggestions for what to do during the mediation and some things to think about, at a time when the party in fact has time
to think about these things.
3) The mediator has time to brainstorm the unhurried and carefully gleaned input from both sides and is therefore
more likely to enter the mediation proper with many ideas in mind concerning the particular manner in which the
mediation should be conducted, and often even with substantive ideas for possible settlement terms.
The intake conference also allows each party and its counsel to meet the mediator and begin to develop some
rapport and comfort in a less stressful environment than one in which the opponent is also present on the premises.
In the intake conference, one of my main goals is to discover what needs, concerns, past history, etc., are driving
the numerical or other positions of the party. By this means, it is often possible to discover that the position the party
takes is really only one means to the true goal he (whether consciously or unconsciously) wishes to achieve. Since there
is usually more than one means to such an end, this tends to open up alternative possibilities, such that if one of them
doesn't fly, another might. Failing to find a more basic goal than the almighty dollar, one can still, at least, discover
other ancillary goals that are important to the party and that, if satisfied by a proposed settlement, can help tip the scale
in favor of agreement.
Another goal of the intake conference is to begin to explore, in a non-threatening manner, the party's "walk-away
alternatives" to a negotiated settlement. Typically, these are either going forward with litigation or completely cratering
and giving in to the other side. It is at this point that the mediator may first begin to use questions and comments that
refer to the downside of litigation and the merits of the particular case. A positive way of doing this, which is less likely
to evoke the "stand and fight" reaction of a harsh challenge to the party's "weaknesses," is to explore with the party how
well, and how surely, litigation will likely satisfy any goals that have been identified in the first part of the interview.
Then, the mediator may advise the party to use this as the criterion for whether or not a given proposed settlement is
acceptable: if it satisfies his goals better than litigation, then it should be a good deal, one to accept.
Page 39Page 39
[*29] By taking this approach, the mediator can put the party at ease and let him know that she is trying to help
him achieve a satisfactory solution, and one that makes sense for him. This in turn helps to develop confidence in the
mediator, a valuable asset if things become tense later in the mediation process. The party is led, in this spirit, to think
about weak points without fostering hostility toward the other party, who is not even present.
C. Multiple Sessions
As previously mentioned, and even where a headstart has been achieved by utilizing advance intake conferences, a
mediator can often sense that by late afternoon or early evening the parties are too mentally fatigued or emotionally
worked up to make progress. They need time to process the information and impressions they have received. They
need rest, both mental and physical, and it is often during such periods of rest that "brainstorms" will occur to them.
The same is true of the mediator. I have seen firsthand a number of situations recessed at an apparent stalemate -- with
definite commitments to re-convene at a specified time. The parties returned with better attitudes and/or progressive
settlement proposals. I believe that, after a mental, physical and environmental break, they worked better on their own
in the evening than if I had pressured them to keep working continuously with the other side and me. I have never had
parties who were at all interested in settling a case and who were allowed to take a break, then fail to return for the
scheduled reconvening and/or to complete the settlement on their own.
In situations in which both clients are local, the mediator has the luxury of recessing for several days and having
further separate conferences, like the intake conference, with the individual parties as seen fit. These breaks tend to
work for resolution, not against it. In any event, I recommend asking parties to complex IP mediations to commit to a
minimum of two, and sometimes three, days of mediation. If one or both parties are from out of town, these days may
have to be consecutive. However, they do not have to be long days, extending beyond the point of diminishing returns.
Often, at the end of two or three days, even if the agreement has not been finalized, things will be far enough along that,
by working with the parties by phone, the mediator can assist them in bringing about the final agreement.
Sometimes, in the middle of a mediation, one or both parties will precipitously state that they don't think they need
any further mediation, thank you, and need to be getting home. This is not necessarily a discouraging sign. Often, it
means that the party has been sufficiently impressed by what has happened thus far in the mediation that he wishes to
return to home base to discuss a change in the authorization limits. The mediator will usually have a feel for whether or
not this is the case based on what has transpired shortly before such an announcement. Often, a wise mediator will not
resist such a request.
D. Plenary Sessions
Page 40Page 40
As mentioned, some caucusing is almost always necessary. However, more use can and should be made of plenary
sessions. Not only should there be plenary sessions, but the parties themselves should participate as much as possible.
The sense that they are empowered to determine the outcome of their own case further fosters a positive attitude of
really wanting to make the mediation work. Clients thus empowered tend to be more creative, and hearing the ideas
[*30] of the other side also stimulates their creativity. When the final settlement is one that the parties themselves
have engineered, they have a sense of ownership of that settlement and are therefore motivated to fulfill it.
It is tempting to assume that, if a creative, win-win solution cannot be devised, one should then revert to high
pressure arm twisting tactics by the mediator. On the contrary, if a win-win solution does not seem possible, and
compromise is going to be necessary on both parts, it is all the more important that the clients be involved in attempting
to devise a win-win solution; and seeing for themselves that compromise becomes necessary, they are then less likely to
be dissatisfied and mad at the entire legal system, possibly including their own attorneys.
It is worth noting here that the legal profession naturally attracts extroverts -- natural, instinctive leaders. It is
important for both an attorney mediator and for counsel for the parties to realize that they have an instinctive tendency
to wear this relatively controlling hat. Being aware of that, they can then consciously sit back and allow, or even
encourage, this important client participation. One need not be afraid that his client will make ill-advised offers if the
group simply establishes, as a ground rule, that nothing said in a brainstorming session will be taken as an offer, so as to
encourage everyone to be uninhibited in thinking out loud.
Another example of when and why to switch session type: The mediator has been caucusing with both sides and
has found that there are essential differences in the parties' versions of the facts of the case, which differences are
impossible, or highly inefficient, for the mediator to attempt to reconcile by shuttle diplomacy. Although the parties
often resist, it is best to bring them together into plenary session and openly air the different perceptions. The parties
may, themselves, begin to see that their positions have been partially based on misunderstandings, miscommunications,
or incomplete factual information. Additionally, the mediator, objectively listening to both sides, is in an even better
position to realize when a party is attempting to communicate one concept, but is being interpreted differently by the
other party, and to help the first party paraphrase his thought in a more comprehensible manner.
Another point: Because settlement often depends on satisfying various business goals of the parties, and because
they best know their goals, what will satisfy them, and their own business, there comes a time when it becomes more
efficient for the parties to explore possible settlement terms directly with each other. In listening to the other side's
objections to one's own ideas, one can learn a lot about the goals and needs of the other party that must be satisfied in
order for him to come to an agreement. And knowing the business, the first party may be even better than the mediator
at coming up with an alternate idea that will satisfy the other party's needs, as well as his own. Once again, the mediator
himself is often in a better position to assist if he can hear this sort of interchange, rather than always hearing each party
unilaterally.
This does not mean that once a mediator chooses to stop caucusing and get into plenary session, that must go on
indefinitely. At times, further caucusing will be interspersed with further plenary sessions. The real point is to allow
flexibility and utilize a mediator who not only knows how to work in plenary session but is skilled at deciding when to
use which type of session.
Page 41Page 41
[*31] E. How and When to Use Reality Testing

The mediator, having learned something of the true goals of both parties, and preferably, the parties having learned
something about each other's goals, the first technique that should be utilized in actually trying to settle is, in my
opinion, to brainstorm for a win-win solution, which satisfies both parties' goals. As mentioned, picking at the merits of
the parties' cases does not precipitate the right frame of mind for win-win negotiation.
Even if attempts at win-win solutions are unsuccessful, the positive atmosphere that will have been created by both
parties and the mediator's jointly exploring the possibility for them will put everyone in a better frame of mind for
subsequent bargaining in a more conventional, compromise manner.
If a party seems to be rejecting what, to the mediator, seems like a relatively good solution for satisfying his goals,
that may be the time for the mediator to do some reality testing of the party's concept of his chances of winning in
litigation, and what he will really achieve if he does win. Having laid the background, during intake, for the "walk-
away alternative" as the criterion for evaluation of any proposed agreement; having established the mediator's concern
that any such agreement meet the party's goals better than litigation; the same theme can be used to do some reality
testing in a less off-putting and confrontational manner than the harsh challenge or caseblasting technique too frequently
used.
This can often be done through questions, as opposed to comments or opinions by the mediator. Where the
mediator does express her impressions, the danger of putting the party off into a "stand and fight" frame of mind can be
ameliorated by the right sort of introductory phrases, and by doing this reality testing in private caucus. Introductory
phrases such as:
* "Correct me if I'm wrong, but I don't see how you plan to deal with . . ."
* "Trying to put myself in the shoes of a juror, and forgetting my legal background, I can see some appeal in the
other side's . . ."
* "I understand that you are not pleased with the last proposal made by the other side. Help me understand how
that proposal fails to satisfy the goals we identified, earlier. . . . Okay, now just so I'm clear, how does litigation stack up
against the proposal as to those goals?"
IV. Analogies
Giving credit where it's due, many of the above alternate techniques did not arise out of my imagination. Rather,
they are techniques commonly used by family mediators, many of whom are non-lawyers. Are you surprised? Think
about it for a minute, particularly in the context of the threshold questions asked at the very beginning of this article.
* Divorce cases are, like IP cases, frequently such that the parties would truly rather settle than fight.
* Divorce cases are cases in which the parties may wish, for example, to craft a more creative or unconventional
arrangement for joint custody or visitation rights than a court
[*32] would typically come up with. Similarly, IP cases are often those in which we may wish to consider options
such as cross licenses, etc., rather than the limited remedies the court has to offer.
* Divorce cases are complicated. There is not just the issue of who will pay how much to whom. There are many
pieces of property, and it is necessary to decide how to divide this property, what type of estate the party who "keeps the
house" will have, and most importantly, what type of custody or visitation rights will be provided for. It is less likely
that all of these can be agreed upon in one day. And like the corporate representative who is unlikely to give in
regarding a valuable technology simply because he is made uncomfortable, the parent is unlikely to give in on a custody
issue just because he or she is made uncomfortable.
Thus, our type of case may have much more in common with family cases than we would have thought. In any
event, it is my experience that some of the family mediators' techniques can work quite well in IP cases.
V. Conclusion
No one, not even I, will use all of the above techniques exclusively in every IP mediation. However, if this article
has opened your eyes to new and different options, and to think about which ones you want a given client to experience,
it has achieved its purpose.
Legal Topics:
Civil ProcedureAlternative Dispute ResolutionMediationsContracts LawDefensesDuress & Undue InfluenceGeneral
OverviewContracts LawFormationExecution
Page 43Page 43
9 U. Balt. Intell. Prop. L.J. 47, *
11 of 100 DOCUMENTS
Copyright (c) 2000 by the University of Baltimore Intellectual Property Law Journal
University of Baltimore Intellectual Property Law Journal
Fall, 2000
9 U. Balt. Intell. Prop. L.J. 47
LENGTH: 23726 words
ARTICLE: FORGET THE MECHANICS AND BRING IN THE GARDENERS
NAME: Danny Ciraco
LEXISNEXIS SUMMARY:
... Although patents fall within the IP gambit, patent law has a very different focus than copyright law. ... " "There are
four basic reference points along the spectrum of dispute resolution techniques -- negotiation, mediation, arbitration,
and adjudication. ... ... Also, while principled negotiation, or an integrative strategy, relies on a cooperative negotiation
strategy, many scholars see cooperative negotiation and principled negotiation as different styles. ... An effective way to
do this is to illustrate how the court system is designed as a machine, which makes it less effective to deal with IP
disputes, and look at mediation as an organism, to see how this system can more effectively deal with IP conflicts. ...
Gareth Morgan referred to Frederick the Great's military organization strategies and Frederick Taylor who pioneered
what is known as scientific management. ... Mediation is Cost-Effective Another general celebrated point of mediation,
one of particular importance to disputants in IP conflicts, is the cost savings associated with mediation compared to
litigation. ... Due to mediation's less formal procedures, costs incurred to conduct a mediation session should not
exceed the costs expended preparing for trial; expenses can be onerous (i.e. discovery and preparation for formal
hearings). ... Disputes involving theft of trade secrets and violations of confidentiality agreements, which turn on issues
that require highly specialized training or experience to make a judgment, are particularly difficult for the adversarial
system to handle. ... This is not to say that all voluntary mediation will be transformative, or that mandatory mediation
through the courts cannot be transformative, but rather that mandatory mediation through the courts has a better chance
of adopting the machine like qualities of the court, elevating the importance of settlement and downplaying the role of
empowerment and recognition. ... The main concern I have tried to address is that mandatory mediation might revert
back to a machine-like system, which focuses too much on outcomes and rights, and not on parties' interests,
recognition and empowerment, which are mediation's main strengths.
HIGHLIGHT: "We keep bringing in mechanics - when what we need are gardeners." n1
Peter Senge
TEXT:
[*47]
I. INTRODUCTION
We often rely on old ways of doing things, not necessarily because they work but because we have become so
accustomed to them. Inventors, creators and others involved in the intellectual property (IP) industries may be an
exception to this trend, yet they too often follow the majority and rely on traditional resolution systems like the courts to
settle their disputes, as opposed to exploring alternative dispute resolution (ADR) mechanisms. For many lawyers and
business people especially, the courts still seem like the most appropriate forum for conflict resolution. They are more
comfortable with litigation, "...the devil they know, rather than trying out ADR as the devil they do not know." n2 Some
Page 44Page 44
in the IP fields have begun to turn to alternative forms of conflict resolution -- namely arbitration -- however; few have
seriously given mediation similar consideration.
There have been many debates between the promoters and the critics of ADR -- a sign of a maturing academic field of
inquiry and endeavor. n3 The goal of this paper is to theorize on the benefits of mediation in IP disputes. I begin in Part
I with some background information on IP and ADR. In Part II, I will analyze the court system as a machine, and
mediation as an organism. By describing mediation as an organism, we will be able to see its potential to effectively
deal with IP disputes. In particular, we will look at mediation's flexibility, its cost-effectiveness, its sensitivity to time,
its effectiveness in dealing with highly technical and complex issues, its respect for confidentiality, and its effectiveness
to deal with internationally complicated disputes - all of which will illustrate mediation's organic design. Peter Senge
dealt with similar metaphors in his book on management thinking entitled
Page 45Page 45
[*48] The Fifth Discipline: The Art & Practice of the Learning Organization. n4 He argued that for years
companies have been designed as machines when they should be designed as living organisms. Organizations designed
after machines do not allow change or growth like an organism design. Senge prophesied that "the most universal
challenge that we face is the transition from seeing our human institutions as machines to seeing them as embodiments
of nature...We need to realize that we're a part of nature, rather than separate from nature." n5
While I champion mediation as a more effective tool to deal with IP disputes, in Part III, I am critical of mandatory
mediation. At this juncture, I examine two dominant mediation philosophies, namely "The Satisfaction Story" and "The
Transformative Story." I illustrate that mandatory mediation aligns more closely with the satisfaction story, which may
pervert some of mediation's organic qualities; some of the same qualities that make it so appropriate for dealing with IP
disputes. The point will be that, by adopting mandatory mediation, organic mediation will likely mutate into "machine
mediation." So while mediation can be effective in dealing with IP disputes, we must recognize that there is a difference
between machine mediation and organic mediation, and the two will not necessarily be equally effective in settling IP
conflicts.
II. UNDERSTANDING INTELLECTUAL PROPERTY AND DISPUTE RESOLUTION
A. Intellectual Property
At the very outset, before we look at the effectiveness of mediation as a resolution mechanism, it is instructive to
have a basic understanding of intellectual property rights. There are four distinct types of intellectual property:
trademarks, copyrights, patents, and industrial properties. Our focus will be on copyrights and patents.
Page 46Page 46
"Intellectual property" seems to capture contemporary thoughts on this area of law. "Intellectual" acknowledges that the
product is intangible, yet important, while "property" seems to reflect our capitalist beliefs on ownership and
exclusivity. The focus however, was not always on "property" but rather "privilege," as grants of monopoly depended on
the favour of the monarch and the royal entourage. This favourtism changed in the West during the eighteenth century
as the forces of the Enlightenment and the Industrial Revolution consciously worked to switch discourse from privilege
to property. Capitalists wanted to "own" whatever their enterprise produced and wanted to exclude everyone else from
its enjoyment except on their
[*49] terms. n6 Essentially, the argument has always been that those who "sowed" had to be protected from those
who wanted to reap without sowing. The idea was that creativity would be discouraged if creators were not protected.
Of course not everyone agrees. Opponents of strict intellectual property protection argue that ideas and inventions,
particularly those ideas and inventions concerning health, medicine, food production, and education, belong to the
whole world and are concerned that too much protection may hinder economic and social progress. The point however,
is that intellectual property rights deal with exploitation rights of creators, artists, and inventors.
1. Copyright
Since copyright is entirely a creature of statute and because our focus is on Canada, we will concentrate on the
Canadian Copyright Act. n7 Canadian copyright legislation, based on the United Kingdom Copyright Act of 1911, came
into effect on January 1, 1924. n8 It is notable that copyright law falls under the umbrella of "intellectual property law";
consequently, distinct from real property law. Indeed, while real property law protects tangible objects, copyright law
protects intangible properties such as expressions of one's ideas. As such, its key objective is to grant exploitation rights
to owners of original works.
Copyright exists in every original literary, dramatic, musical, and artistic work. n9 The C Act covers almost any
and all produced expression, regardless of whether the work is good or bad. As Vaver confirms, "...the law does not
require that work have any merit or, indeed, that it be such of a work at all." n10 The only thing that can be excluded
from copyright protection might be mass-produced items.
So what exactly is copyright? According to the C Act, copyright means:
the sole right to produce or reproduce the work or any substantial part thereof in any material form whatever, to
perform or in the case of lecture to deliver, the work or any substantial part thereof in public, or, if the work is
unpublished, to publish the work or any substantial part thereof. n11
Page 47Page 47
Other rights of copyright include, the right to translate the work, convert the work from one form into another, make a
recording or film of the work, communicate the work by radio communication, exhibit the work in public, and the right
to authorize any of the above. n12 Besides these relatively clear protections, a copyright owner also has "moral rights."
This means that
[*50]
...the author of a work has, subject to section 28.2, the right to the integrity of the work and in connection with an
act mentioned in section 3, the right, where reasonable in the circumstances, to be associated with the work as its author
by name or under a pseudonym and the right to remain anonymous. n13
In addition, while moral rights cannot be assigned, they can be waived in whole or in part and that assignment of
copyright in a work does not necessarily constitute a waiver of any moral rights. n14 In other words, the creators
maintain their moral rights regardless of whether they have assigned their copyright, unless they specifically waive their
moral rights. n15
The C Act explains that copyright infringement applies when a work is "copied" from an original copyrighted work
without consent of the owner. In order to substantiate infringement, the plaintiff needs to establish actual reproducing of
the work or a significant likeness to the work (without authorization), and a possibility of access to the said work. n16
The original purpose to protect expressed works may have been to promote culture and dissemination of works by
providing incentives to authors and artists to produce worthy work, and to entrepreneurs to invest in the financing,
production, and distribution of such work. n17 However, it is questionable whether the C Act is attaining these ends
because more and more protection is extended to digital technologies, which is often produced as terms of workers'
employment. n18 As John Gurnsey argued, copyright is no longer concerned primarily with the "lonely starving artists"
but also with companies ranging from small and not-for-profit to multi-million dollar contracts. n19
2. Patents
Page 48Page 48
Although patents fall within the IP gambit, patent law has a very different focus than copyright law. When someone
introduces a product into the market, anybody can copy it and compete with the original producer without incurring the
initial costs of invention and product development. A
[*51] patent gives its holder an amount of time to develop and market the invention without competition.
Therefore, at the most basic level, a patent is granted by the government and allows the patent holder the right to
exclude others from making, using, or selling an invention. Intimately related to patents are laws that involve trade
secrets. A "trade secret" is information about a product or process kept secret from competitors. Trade secret law is said
to have its origins in Roman law, which provided for punishment of those who induced an employee to reveal
commercial secrets of their master or employer. n20 It is important to understand that in Canada, trade secrets are only a
creation of common law action, without governing legislation. n21 Contract, equity, and property law all combine in
trade secret, or breach of confidence cases. Meanwhile, the Patent Act n22 governs patents in Canada.
Unlike copyright protection, which is granted without registration and is deemed protected upon creation of a
copyrightable work, a patent must be registered to get protection. The application is referred to as a "petition," which
dates back to the time when English patent applications were "humbly" made "To The Queen's Most Excellent
Majesty." n23 In other words, unlike copyright rights, the right to patent depends on the claim date of the application,
which is usually its filing date. An earlier inventor will lose his right to patent protection if a latter inventor sends her
application to the Patent Office before the earlier inventor. n24
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Any "art, n25 process, n26 machine, n27 manufacture n28 or composition of matter," n29 or any new and useful
"improvement of one of these qualifies as a
[*52] patentable 'invention' in Canada if it is 'new and useful'"; the implication is that the invention also be
nonobvious. n30 Things that are not patentable include natural phenomena, scientific principles, and abstract theorems,
which include computer programs, schemes, plans, business methods, and medical or surgical treatments. n31
3. Characteristics of IP Conflicts
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With a cursory understanding of IP -- particularly copyright and patents -- it is now appropriate to turn to the six
characteristics of IP conflicts that may be addressed ideally through mediation. First, although IP disputes often involve
large companies, they regularly involve artists and inventors who are not served well by the limited compensation
rewards offered through the courts; many see more value in the fame and recognition attached to their creation. Second,
resolving intellectual property disputes can be very expensive when we consider the burdensome discovery process,
particularly in high-tech disputes. Third, IP cases are incredibly sensitive to time. Today we live in a rapidly changing
technological environment, where IP can become obsolete very quickly. In other words, expedient settlement is of
paramount importance because the patent and technology being disputed, for example, "may actually become obsolete
before a matter reaches the litigation stage." n32 Fourth, IP disputes are often complex and can involve a high level of
technical know-how; for instance, evidence of an appreciation for the technical complexities involved in patent disputes,
is given in the P Act which explains, in the case of non-obviousness, that, "...it must be subject matter that would not
have been obvious... to a person skilled in the art or science to which it pertains...[emphasis added]." In other words,
many IP cases, particularly hi-tech cases, can be very complicated and require expert involvement. n33 Fifth, IP cases
are dependant on confidentiality. Litigation, for example, may call to divulge very sensitive information regarding
disputants' products or manufacturing processes. This information is often an IP client's most valuable asset, and its
exposure can spell financial ruin. n34 Finally, IP disputes often transcend national borders and parties face jurisdictional
problems that can complicate the resolution process. In short,
[*53] the characteristics of IP disputes illustrate that these conflicts have specific needs, which we will see, can be
effectively addressed through a tailored resolution process like mediation.
B. Dispute Resolution Strategies
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In order to appreciate the benefits of mediation, we must first understand the different types of conflict resolution
strategies. Anthropologists have developed a simple model to describe the dispute resolution process. Essentially the
model outlines that "the nature of the relationship between the disputants will dictate their choice of dispute resolution
procedures. Each procedure will in turn provide a different form of resolution for the dispute." n35 "There are four basic
reference points along the spectrum of dispute resolution techniques -- negotiation, mediation, arbitration, and
adjudication." n36 Negotiations is at the most collaborative end of the spectrum and constitutes any form of
communication, direct or indirect, where parties who have at least some opposing interest discuss, without resorting to
arbitration or a trial, the form of any joint action which they might take to manage and ultimately resolve the differences
between them. n37 Meanwhile mediation, which is only lately receiving attention despite its rich history, n38 can be
defined as "the process by which the participants, together with the assistance of a neutral person or persons,
systematically isolate disputed issues in order to develop options, consider alternatives, and reach a consensual
settlement that will accommodate their needs." n39 In an arbitration format, a third party listens to disputants and makes
a decision as a judge would, except that in an arbitration process, the parties often decide the rules of procedure, rights
of appeal, whether or not the arbitration decision will be binding, and, most important, who the arbitrator(s) will be. n40
Finally at the most confrontational end of the spectrum is adjudication, which
[*54] requires a neutral authority to pronounce a final judgment based on evidence received under formal rules of
procedure. n41 And while these of course are not all of the resolution strategies, n42 they cover the four main reference
points.
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Anthropologists have argued that "disputants who seek to maintain their relationship or resolve disputes with multiple
issues will tend to rely on a collaborative procedure such as negotiation. These types of procedures naturally lead to
compromise solutions. Disputants with single-issue disputes and no relationship to maintain will tend to rely on
adjudicatory forms of dispute resolution, such as litigation. Consequently, the latter disputes are more likely to be
resolved in the form of win-or-lose decisions." n43
[*55]
At the core of the problem is the distinction between conflicts of interest and conflicts of value and facts (or more
commonly referred to as "rights"). Vilhelm Aubert spoke of this distinction in the earlier part of the twentieth century
and explained that understanding these distinctions will help to understand what resolution strategy will be more
effective. In a conflict where interests are partly incompatible and partly overlapping, negotiation presents itself as a
normal procedure to resolve the conflict, yet if the interests are contradictory to the extent that gains and losses must
cancel each other -- a zero-sum game -- negotiation is less adequate. n44
With all of this said, it is important to appreciate that although negotiation is premised on the notion of
collaboration, there are various types of negotiation strategies. Competitive negotiation strategies dominated the early
texts used in law schools to teach negotiation. n45 However in 1981, Professors Roger Fisher and William Ury
published their groundbreaking book, Getting to Yes: Negotiating Agreement Without Giving In, where they criticized
the competitive theory and championed the method of principled negotiation. n46 Their strategy is intertwined with a
problem-solving or integrative approach. Also, while principled negotiation, or an integrative strategy, relies on a
cooperative negotiation strategy, many scholars see cooperative negotiation and principled negotiation as different
styles. n47
To illustrate the differences between competitive, cooperative, and integrative negotiation strategies we can turn to
an example that involves a dispute over an orange. Two parties arguing over the orange and claiming that they both
have a right to it, better illustrates a competitive negotiation strategy. Bluffs and pressure tactics dominate this
negotiation. Meanwhile, if the parties decide to split the orange in half, a cooperative strategy develops. Meanwhile, an
integrative or principled negotiation strategy is a deeper form of negotiation where parties probe by asking questions
relating to why each party needs the orange. Negotiators who employ the integrative strategy may discover that one of
the parties did not need the entire orange but in fact only needed the peel of the orange for a cake he was baking, while
the other party just needed the juice of the orange. Here, the parties would have gone beyond their positions (wanting
the whole orange) and discovered that there were interests behind these positions that could lead to a greater level of
individual and collective satisfaction.
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Not surprisingly, we do not have full consensus on whether there are in fact three types of negotiation strategies. Some
scholars argue that there are only two main extremes - competitive and cooperative - with all negotiation strategies
falling within this spectrum. In particular, these
[*56] academics argue that the integrative approach is really just a branch of the cooperative negotiation strategy.
Irrespective of how one may draw the boundaries of these strategies, it is important to note that these strategies, while
different, do not operate exclusive of each other, and may all be incorporated in a single negotiation session or in other
dispute resolution contexts.
It is useful to explore the ADR system that has gained the most acceptance in IP disputes and which has taken most
of the attention away from mediation: arbitration. Many involved in IP disputes have already embraced arbitration.
Arbitration is seen as speedy and cost effective, and can "...outperform the present system litigation on all fronts: the
'judge' you choose can be an expert; the time-table can be set by the parties; the rules of evidence can be relaxed, and no
time will be wasted by taking interlocutory rulings to the Court of Appeals." n48 In the U.S., parties have embraced
arbitration for IP disputes by enacting the Federal Arbitration Act, and the message from the U.S. highest court is that if
a contract contains an arbitration provision, a strong presumption exists that the arbitration clause is enforceable and
subject to the Federal Arbitration Act. n49 Further support for arbitration can be seen from former President Reagan,
who, upon signing the patent arbitration bill, specifically recognized "the inordinately high cost of patent litigation" as a
major incentive for arbitrating patent disputes. n50
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Although mediation is also being accepted, as we see through the implementation of mandatory mediation in Ontario,
n51 and the more recent changes to the Federal Court Rules, n52 the preferred ADR mechanism among IP disputants
seems to be arbitration. A smaller number of people have been courageous enough to venture deeper into the ADR fields
in order to resolve IP conflicts using mediation. Mediation, it seems, has not gained as much recognition although in
fact it can be distinguished from arbitration as being superior in many respects. The arbitration system, for example, is
still strongly connected to the adversarial system and puts considerable weight on
[*57] rights as opposed to interests. Mediation however, is designed to be more concerned with addressing
interests rather than rights. This is not to say that arbitration is not appropriate for IP disputes. Most of my work
involves advance ADR generally in IP conflicts, yet I propose that mediation can be a more effective ADR process.
Mediation can more effectively deal with the particular characteristics of IP disputes noted earlier. In order to better
understand this argument, it is now instructive to advance the metaphorical analysis.
III. MACHINES VS. ORGANISMS - METAPHORS FOR RESOLUTION
A. The Court System as a Machine
In order to understand the effectiveness of mediation in IP disputes, we need to look at the court system and the
adversarial process more generally, in relation to mediation. An effective way to do this is to illustrate how the court
system is designed as a machine, which makes it less effective to deal with IP disputes, and look at mediation as an
organism, to see how this system can more effectively deal with IP conflicts.
Before we begin to understand how it is that the court system is designed as a machine, we need to engage in a
preliminary understanding of the judicial system. The adversarial process is based on rights, or as Aubert explained, it
involves a conflict of values or facts. He posited that conflicts over values and facts are more "public." A solution
implies a stand on what has actually happened or on what norms ought to be applied to conflicts of a particular kind.
Actors other than those directly engaged in the dispute have a stake in the outcome because a certain definition of the
truth of a factual matter, or a determination of a point of value can come to mean something for the general public as
well. n53 Since the "public" is now affected, the adversarial system is influenced. In order to create a seemingly neutral,
equitable, and consistent resolution process that upholds these "rights," a mechanical organizational structure develops.
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The adversarial process assigns particular functions to the participants in the trial, especially the judge, the parties, and
the lawyers. The parties are fairly disconnected from the resolution process, communicating only through their lawyers
to each other and to court officials. To distance disputants further, the complexities of the court procedure are generally
incomprehensible to the average client. n54 The adversarial process prescribes a noninterventionist role for the judge,
while parties are seen as bipolar contestants in a forum in which only one party can succeed. Effectively, through the
adversarial process, the trial is regarded as a self-contained event.
[*58] Once the judge makes a decision, the court's involvement ends. n55 The result is a lack of control by the
parties over the process, which often leads to frustration and disempowerment.
The roads to litigation are lengthy and often the trip emphasizes positional bargaining. n56 This bargaining style
fuels threat, bluff, exaggeration, and the need for "11th-hour soulsearching." n57 Parties take extravagant positions from
which it is difficult to back down from without compromising integrity. This process will often heighten negative
feelings between the parties and elicit sentiments of victimization or vengeance, eventually leading to exhaustion. The
result is a severely damaged communication link among the lawyers and clients where we witness the coined "spiral of
unmanaged conflict," - a process where groups are forced to escalate their activities to gain recognition for their
concerns. n58 Eventually everyone engages in an adversarial battle, throwing more time and money into "winning"
rather than solving the problems. n59
To appreciate the machine metaphor, we must understand that "machine" reflects what we more commonly refer to
as "bureaucracy." The industrial revolution fueled bureaucratization and routinization. Factory owners and their
engineers realized that the efficient operation of their new machines ultimately required major changes in the design and
control of work. As manufacturers sought to increase efficiency, by reducing the discretion of workers in favour of
control by their machines and their supervisors, the division of labour became intensified and increasingly specialized.
n60 Through this explanation of classical management theory, which is seen as the creation of bureaucratization, we
will understand more clearly how it is that the court system is a machine.
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Classical management theorists like Henri Fayol, R.W. Mooney, and Col. Lyndall Urwick, believed that management is
a process of planning, organization, command, coordination, and control. n61 Classical management
[*59] theorists were interested in designing an organization that resembled a machine. The organization was to be
created as a network of precisely defined jobs, linked together in a defined chain of command, expressed in what
Morgan referred to as "...the classical dictum 'one man one boss.'" n62 Here, we begin to see how the court system is
designed as a machine. As explained earlier, the adversarial system clearly defines all roles for participants. The parties
play a constrained role guided by the lawyers and judges who, like parts of a machine, are confined to very specific
tasks, which include, following precedents and adhering strictly to legal arguments. Ultimately, the judges make the
decisions and are the final link in the chain of command.
Aside from classical management theory, scientific management also helps to paint a clearer picture of the machine
as a metaphor for the court system. Gareth Morgan referred to Frederick the Great's military organization strategies and
Frederick Taylor who pioneered what is known as scientific management. Taylor was interested in the use of time-and-
motion study as a means of analyzing and standardizing work activities. The same approach to work design is found in
assembly-line manufacture. In this illustration, workers are not only servants to "bosses" but are also servants to
machines that are in complete control of the organization and pace of work. n63 In this light, the court system seems to
have been designed with the mechanical mentality of scientific management. All the procedures are clearly defined, as
forms and claims must be filed within the set time requirements. Similarly, as noted earlier, the parties in the dispute
have no connection with the process. The court begins to resemble an assembly line whereby cases become widgets that
roll by the judge, who then deals with them as quickly as possible in order not to delay productivity.
B. Mediation as an Organism
Meanwhile, the organism metaphor better illustrates mediation. Its flexibility and sensitivity to its surroundings -
namely how the mediation process is affected by the parties and the issues that surround the dispute - strengthen
mediation's connection to a system designed as an organism. The point is that unlike the adversarial system, which is
rights-based and as Aubert said, "more public," n64 and forces the system to be more structural, mediation is interest-
based and tailored for the disputants; ergo the organism imagery.
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Looking towards nature to better understand organizations is not a new phenomenon. Over the last fifty years,
organizational theorists have looked away from mechanical science and have begun to explore biology as a source of
ideas for thinking how organizations work. Theorists began to
[*60] look at "organizations as open systems; the process of adapting organizations to environments,
organizational life cycles, the factors influencing organizational health and development, different species of
organization, and the relations between species and their ecology." n65 This philosophy developed from the
understanding that employees and people are complex and have complex needs that must be satisfied in order to live
full, healthy, and productive lives. The point of the organism metaphor is that "individuals and groups, like biological
organisms, operate most effectively only when their needs are satisfied." n66 Now let us turn to the characteristics of IP
disputes and flush out the elements that align mediation with an organism.
1. Mediation is flexible and adapts to parties and their interests
One of mediation's greatest assets, and its most evident connection to an organism, is its procedural flexibility and
adaptability. Unlike litigation, which incites positional bargaining, n67 mediation is based on principled negotiation. In
principled negotiation, interests are uncovered, which help the parties to understand their adversaries' concerns. As we
learned earlier, Aubert talked about interests and rights during the first part of the century. When a case is dealt with in
court, the conflict between the parties is formulated as a controversy over facts and/or norms applicable to the case.
Aubert explained that:
Irrespective of the source of the conflict between the parties, it must be formulated in court as a disagreement over
norms and/or over factual matters... The verdict of the court has ...(no) ...character; the decision is based upon a single,
definite conception of what has actually taken place and upon a single interpretation of the legal norms. n68
As Julie MacFarlane reiterated, an emphasis on litigation reflects, "...the dominance of a 'rights' culture, seen in
both the justice system and public attitudes towards conflict and reconciliation." n69 The court therefore, focuses on
rights, and winners and losers, while mediation is designed to focus on parties' interests and mutual gains.
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The courts' focus on rights affects the negotiation strategies that parties utilize. As I mentioned, most of the early texts
used in law schools to teach negotiations, for example, focused on the "competitive strategy" and at least implicitly
endorsed such a strategy. n70 The competitive negotiator tries to maximize the benefits for her client by persuading her
opponent to settle for less than the opponent would have settled with at the beginning of the
[*61] negotiation. The underlying premise of the competitive strategy is that all gains for one's own client are
obtained at the expense of the opposing party. In other words, competitive negotiators see the negotiation as a
competition over a fixed pie. As such, these negotiators work to convince their opponents that their settlement
alternative is not as advantageous as they previously thought, in turn lessening the opponent's confidence in their case
and thereby inducing them to settle for less than they originally asked. The competitive negotiator therefore, moves
"psychologically against the other person," with behaviour to unnerve the opponent, n71 and may employ very strategic
tactics such as:
. arrange to negotiate on their own turf;
. balance or slightly outnumber the other side;
. designate one of their demands as a "precondition";
. make the other side tender the first offer;
. make the first demand very high;
. make the other side make the first compromise;
. invoke law or justice;
. be tough - especially against a "patsy";
. appear irrational where it seems helpful;
. claim that they do not have the authority to compromise; and
. will themselves promptly reduce the agreement to writing. n72
Not surprisingly, competitive negotiators expect similar tactics from their opponents and therefore mistrust them.
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Law, interestingly through its legal principles and historical male domination of the legal profession, and the public
sphere more generally may have in fact facilitated these competitive negotiation strategies. These competitive
negotiation strategies, lined with deception and mistrust, seem fuelled, or at least reinforced, by certain common law
principles like "caveat emptor," which warns "let the buyer beware." n73 Although there is no consensus when caveat
emptor n74 came into being, most agree Chandelor v.
[*62] Lopus, n75 is credited as the originator of the caveat emptor doctrine under English common law. The
decision was recognized for "the proposition that English courts were not interested in enforcing the fairness of an
exchange because they thought contracting parties should handle such matters themselves." n76 Coupling legal
principles like caveat emptor with how men have been socialized to be competitive and to play a prominent role in the
public sphere, we begin to see how this competitive negotiation strategy came to flourish. n77 In general, the courts and
the legal system seem to facilitate competitive negotiation tactics.
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Arbitration shares some of the weaknesses of litigation. Arbitration has been criticized because disputants have
frequently treated arbitration as a means for attaining individual goals, rather than as a forum for resolving
[*63] disputes without confrontation. The result of this misuse of the arbitration process is that today's arbitration
sessions take on all the trappings of litigation: lawyers, transcripts, formal rules of evidence and procedure, and their
associated costs. n78
Mediation, meanwhile, can be more effective than arbitration. "The stigma of compromise verdicts often
associated with arbitration is avoided because any settlements reached are arrived at voluntarily." n79 This interest-
based process leads to greater client satisfaction because the process tends to educate both sides and to help them
produce more just results. n80 Also, in court, a financial award will often be the only remedy available to the parties.
Conversely, mediation can offer a range of processes and settlement options:
. one party can publicly or privately apologize to the other;
. the parties can co-operate in future ventures where the profits will be shared;
. an exchange of technologies or license agreements;
. amendments to on-going contracts;
. payment of funds over time, perhaps linked to stock market or foreign currency movements;
. one party may refrain from, or do a specific act (equivalent to an . injunction or specific performance remedy in
court). n81
The parties are in total control of the process in mediation and are limited only by the participants' needs and
creativity.
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While many argue that mediation is designed to resolve disputes, others argue that to be truly successful and satisfy
disputant's needs, mediation must change from a problem solving orientation -- also referred to as humanistic mediation
-- to one that focuses on empowerment and recognition. n82 Empowerment is important in the process because it shows
mediation understands that disputes are very diverse and involve unique people with very different needs, which will
inevitably require different resolution approaches. Empowerment is a prerequisite for the development of self-respect
and self-esteem, without which, dependency and inevitably, counter-dependency will be dominant characteristics of
behaviour. n83 Closely connected to empowerment is the notion of recognition, whereby parties begin to be more
"attentive, sympathetic, and responsive to the situation of
[*64] the other party, thereby expanding their perspective to include an appreciation for another's situation." n84
In other words, unlike the adversarial system which forces parties to become dependent on the process -- and whereby
both the parties and the process become parasites to each other -- mediation is more "open." Like an organism, it takes
into account peoples' differences by "empowering" the parties during the process of the dispute and by encouraging
them to "recognize" their adversaries' interests and needs creating a symbiotic relationship between the parties and the
process.
This party/process relationship and empowerment allow the participants to play different roles. As previously
stated, everyone is part of a machine in an adversarial system, playing clearly defined parts. In mediation, because the
parties become empowered, they define what roles need to be played. Parties who previously felt like victims obtain a
powerful sense of their own abilities and strengths, as well as, assuming responsibility for outcomes of their actions.
n85 Therefore, the adversarial system can be seen as a system involving "redundancy of parts," a design principle which
describes the tendency towards organizational change through the application of a social-control mechanism utilizing a
high degree of specialization, hierarchical command structures, and standardized practice. n86 Meanwhile, mediation's
"openness" and adaptability, which allow parties to play different roles, can be seen as a second design principle:
redundancy of functions. Redundancy of functions emphasizes the commitment of the potential capacity available for
change as compared to the ability of the operating parts in an organization (in this context, the people or parties
involved in the dispute) to perform a range of functions. n87 The goal in this second design mode is the emphasis on the
creation of shared values and mutual support, continued learning, variety in operating methods, and a self-controlling
management style. Such principles will tend to adopt an organism metaphor of the organization and to establish an
open-systems perspective emphasizing interactive organizational/environmental relationships. n88 Many scholars
would argue that this second style is better suited for unstable social environments like environments that surround
conflict.
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As I explained previously, disputants often get locked into positions very early in the dispute resolution process and
insist on receiving everything
[*65] they want and refuse to make any concessions in return. This approach runs counter to the traditional game
theory assumption that each party acts rationally and bases calculations on the belief that the other parties will act
rationally as well. In practice, assuming party rationality is not necessarily a good assumption. Questioning this false
"rationality" becomes justified when we consider that even with the same information about an uncertain situation,
people in different positions tend to bias their probability assessments toward the outcomes that are favourable to them.
n89 So, even if parties can agree on the facts, they may still violently disagree over the significance of those facts for
resolving the dispute.
Fortunately, in mediation, past events are much less important to resolving disputes compared to the question of
what it will take for the parties to live with one another in the future. A mediator, unlike a judge or arbitrator, can
encourage disputants to focus on this latter question by helping them to distinguish their true needs -- those things that
must take place for settlement -- from their original desires. n90 Put plainly, mediation's flexibility adapts itself to the
particular parties involved and allows the focus to be on their interests and not necessarily rights, which may or may not
address the parties' underlying interests. Mediation's organism-like design allows room for these non-legal issues, which
in fact may be more important than the legal ones. Not addressing these underlying concerns has the tendency to fuel
the "spiral of unmanaged conflict." n91 To bring this fairly theoretical analysis into a more practical realm, let us turn to
some examples of IP disputes.
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In Lancashire Fires Ltd. v. SA Lyons & Co., n92 a case involving trade secrets, an employer brought his employee to
court claiming that the employee, after leaving the plaintiff's employ, breached a duty of confidence, which he
continued to owe to the plaintiff. The point is that the court was looking at rights, as it is designed to do, and it was
concerned with drawing a line between what it felt was appropriate or inappropriate behaviour. The final comment Sir
Thomas Bingham M.R. made worth noting is "Arthur Wright [the defendant] was not simply seeking business. His
activities at Albert Mill and his dealings with Lennox, already described, placed him well on the wrong side of the line
[emphasis added]." n93 In other words, the court concentrated on rights and created boundaries for these rights. While
this may be important, we cannot overlook the fact that the disputants were brothers and there were probably some other
underlying
[*66] issues that needed to be addressed. However, the court was rights-based, and as Aubert explained, this
rights-based mentality is concerned with how its decisions affect the public, which is why the court was so concerned
with drawing distinctions and boundaries between acceptable and unacceptable behaviour.
Turning to a copyright dispute, we can see how mediation's flexibility facilitates more effective resolutions. For
example, a poet may claim to have had his work plagiarized by a large music company. The poet may have simply been
looking for recognition of his work and an apology. The music company, unlikely to apologize and acknowledge the
poet for fear of admitting any legal wrong, denies any copyright infringement. The poet, infuriated, seeks legal action.
Since it is unlikely that the work was copied identically, the court would focus on the legal rights surrounding the
conflict and on establishing whether or not a substantial portion of the poet's work was copied in the lyrics of a song.
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According to section 3 of the C Act, it is necessary to show that the infringer reproduced a work or a "substantial" part
of a copyrighted work. n94 But determining what is "substantial" is a fairly subjective process. To this end, Canadian
courts have developed principles to establish what constitutes infringement. In Slumber-Magic Adjustable Bed Co. v.
Sleep-King Adjustable Bed Co., n95 Justice McLaughlin interpreted "substantially similar" works by addressing the
issue of "originality"; she determined that a work's uniqueness "...is as a matter of degree depending on the amount of
skill, judgment or labour involved in the making of the compilation." U & R Tax Services v. H & R Block Canada Inc.
n96 further defined copyright infringement by stating that not only should the plaintiff establish a "substantial
similarity," but also should determine access to the said work. n97
[*67] While life experience, observations, and themes are allowed, but those that are substantial in an original
copyrighted work cannot be infringed. n98
If eventually the court finds that there was an infringement, the court will attempt to quantify the monetary value
of the work to establish damages. But as one might expect, it is hard to quantify the worth of a poem. Coupled with the
strictures of accounting mandated by the C Act, n99 it is fruitless for an infringed poet to pursue his rights.
In reality, the poet was less concerned with the monetary award and was more concerned with recognition and an
apology; Fisher and Ury have said this may be among the "least costly and most rewarding investment you can make"
as a negotiator. n100 Generally, these issues are more likely to be addressed in mediation; and additionally, if dealt with
by a mediator experienced in the relevant industry, they may be able to help find a unique solution appropriate to the
particular situation. n101 The court's adversarial system, meanwhile, would likely push the disputants further apart by
encouraging positional bargaining.
The music company would probably insist that it did not plagiarize; therefore, would argue it is not responsible to
the poet. The poet would be pushed into a position to argue that he wants to be compensated. This positional bargaining
would heighten the conflict and send the parties through a "spiral of unmanaged conflict," where the parties are forced
to escalate their activities to gain recognition for their concerns. The music company might file a counter-claim while
the poet may be forced to exaggerate his claim and demands in order to solidify his chances at winning in court.
Meanwhile, disputants who are helped by third party neutrals may gain a "new and more perceptive understanding of
one another's problems." n102 In short, the underlying non-legal issues of value to the poet may have been more readily
addressed in an organic resolution process like mediation, which empowers the parties to tailor the process and the
outcomes to better fulfill the parties' interests and needs.
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Arbitration, like the court system, is likewise criticized for not solving the underlying disputes between the parties. "If
there is a more fundamental disagreement or source of animosity between the parties,
[*68] arbitration will usually only resolve the current, surface dispute without mending the deeper conflict." n103
Also, while arbitration may help to minimize hostility, we must keep in mind that any form of adjudication by a third
party is antithetical to the maintenance of relationships between disputants. Regardless of how much authority an
intermediary is given to decide liability, both disputants may be dissatisfied with any new relationship that is worked out
by an uninvolved observer. Mediation, on the other hand, requires that the parties work together toward a mutually
satisfactory resolution of their dispute. Because the parties themselves control the outcome, it is less likely that they will
be dissatisfied with any new relationship formed through mediation. In addition, since mediators work closely with the
parties without deciding liability, they can discourage any adversarial tendencies that may lead to hostility between the
disputants. n104
In conclusion, IP disputes often have very dire consequences, as is illustrated in the case of Edwin Armstrong.
n105 Overall, litigation is rarely sensitive to the human dimension of IP disputes and often diminishes or destroys what
might have once been a functioning business relationship; thus, in turn creating a climate of mistrust. n106 Mediation
and its power to adapt to parties and situations better address disputants' needs.
2. Mediation is Cost-Effective
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Another general celebrated point of mediation, one of particular importance to disputants in IP conflicts, is the cost
savings associated with mediation compared to litigation. The typical IP litigation often spans several years with
attorney fees and damage awards commonly in hundreds of thousands of dollars; in larger cases, the numbers run into
the millions. n107 Litigation costs are so high because litigation is a highly competitive and adversarial process that
encourages the parties to exaggerate their claims. These exaggerated positions fuel the costs of finding the "truth" within
such a highly structured setting, compared to having adopted more reasonable initial positions. Also, the court system
values individual rights and puts a
[*69] very high premium on rigorously tested facts, witness credibility, and legal propositions, resulting in a slow
cumbersome process surrounded by opportunities for delay. n108
Disputants involved in highly technical computer software or patents conflicts, are more likely to be victims of
expensive litigation.
The largest factor contributing to patent litigation costs, is usually the high cost of discovery. Discovery can be a
meticulous procedure in any civil litigation case, but in high-technology related disputes, each round of discovery
usually discloses another layer of problems that must be explored. Thus, discovery becomes a painstaking process,
much like peeling an onion. Another factor contributing to the high expense of hitech IP cases is their heavy reliance
upon expert testimony. Both parties normally require experts to bolster their case, and the outcome of the dispute often
hinges upon their testimonies. Thus, expert witnesses must spend long hours preparing for their testimony and may
testify at great length, both of which increase the fees. n109
Some argue that high-stake patent disputes might be most appropriate for trial, but in fact ADR might offer the best
savings in these disputes "because it is in these cases that clients stand to save the most in legal fees, [and in fact,] ADR
may function at its best during high-stake disputes." n110
We must remember the hidden costs in the form of increased risk when involved in a patent dispute. Parties in an
IP dispute who refuse to settle always run the risk of receiving an injunction, an adverse judgment, or an inadequate
award of damages. If we look at an IP dispute where the patentee must overcome every conceivable defense raised by a
potential infringer, even disputes over large potential damage awards can take on very low expected values once the
overall probability of winning at trial is taken into consideration. It can be very easy to underestimate this risk while in
the midst of a dispute, which may have become charged with "business emotion." n111 Therefore, the mediator's most
valuable role in the dispute resolution process may simply be as an "agent of reality" for helping both parties to
realistically assess the costs, benefits, and risks of continuing their dispute. n112
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Other hidden financial losses with IP litigation, and possibly also with arbitration, include the cost of answering
interrogatories, attending depositions, and attending a trial which may impose a burden on a client's scarce engineering
and management resources. Losses in productivity from lost time and mental stress may also add to litigation costs. The
losses in productivity may lead to substandard service causing further loss of customers and sales. The negative
publicity associated with litigation may
[*70] also lead to a loss of future customers along with the loss of unknown business opportunities. Corrective
image advertising may also have to be factored into the cost of formal litigation. Finally, if the opposing parties ever
resume a business relationship after litigating with each other, the litigation cost must include reestablishing the lost
goodwill between the parties -- probably the most expensive cost. n113 In other words, the hidden expenses may be
much more costly than the more obvious out-of-pocket expenses of attorney fees and damages.
Mediation's main costs include those incurred with administrators of the process, the neutral mediator employed by
the parties, and the time spent in preparation for the mediation sessions by the parties and their professional advisers.
Litigation, and often arbitration, requires the preparation of pleadings, or statements of cause by both parties. Due to
mediation's less formal procedures, costs incurred to conduct a mediation session should not exceed the costs expended
preparing for trial; expenses can be onerous (i.e. discovery and preparation for formal hearings). Although there are
costs incumbent upon a pre-mediation session, it is more advantageous to pursue mediation before embarking on
litigation.
Mediation can be used at any stage of a dispute to achieve some cost savings. n114 According to some
practitioners, clients who use mediation save about eighty percent of the cost of litigation. n115 The fact that mediation
is cheaper than litigation increases peoples' access to justice. Unlike the adversarial process, which gives power to those
who can afford the financial burdens, mediation gives many who may not have had an opportunity to submerge
themselves in legal waters a chance to be heard. Mediation's cost effectiveness turns the process into an "open system."
An open system is more adaptable because mediation takes into account that not everyone can afford litigation. Since
the adversarial system is primarily concerned with how it is operating internally and focuses almost exclusively on
structural and institutional values, as opposed to taking into account how it, as a system, is interacting with its
surroundings (i.e., the disputants), it is more like a machine. n116
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Arbitration is praised for its cost effectiveness; one study found that this is not necessarily true. n117 The potential for
speed and cost savings
[*71] commonly associated with arbitration is seldom realized when neither party feels a need to expedite the
process or to keep expenses down. n118 All of which reinforce mediation as a preferable alternative.
3. Mediation is Time Sensitive
For most litigants, delay means added expense and for many "justice delayed is justice denied." n119 This is
particularly true for IP disputes, which are very time sensitive. Moreover, the cost of lost opportunities can be especially
high. In competitive industries undergoing rapid technological change, businesses often find that the useful life of a
patent is only as long as the time it takes a competitor to patent an improvement and demand cross-licensing. n120
According to reports cited by the World Intellectual Property Organization (WIPO), "the life cycles of technical
innovations get shorter and shorter; product life cycles are currently between nine and fourteen months." n121 With this
said, "the new ideas embodied in patents often must be quickly placed into the marketplace, or the technology
embedded in the patent risks obsolescence. Therefore, it is of paramount importance that patent disputes be resolved
promptly to avoid such a result." n122
Delays in patent litigation may also place disparate burdens on the parties due to differing impacts of the
uncertainties of the litigation. For example, litigation involving the validity of the patent may provide an incentive for
the patent holder to delay the litigation. In addition, where a patent holder sues an alleged infringer, the uncertainty of
the litigation may prevent the alleged infringer from further developing, manufacturing or marketing the product, and
this "lost time" imposes a hardship upon that party. One party may thereby impose economic losses on its opponent
through use of tactical stalling techniques. n123 The litigation process thus has the potential to delay many new ideas
from reaching the marketplace. n124
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Lawyers' fees may also be higher in patent cases or computer software copyright infringement cases because the
lawyers may spend a significant amount of time learning the technical subject matter underlying the highly technical
issues. In order to effectively argue the case, the lawyer will have to understand the underlying scientific principles,
which will
[*72] take time and will be billed to the client. n125 This point is also relevant for parties who select arbitration
because the effort required to find one or more individuals knowledgeable in the relevant field, with no conflicts of
interest and acceptable to each of the parties, can consume a substantial amount of time. n126 Since a mediator is not
selected to make a final decision, less time is likely to be spent finding one, compared to finding an arbitrator.
Although most copyright disputes, excluding computer software cases, are not highly technical, there is still
concern for a speedy resolution. Consider a situation where a group commissions someone to write a book and the
author agrees to transfer her copyright to that group. If the group is not happy with the work and refuses to allow the
writer to publish the work on her own; then a lengthy battle in court may outdate the book with years of research
wasted, and her intellectual property rendered worthless. n127 The same may occur for a movie or documentary that is
tied up in a legal battle and paralyzed by an injunction to stop production or screening of the film until the legal issues
have been settled. In short, the court process is often lengthy and the wait can prove detrimental to IP cases.
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Mediation is faster than litigation or arbitration; thus, another one of its strength is bringing mediation closer to a
system designed as an organism. Generally, a mediation agreement in a contract might set an overall time limit for the
entire process of thirty or sixty days, while the actual negotiations during the mediation may take as little as a couple of
hours. n128 Although
[*73] ADR -- specifically arbitration -- has become so popular that judges have begun to rent themselves out to
parties who want someone to facilitate their disputes, n129 arbitration is not necessarily faster than litigation. Often
procedural formalities and a reluctance (or inability) on the part of many arbitrators to sanction parties in order to
control their lawyers can make arbitration as time consuming as litigation. n130 Mediation seems to have a
consciousness for time and appreciates closure sought by the disputants. The adversarial system, on the other hand,
seems more concerned with the process because it does not adapt to the individuals' needs.
4. Mediation Can Deal with the Technicality and Complexity of IP Disputes
Another characteristic of many IP disputes is the complex and technical issues involved. The criteria for
patentabilty in Canada include novelty, non-obviousness, and usefulness. n131 More specifically, the P Act explains that
any "art, process, machine, manufacture or composition of matter" or any new and useful "improvement" of one of
these qualities is a patentable "invention" if it is "new and useful." n132 With this said, it would seem that only a
technical expert can decide whether an invention contains an inventive step in order to classify it as an invention. n133
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Disputes involving theft of trade secrets and violations of confidentiality agreements, which turn on issues that require
highly specialized training or experience to make a judgment, are particularly difficult for the adversarial system to
handle. "A judge or jury, without a scientific or technical background, may have trouble... understanding the distinction
between sophisticated software programs in a copyright dispute or the nuances of plant and animal cloning" in a patent
dispute. n134 Experts deal with concepts that are difficult to understand. They frequently speak in their
[*74] own language, and they often are coached to select only the testimony that favours the party who hired
them. n135
The fact finder often has difficulty understanding the basic technology behind the dispute, which can result in
unfair outcomes. For example, a defendant in a patent litigation suit may utilize a manufacturing process that produces
exactly the same result as the plaintiff's patented process. However, if the end result of the defendant's process is
accomplished in a different manner from that of the plaintiff, there is no patent infringement. Difficulties may arise
because the differences between the two processes will often entail fine distinctions that invoke complex principles of
science or engineering. n136 Decisions based upon inappropriate or irrelevant grounds, or perhaps upon nothing more
than mere guessing, may decide these highly consequential lawsuits. Indeed, the U.S. Supreme Court noted that,
"...patent litigation can present issues so complex that legal minds, without appropriate grounding in science and
technology, may have difficulty in reaching decisions." n137
Educating the judge and jury on technical issues can be a major obstacle to resolving the substantive issues in an IP
case. n138 To deal with this, two Silicon Valley computer-chip manufacturers opted out of the regular jury pool in their
trade secret case. The two companies agreed to select an "expert" jury made up entirely of retired electrical engineers
consultants. Not only were the litigants able to avoid the costs associated with the inherent waiting, delays and publicity
of a traditional trial, but also the trial actually went faster because less time was needed to educate the judge and jury on
the basics of computer-chip technology. n139 In arbitration, the strength is that the parties have the opportunity to hand
pick experts to arbitrate or facilitate discussions. The problem with arbitration, however, is "that arbitrators are often
perceived as rendering 'compromise verdicts' in which they simply split the difference between both parties' demands,"
n140 which is also a criticism with judges and juries.
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In mediation, unlike in litigation and arbitration, the complexity and technicality of IP disputes is burdensome, mainly
because the facilitator does not have to make a decision. Understanding the technicality behind patents may be rooted in
a fault-based adversarial system, where understanding the issues and the parties' rights is important. In reality, mediation
does not require a mediator to be an expert in the dispute issue at question because the mediator's role is to facilitate
discussions. Being an expert is only important if the third party needs to make a decision on the dispute. However, a
mediator with some expertise in the particular IP issues in question can help
[*75] to reassure the parties and instill more confidence in the dispute resolution process, in turn creating a
smoother process.
Complex technical nature cases are particularly well suited to resolution by mediation. Some argue that IP disputes
are, by nature, "more susceptible to win-win solutions than are, for example, general civil tort cases." n141 In particular,
licensing arrangements allow for creative solutions that may be arrived at through mediation but would remain largely
unavailable in court-imposed decisions. n142 More specifically, mediation, which is less formal, could be a valuable
tool in an environment where the law is struggling to adapt, such as in Internet IP related disputes. ADR can be a
rational choice, flexible enough to accommodate a rapidly changing technological medium. n143 In cyberspace for
example, a bottom-up, flexible method of dispute resolution like mediation is likely to be much more agreeable to the
parties than sole reliance on top-down statutory or judicial authority, and it would not stifle the development of either
custom or technology. "The rapid and unpredictable growth of technology compels the use, whenever possible, of
flexible, bottom-up methods of control." n144
An example of how mediation can adapt to the complexity of IP disputes involves the famous 1982 IBM-Fujitsu
dispute. Here the settlement was reached through ADR, which incorporated an aspect of ADR known as "preventative
law."
Preventative law provides a unique advantage as a means of settling complicated issues in evolving technological
and legal fields. In the past, IBM had to wait until after the public release of a Fujitsu program and then conducts an
elaborate technical examination of the program. Then, if it chose to pursue a claim, it was extremely expensive and time
consuming. The preventative law exposes and resolves disagreement before public release of the software. n145
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In summary, IPs' high technicality and complexity make these disputes more appropriate for mediation because it
allows for tailor-made processes and solutions that work for the complex issues. It is only appropriate that such a
technical and complex changing field adopts an equally changing resolution process.
[*76]
5. Mediation Can Be Confidential
Another similarity between IP disputes is the importance the IP industry places on confidentiality. IP disputes often
deal with confidential information, such as trade secrets and patents. Therefore, the parties are often keen to preserve
privacy and confidentiality. n146 When a lawsuit goes to trial confidentiality is usually lost. Judges generally do not
close the courtroom to the public, particularly in jury trials, even if all of the discovery and pretrial proceedings were
subject to a strict protective order. n147
With trade secrets, for example, information that enters the public domain cannot generally be protected from the
time it becomes public. n148 The rationale for protecting trade secrets is to protect confidential business processes
necessary to encourage the entrepreneurship, which is essential in a competitive market. The irony is that while there is
value placed on confidentiality, this confidentiality can be lost if someone seeks justice through the courts. Also, patent
infringement litigation, or copyright claims involving computer software, can require the litigants to divulge very
sensitive information regarding their products or manufacturing processes. This information is often the most valuable
asset to a business. n149 Consequently, maintaining confidentiality is extremely important.
But highly technical IP cases are not the only cases where confidentiality is valuable. A less technical case
involving a copyright dispute over rights to a script may be equally sensitive to publicity. If an author claims that a
producer or production company stole her script, the company in litigation would be forced to divulge information that
the company wished to keep confidential. Specifically, the company would have to provide production development
records to illustrate the evolution of the script in question, and in the process would be revealing other productions
concurrently in development - projects and ideas that the company would most likely not want publicized.
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Unlike traditional litigation and arbitration, where there have been debates on confidentiality, n150 mediation
proceedings and outcomes can be kept confidential if the parties so decide. Such an aura of confidentiality may be
appealing to parties concerned with adverse precedents or lack of resolves to future litigants. Sealed proceedings may be
especially appealing in IP cases where each party is concerned about the confidentiality of its own technologies and
trade secrets n151 which may otherwise become available to
[*77] competitors, customers, media, and the general public. n152 In other words, mediation is more appropriate
than litigation when it comes to confidentiality, mainly because the "flexible" organism features of mediation that
allows parties to design the process that best addresses the parties' interests.
6. Mediation can deal with the complications of International Disputes
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These IP issues can become more complex when different countries are considered because they each have different
philosophies on intellectual property. n153 On the one hand, Western industrialized countries have capitalistic
economies that depend upon the protection of copyright against piracy. These countries would like to extend intellectual
property protection internationally. Industrialized countries like the U.S., the U.K. and France are afraid to export their
IP to a country with little or no protection. n154 Developing countries, on the other hand, are diametrically opposed on
intellectual property right protections. n155 These countries have reasons to dislike enforcement of IP protection as well
as increased protection. n156 The Asian bloc, for instance, is the locus of most pirated and counterfeit goods. n157
Although countries such as China, Korea, the Philippines and Indonesia have little intellectual property laws, these laws
are often not enforced and have little effect on curbing rampant pirating. n158 In Latin America, governments favour
lax legislation and enforcement based on the logic that they need affordable access to new technologies in order to
develop. n159 Moreover, in the African countries, this notion is further entrenched due to their deficient resources and
non-existent infrastructure, justifying their needs to copy
[*78] western technologies and goods. n160 However, countries like Zimbabwe, that have significant intellectual
property to protect, desire more international IP protection. n161
The General Agreement of Tariffs and Trade (GATT) n162 coupled with the Agreement on Trade Related Aspects
of Intellectual Property Rights (TRIPS) is currently designed to harmonize intellectual property protection around the
globe. GATT features enforcement and conflict-resolution mechanism via the World Trade Organization (WTO) as
opposed to reliance on the various countries' domestic courts. The U.S. has had great influence over the GATT
negotiations, indirectly solidifying the western worldview on IP protection. n163 GATT-TRIPS offered trade sanctions
on the basis of the multilateral trading system, which has led many commentators to champion GATT-TRIPS mainly
because of its enforcement powers. n164 In many respects, however, GATT-TRIPS mirrors the rights based on
mechanical structure of the courts, which does not necessarily address the diverse global philosophies on IP protection.
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Mediation can help on an international level: disputes arising in the absence of both cultural commonality and precise
rules for behaviour may require intermediaries to compensate for those deficiencies. Mediation can be tailored to
accommodate different countries' philosophies on IP and to avoid jurisdictional obstacles. For example, a mediator
might facilitate a negotiation process by eliciting and sharing different perspectives on the dispute and helping the
parties reach a resolution that does not run counter to their beliefs on IP protection. n165 The Internet is a prime
example of IP rich materials that can fall victim to jurisdictional problems if a dispute arose. Interestingly, some have
looked towards online "electronic dispute resolution." n166 The argument seems to be that: "most would rather be
[*79] subjected to the judgments of their virtual community than the local laws of a physical place far from where
they live...". n167
Aside from on line mediation sites, another answer to deal with international IP disputes might be the World
Intellectual Property Organization (WIPO). WIPO is an agency of the United Nations, created in 1967 to administer
treaties dealing with intellectual property. Recognizing its weak enforcement mechanisms, WIPO has introduced new
methods of dispute resolution. In 1994, WIPO introduced its mediation rules to encourage mediation of disputes
concerning IP n168 such as patents, trademarks, licenses, franchises, computer contracts, distribution contracts, joint-
ventures, R&D contracts, technologysensitive employment contracts, and mergers and acquisitions where intellectual
property assets are of prime importance (i.e. publishing, music, and film contracts). n169 The WIPO's structures
emphasizing mediation to help parties bridge their differences as opposed to a rightsbased machine structure, interested
in manufacturing rigid resolutions based on dominant IP convictions.
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The adversarial system is very mechanical and more concerned with its smooth operation, as opposed to the parties'
interests. Mediation is more organic, in that it is shaped by the parties and designed to suit their needs. Arbitration may
be more effective than courts in some cases, but it does not measure up to mediation, particularly for IP disputes.
Various business sectors believe that arbitration costs too much, takes too long, is procedurally complex and is too
adversarial. n170 Although mediation sounds promising, it should not be adopted as the panacea for all IP disputes.
There will be situations where mediation will not be appropriate. Specifically, mediation
[*80] should not be made mandatory in the courts primarily because it would pervert mediation's organic design.
IV. WE SHOULD BE CAUTIOUS ABOUT IMPLEMENTING MANDATORY MEDIATION
With an appreciation of mediation and its effectiveness in dealing with IP conflicts, it would seem foolish not to
mandate mediation. This however, may be a premature move because by mandating mediation, we may actually lose
some of the organic qualities that make mediation effective alternative to both litigation and arbitration. In this section
we will look at three main areas. First, I will acknowledge that there are benefits to mandatory mediation. Yet, in the
second part of this section, we find that these benefits hurt the organism's qualities of mediation. Mandatory mediation
may have the tendency to become more mechanistic; therefore, it mutates into "machine mediation" as opposed to
"organism mediation." Finally, the third part will illustrate how losing the organic qualities may negatively affect the
resolution of IP disputes. Ultimately, we will see that "organism mediation" is not necessarily better than "machine
mediation," rather we learn that their relative effectiveness will depend on the disputants' goals.
A. The Benefits Of Mediation In The Court System
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Ironically, ADR, specifically mediation, is presently being embraced by the adversarial system. Most courts today
enthusiastically enforce statutes, rules and even agreements for ADR. Many judges agree with the use of ADR to
resolve disputes because it allows parties to vent emotions, and satisfies litigants' need for a day in court in addition to
providing input on the probability of success at trial. Similar judicial articulation of the dynamics of settlement has,
perhaps more than any other single factor, encouraged the expansion of judicial power to compel participation in
consensual ADR. n171 Judges, in particular appreciate the relief it gives to the congested courts. Delay associated with
a trial is evident by the backlog of 10,000 civil cases in Toronto (General Court Division). n172 Cases on the civil non-
jury list generally take at least one year to reach the pre-trial conference stage and may not be tried until six to eight
months later. n173 According to a report conducted by the Centre for Dispute Resolution (CEDR) in London, Ontario,
over 90 percent of the cases, which it has administered since 1990 have been
[*81] settled, which is reflective of other settlement rates from around the world. n174 Even Ontario has
introduced mandatory mediation, established by Rule of Civil Procedure, n175 Rule 24.1, mandating all parties to
participate in a three-hour mediation except for family-law related cases. n176
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By adopting this organism styled resolution system for disputes, and for the courts generally, it will help satisfy the
resolution needs of the disputants. Courts that only offer trials are limited in their responses to a legal dispute. One party
wins and the opposing party loses. Judges unfortunately are confined and cannot resort to intermediate solutions,
compromise, or tailored outcomes that accommodate the parties' best interests. Litigation, therefore, creates winners and
losers, and often the winners feel like losers because of limited legal remedies, the attendant delay, and the partial
indemnification of cost orders. n177 Mediation may help customize the solutions to better satisfy the parties involved.
The best aspect of mediation in court is that it offers a different avenue to pursue justice. It is important that the justice
system understands that people want their conflicts "resolved," not necessarily "tried." n178 The legal profession should
view mediation as a "new justice product" that allows lawyers to offer new services to their clients in addition to, not
instead of, litigation. n179 Professor Frank E. A. Sander refers to this concept as the "multi-door courthouse" where,
instead of one "door" leading to a courtroom, there are several doors available to obtain the most appropriate resolution
process. n180 The key feature of the multidoor courthouse is the initial procedure: intake screening and referral. n181
Disputes are analyzed according to various criteria to determine which dispute resolution mechanism or sequence of
mechanisms would be best suited for the problem. n182 It is not sufficient to provide just one specialized formal dispute
resolution procedure, like a trial, to a growing complex society. n183 A doctor would never dream of prescribing the
same
[*82] medication for every disease and expect to have remedied all aliments. So, it would not be prudent to
prescribe litigation to resolve types of conflicts, which inevitably require different cares.
B. The Creation Of "Machine Mediation" - A Theoretical Analysis
Although I am in favour of a "multi-door courthouse," this is not to say that I favour mandatory mediation.
Regardless of the evident advantages of incorporating mediation into the courts, it is important to note that the result
would no longer be mediation designed as an organism. First, how the case for mediation is disseminated would in and
of itself be more reflective of a mechanical process, which could affect mediation's effectiveness. Senge argued that
commitment to change only comes about when people determine that you are asking them to do something that they
really care about. For this reason, if you create compliance-oriented change (i.e. mandatory mediation) you will get
change, but you will be precluding the deeper processes that lead to commitment, thus preventing the emergence of self-
generated change. n184 Senge also referred to "seed-carriers" whom he explained were workers within an organization
who know how to get people talking to one another and how to build informal communities; in effect they were creating
communities of practice. n185 So, as opposed to manufacturing change through the courts, we need to realize that we
are able to cultivate change and like the "seed-carriers," parties that have voluntarily chosen mediation can similarly,
speaking from a personal point of view, spread the word that mediation works. n186
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Second, and more importantly, mediation within the courts may begin to mutate into a more mechanical process.
Steven Elleman, who argued for mandatory mediation in IP disputes said that: "utilizing a professional mediator and
forcing the parties to seriously consider settlement should increase settlement levels." n187 While settlement levels may
increase, this overlooks the point that settlement is not necessarily the most important aspect of mediation. Yet, it is
exactly this mentality that would align mandatory mediation more closely with a machine-like system. Mediation in the
courts, and in turn the legal profession, would influence mediation's development, similar to some scholars' argument
that arbitration in certain
[*83] industries has been "juridified" by the involvement of lawyers, n188 so too will other forms of ADR, which
will in turn affect the type of mediation processes adopted in the courts. n189 An explanation of two different types of
mediation will help illustrate this point.
The authors of The Promise of Mediation have explained the different philosophies within mediation. One
philosophy the authors referred to is "the Satisfaction Story." The premise of this thinking is that the most important
goal of mediation is to maximize the satisfaction of individuals' needs or, conversely, minimize suffering, and create the
greatest possible satisfaction for the individuals on all sides of the conflict. This story stresses mediation's capacity to
reframe conflicts as mutual problems and to find optimal solutions to those problems, because this is how the ultimate
goal is met - all parties' needs get satisfied. n190 With this approach, cases are dealt with faster than going to trial,
which eases the pressure of backlogged courts, saves parties time and money, and more accurately addresses
participants' needs.
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On the other hand, "The Transformation Story," emphasizes that the most important goal of mediation is to encourage
moral growth and transforming human character, toward both greater strength and greater compassion. This story
highlights mediation's capacity for fostering empowerment and recognition, because when these occur in conflict, it
signifies that one or both parties have attained the ultimate goal of moral development to some degree. n191 This
second mediation philosophy is somewhat more idealistic in that it not only attempts to satisfy and transform the
character of individual disputants but also society as a whole. Mediation's informality and consensuality allows parties
to define problems and goals in their own terms, which validates the importance of those problems and goals in the
parties' lives. Participants gain a greater sense of
[*84] self-respect, self-reliance, and self-confidence, which has been called the empowerment dimension of the
mediation process. n192 In addition, the private, nonjudgmental character of mediation can provide disputants with a
nonthreatening opportunity to explain and humanize themselves to one another. The movement has used this dimension
of the process to help individuals strengthen their inherent capacity for relating with concern to the problems of others.
Mediation can thus incite acknowledgment and concern between conflicting parties, as fellow human beings. These
outcomes have been called the recognition dimension of the mediation process. This sense of empowerment and
recognition would contribute to the transformation of individuals from fearful, defensive, and self-centered beings into
confident, empathetic, and considerate ones. n193 These elements, and especially empowerment, constitute the seed of
the mediation-asorganism metaphor. Without these qualities, we are closer to "The Satisfaction Story," which is what
the courts seem to be adopting -ergo machine mediation.
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In other words, the main difference is that "The Satisfaction Story" deals with improving the parties' situation while the
"Transformation" philosophy strives to improve the parties themselves. This is not to say that all voluntary mediation
will be transformative, or that mandatory mediation through the courts cannot be transformative, but rather that
mandatory mediation through the courts has a better chance of adopting the machine like qualities of the court, elevating
the importance of settlement and downplaying the role of empowerment and recognition. The reason to understand
these two mediation approaches is to appreciate that there are in fact different types of mediation and that by mandating
mediation we may indirectly enforce the satisfaction story thereby creating a more rigid mechanical mediation. While it
is unlikely that a large multi-million dollar company is interested in "empowerment and recognition" and is probably
more concerned with profits, mandatory mediation would reinforce the satisfaction model to the point that the
transformative model would fade. If a company is not interested in empowerment and recognition, they can choose a
mediation approach that is more in line with the satisfaction story. A zealous inventor or an impassioned artist
meanwhile, may be more concerned with empowering themselves and having other parties recognize their concerns. In
other words, mandating mediation would create a specific type of mediation process, which would not be appropriate
for all situations. The parties need to decide whether they want mediation and what type of mediation would be most
appropriate as opposed to having a mechanical mediation process pushed onto them. In addition, the parties' power to
choose the mediation approach that they prefer is more reflective of the organic metaphor. Put plainly, from a theoretical
point of view, mandating mediation amputates mediation's organic qualities.
[*85]
C. The Negatives Of Mutating The Organism- A Practical Analysis
1. Underlying Conflicts And Long Term Relations
Although we have seen that, in theory, mandating mediation may weaken mediation's connection to an organism,
there are some more practical consequences that we need to consider. Once we understand that there are different
philosophies behind mediation we can more clearly see how mandatory mediation begins to lose its organism qualities
and how losing these qualities negatively affects IP disputes.
One of the most celebrated elements of mediation -- which is its main connection to an organism -- is its informal,
consensual elements. These elements, however, are likely to be affected if mediation is captured and mandated by the
courts. With this concern in mind, many scholars have looked at interest based conflict management systems and
recognized the inherent contradiction in creating an interest based system within a rights based one. They have said:
Confronted with the high costs of using the rights-based forums and dissatisfied with the resulting "win-lose"
impact on ongoing relationships, organizational leaders have flocked to ADR courses to learn the newer and perhaps
more enlightened methods of resolving disputes. The problem, however, is that these interest-based methods are often
imposed or required through rightsbased designs, with little or no input from institutional or individual stakeholders.
n194
Scholars have specifically used court-ordered or mandatory ADR as an example of the incongruity between
interest-based methods through a rights-based design. If we were to adopt mandatory mediation, it will be forced to be
institutionalized, more formal, and connected to rules, taking on qualities of the system it was meant to displace. Even
judges are beginning to recognize this point. Madam Justice Rosalie Abella of the Ontario Court of Appeal said,
"mediation and 'alternative dispute mechanisms' hailed as speedy alternatives to protracted lawsuits, 'are themselves
turning into procedural mimics of the court system' just as costly or complex." n195
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Let us dig deeper to have a clear understanding of the negative consequences of mandating mediation. ADR can be
grouped into decision-oriented processes and consensual processes. Decision-oriented methods, such as arbitration and
fact-finding, rely on a decision by a neutral third party to resolve the dispute. Meanwhile, in a consensual process, a
third party assists disputants in reaching their own agreement regarding how to resolve their dispute. n196 Once the
courts adopt ADR, regardless of whether it was
[*86] meant to be consensual ADR, there will often be strong traces of decision-oriented processes. With
mandatory mediation there will be more pressure on the disputing parties to focus on settlement. n197 Justice and
efficiency seem to encompass the two goals of court mandatory mediation, where efficiency seems to be assuming more
importance. Although the judges cannot force mediation onto parties, the U.S. judges in some states have ordered
litigants to mediate and to operate in good faith; courts have then pronounced guidelines to describe such a good faith
effort. n198
The main concern I have tried to address is that mandatory mediation might revert back to a machine-like system,
which focuses too much on outcomes and rights, and not on parties' interests, recognition and empowerment, which are
mediation's main strengths. Recognizing this mediation mutation is important for IP disputes because one of the main
reasons mediation has grown in popularity is because of the fact that it helps maintain long term relationships by
focusing on interests and moving away from the courts. n199 This is not to say that the noted satisfaction story, or
"machine mediation" cannot nourish productive post-dispute relations. The focus however, is often so settlement
specific that underlying issues that may have been addressed through the transformative model may not have been
addressed through machine mediation.
Page 84Page 84
An example where machine mediation would not be as affective as organism mediation, is the case involving Peter
Taborsky. When he was a student at the University of South Florida, he took an $ 8.50-anhour-job where he was
assigned to a $ 20,000 project contracted by a subsidiary of Flordia Progress, a local power company, to determine if
bacteria could be used to extract ammonia from clinoptilote, a clay used in filtering water. n200 The terms of the Florida
Progress contract stipulated that Taborsky's findings belonged to the company. n201 Taborsky disagreed and eventually
was jailed
[*87] for "stealing" his own notebooks and ideas and then refusing a judge's orders not to exploit them. n202
Noreen Segres, the school's general counsel epitomizes the notion of "rights" when she said: "It is irrelevant to us who
invented [the process]. We own it." n203 The point is that the rights based system did not really take into account the
inventor because it was too preoccupied with the concept of property rights; which is ironic when we consider that
intellectual property protection in general is designed to protect inventors and creators. The point is that Taborsky was
probably less concerned with "rights" -- defined in the legal sense -- and more concerned with not being exploited and
bullied. We must keep in mind that this event led to the break up of his marriage, n204 he chose jail over assigning the
patent he had filed on his findings, and he refused an offer of a pardon by Florida Govenor, claiming that accepting this
would mean admitting he is guilty. n205 The point is that there was definitely a high level of emotion and pride
involved which was not dealt with through trial, and which could not have been dealt with through trial. Mandating that
Taborsky participate in mediation, where the emphasis would most likely have been on settlement and clearing the court
docket, may have led Taborsky to feel patronized, which could have caused more harm. Organism mediation, which of
course would have been voluntary, would probably have more effectively dealt with this conflict by focusing on
empowerment and recognition; probably the "justice" that Toborsky was seeking.
2. Time Can Be Wasted
Page 85Page 85
A more practical problem with mandatory mediation is that it may actually cause delay as opposed to providing a
speedy, costeffective resolution process, which as we saw earlier is important to IP disputes. Litigants may tend to wait
until the mediation process is either about to commence or is finished before parties begin serious settlement
discussions. n206 This strategic waiting may result in longer processing time for such cases than for others that settle
without mediation. As a result, mandatory mediation, or arbitration for that matter, may simply become another hurdle
to be cleared on the way to litigation, and which may become a formality that wastes both time and resources.. n207
According to a Pennsylvania study, defendants nearly always reject the mediation awards
[*88] and request trial, thereby prolonging ultimate disposition rates. n208 Arguably, mandatory mediation may
substitute ordinary settlements rather than decrease the number of trials, and may discourage parties to settle on their
own. It may also encourage parties to exaggerate their requests in order to look as though they have compromised when
it comes to the mandatory mediation. Some parties may also go through the motions of mediation not to be perceived by
the judge as unwilling to settle. And of course related to all of this, mandatory mediation may be even more wasteful if
one of the parties enters negotiations with no intention to abide by the mediated settlement, and are therefore just buying
time.
More specifically, there may be situations where mediation is not appropriate for IP disputes at all: where there is
bad faith counterfeiting or piracy, where the objective of the parties or of one of them is to obtain a neutral opinion on a
question of genuine difference, or to establish a precedent, or to be publicly vindicated on an issue in dispute, or where
the goal of a party is to actually impede prompt resolution. n209 If the process is voluntary, there is at least some
assurance that the parties will be negotiating in good faith. n210
3. Loss Of Personal Choice and Procedural Safeguards Important to IP Disputes
Page 86Page 86
Putting aside the more obvious dangers that mandatory mediation may have on the historically disadvantaged, n211
there are drawbacks that relate more specifically to IP disputes. For some, for example, winning against their
"adversaries" is highly valued: it proves they were "right." And therefore settling through mediation may be a sign of
weakness. n212 Additionally, disputants may not accept the procedural trade-offs that come with an alternative dispute
resolution procedure. Discovery must be significantly reduced (or even eliminated) before any ADR's substantial time
[*89] can be realized. Sacrificing discovery may be asking for too much in many IP disputes. For example, a
patent owner usually needs documents and depositions to prove willful infringement, and the accused infringer
generally needs testimony and documents from the inventor to show either the defense of "failure to disclose the best
mode" or "inequitable conduct." n213 Also, after the dispute arises parties may be reluctant to enter into an ADR
procedure where they cannot cross-examine the opponent's witnesses. The attachment to cross-examination is usually
connected to the mistrust of the opponent that prevented resolution of the dispute in the first place. And finally IP
disputants may also be reluctant to relinquish the right of an appeal, which is connected to litigation. n214 Therefore,
while mediation can be effective in resolving IP disputes, mandating mediation can result in harmful consequences.
V. CONCLUSION
The benefit of using metaphors to describe dispute resolution mechanisms is that they help us to visualize and
better understand how they operate. The court's adversarial system's clearly defined parts or roles, its inflexibility, its
bureaucratization, its hierarchical structure, and its emphasis on rights and outcomes become clearer when we have
something like a machine model as a point of reference. Likewise, the organism metaphor gives us a clearer
understanding for how mediation can operate in IP disputes. Its adaptability, both internally and externally, plus its
emphasis on individual needs become clearer when we compare it to an organism model. Holding up mediation's
organizational process to an organism sheds light on what is a growing legal field. We looked at how mediation and its
organism design work effectively to address some of the common features of IP disputes. The point of the organism
metaphor is that individuals and groups, like biological organisms, operate most effectively only when their needs are
satisfied. Mediation helps people to achieve these needs by acting as an open system, which relies on its internal
(parties) and external (issues) components -- like an organism. So as Senge argued, we need to bring in the gardeners
and think like biologists, not as mechanics.
The benefits of implementing mediation into the court system include the prospect that it may help to legitimize
mediation and make it a valued tool for resolving disputes and may help to restore the role of our courts as community
centres for conflict resolution. However, if people feel coerced into mediation, it may have the opposite effect. Equipped
with an understanding of the organizational structures of these two conflict resolution systems, we can more easily see
that attempting to breed these two methods results in a mutated mediation system that becomes somewhat more
mechanical than it ideally should be. The emphasis here would be on conflict
[*90] resolution efficiency as opposed to organism mediation, which would allow parties to dictate their own
resolution process.
At the most basic level we must understand which resolution system would be most effective for dealing with
different types of disputes. For example, one needs to decide whether to opt for an adjudicative process which would be
most effective when a long postcontractual relationship is secondary to "winning" the dispute, or a nonadjudicative
ADR process which would be best employed in a situation where maintaining a long-term contractual relationship is
very important. n215 Ultimately, however, disputants should have some choice and not be mandated to do something
against their wishes or be misled into believing that they have chosen an alternative resolution process, which in fact is
not what they had envisioned.
Legal Topics:
Civil ProcedureAlternative Dispute ResolutionArbitrationsGeneral OverviewCivil ProcedureAlternative Dispute
ResolutionMediationsPatent LawInequitable ConductGeneral Overview
FOOTNOTES:
n1 Alan M. Webber, Learning for a Change, in Fast Company, 180, 184 (1999).
n2 James R. Sobieraj & Michael G. Anderson, Contracting For Alternative Dispute Resolution: An
Application to Intellectual Property, 2 Intell. Prop. L. Int'l Analytical Rev. J. 8 (1994).
n3 Alex Wellington, Taking Codes of Ethics Seriously: Alternative Dispute Resolution and Reconstitutive
Liberalism, 12 Can. L.J. & Juris. 297, 300 (1999).
n4 Webber, supra note 1.
n5 Webber, supra note 1, at 180.
n6 David Vaver, Intellectual Property Law: Copyright, Patents, and Trademarks 3 (Concord: Irwin Law,
1997).
n7 Copyright Act, R.S.C. ch. C-42 (1985) (Can.) [hereinafter, the C Act].
n8 Lesley Ellen Harris, Canadian Copyright Law, 25 Law Librarian 137 (1994).
n9 C Act, supra note 7, § 5(1).
n10 Vaver, supra note 6, at 88.
n11 C Act, supra note 7, § 3(1).

n12 Id.
n13 Id. § 14.1(1).
n14 Id. § 14.1(2).
n15 An example of a creator's moral rights is illustrated in Snow v. Eaton Ctr. Ltd., [1982] 70 C.P.R.2d 105.
In this case, a sculptor who created a group of flying geese in the Eaton Centre, in Toronto was entitled not to
have his work decorated with red ribbons at Christmas time. The court found that decorating the geese interfered
with the moral rights of the artist.
n16 See also Gondos v. Hardy, [1982] 38 O.R.2d 555, 64 C.P.R.2d 145 (H.C.), which followed U & R Tax
Serv. v. H&R Block Can. Inc., [1995] 62 C.P.R.3d 257 (F.C.), [hereinafter U & R Tax Service] in determining
access as a necessity for infringement. The court held that "credible evidence of access or causal connection
between the works" constitutes a breach.
n18 Id.
n19 John Gurnsey, Copyright Theft 17 (1995).
n20 Alex Wellington, Patents and Trade Secrets Cases and Materials 16 (North York: Osgoode Hall Law
School, vol. 1, 1999).
n21 Trademarks are not mentioned in the Constitution Act, 1867, as are "Patents of Invention and Discover"
and "Copyrights" (deemed to include design rights). Nevertheless, trademark legislation is considered part of the
"Regulation of Trade and Commerce", which may also support Plant Breeders' Rights legislation, and the
Integrated Circuit Topography Acts, as noted in Vaver, supra note 6, at 17-18.
n22 Patent Act, R.S.C., ch. P-4 (1985) (Can.) [hereinafter the P Act].
n24 P Act, supra note 22, § 27(1.5).
n25 An "art" has been defined as "an act or series of acts performed by some physical agent upon some
physical object and producing in such object some change either of character or of condition." See Lawson v.
Canada, 62 C.P.R. 101, 109 (1970). This definition included processes and methods, however excludes things
like methods of cross examination, advocacy, or tax avoidance, building designs and land subdivision schemes,
and medical or surgical treatments, as noted in Vaver, supra note 6, at 122.
n26 A "process" is considered a systematic series of interdependent actions or steps for some useful result
but excludes a machine, things or result.
n27 A "machine" includes apparatus of interrelated parts with separate functions and devices that modify
force or motion and that on its own or in combination with other elements achieves a useful end.
n28 By "manufacture," the patent law in Canada refers to a product made manually or by an industrial
process, by changing the character or condition of material objects and therefore is similar with "machine" and
"composition of matter."
n29 "Composition of matter" simply refers to any composite article or substance produced from two or
more substances.
n30 "Invention" defined. P Act, supra note 22, § 2.
n31 Vaver, supra note 6, at 127-31.
n32 Jennifer Mills, Note & Comment: Alternative Dispute Resolution in Intellectual Property Disputes, 11
Ohio St. J on Disp. Resol. 227, 231 (1996).
n33 P Act, supra note 22, § 28.3.
n34 James Gillialand Jr., Alternative IP Resolution, available at http://www.ipmag.com/agilled.html.
n35 L. Nader & H. Todd, The Disputing Process - Law in Ten Societies 13-14 (1978) noted in William F.
Heinze, Patent Mediation: the Forgotten Alternative in Dispute Resolution, 18 AIPLA Q.J. 333, 339 (1991).
n36 Id. at 340.
n37 Stephen D. York, Practical ADR 10 (London: FT Law & Tax, 1996).
n38 "Mediation has been used for thousands of years. In ancient China, mediation was the principal means
of resolving disputes. The Confucian view was that moral persuasion and agreement, rather than sovereign
coercion, achieved optimum resolution of a dispute. It was the duty of every citizen to avoid court proceedings,
which are viewed as harmful to the natural social order. It is for this reason that the Chinese and other Asian
cultures have considered litigation as the last resort, which involves a loss of face." Jay Folberg & Alison Taylor,
Mediation: A Comprehensive Guide to Resolving Conflicts Without Litigation 7 (1984).
n39 Id. at 7.
n40 Norman A. Ross, You Be the Judge: The Complete Canadian Guide to Resolving Legal Disputes Out of
Court 31 (Toronto: John Wiley & Sons Canada, Ltd, 1997).
n41 Heinze, supra note 35, at 341.
n42 Aside from the four mentioned dispute resolution mechanism there are other ADR methods. These
methods are:
Mini-trial is a formalized settlement conference where representatives of disputants make short
presentations to a panel of at least one member of each party and usually a neutral advisor. The process is similar
to the court process, however the outcome is not binding unless and until a settlement agreement is executed. Id.
at 137-38.
Early neutral evaluation involves an evaluator, experienced, or has specialized training in the substantive
area in issue, and conducts a brief, confidential, nonbinding session early in the litigation to hear both sides of
the case. The evaluator identifies the main issues in dispute, explores the possibility of settlement and assesses
the merits of the claims. Id. at 138.
Summary jury trial is a non-binding, informal settlement process in which real jurors hear abbreviated case
presentation, typically lasting one or two days. A judge or other neutral officer presides over the hearing, but
generally there are no witnesses and the rules of evidence are relaxed. Settlement-authorized client
representatives are required to attend the trial. After the trial, the jurors retire to deliberate and then deliver an
advisory verdict, which becomes a bench-point for settlement negotiations among the clients and lawyers with
assistance from the judicial officer if requested. Id. at 139.
Mediation/Arbitration (Med/Arb) commences as the mediation by a third party, and if the mediation does
not successfully resolve the dispute, the third party assumes the role of the arbitrator and imposes a decision
upon the parties. Id. at 139.
See Hon. Mr. Justice George W. Adams & Naomi L. Bussin, Alternative Dispute Resolution and Canadian
Courts: A Time for Change, 17 Advoc. Q. at 135-41 (1995). See also Robert A. Baruch Bush, Dispute Resolution
-- The Domestic Arena: A Survey of methods, Applications, and Critical Issues, in Beyond Confrontation:
Learning Conflict Resolution in the Post-Cold War Era 10-11, 1995); York, supra note 37, at 1019.
n44 Vilhelm Aubert, Law as a Way of Resolving Conflicts, in Law in Culture and Society 181-82 (Laura
Nader ed., 1969) (citing Jane Banefield, Law and Society).
n45 Donald Gifford, A Context-Based Theory of Strategy Selection in Legal Negotiation, 46 Ohio St. L.J.
41, 42 (1985).
n46 Id. at 42.
n47 See id. Gifford outlines these three main negotiation strategies.
n48 Hon. Fred Kaufman, C.M., Q.C., The Pros and Cons of Arbitration, 10 Canadian Intell. Prop. Rev. 597
(1993).
n49 It is also worth noting that section 2 of the Federal Arbitration Act makes a written contract to arbitrate
valid, irrevocable, and enforceable -- except when the contract as a whole may be rescinded. The courts have
interpreted the grounds for rescinding an arbitration clause to include only general contract defenses such as
fraud, undue influence, or overwhelming bargaining position. As noted in Sobieraj & Anderson, supra note 2, at
114-15.
n50 Heinze, supra note 35, at 338 (citing Statement on Signing the Patent and Trademark Office
Appropriation Bill, 18 Weekly Comp. Press. Doc. 36 (Aug. 28, 1982)).
n51 Rule of Civil Procedure, R.R.O., Reg. 194, § 24.1.01 (1990) (Ont.).
n52 See Federal Court Rules SOR/98-106, § § 382-86. A court may order a proceeding, or any issue in a
proceeding, be referred to a dispute resolution conference, to be conducted in accordance with Federal Court
Rules SOR/98-106, § § 387-89.
n53 Aubert, supra note 44, at 181-82.
n54 Adams & Bussin, supra note 42, at 143.
n55 Stephen Bottomly, Neil Gunnigham, & Stephen Parker, Law in Context 87-88 (Annadale, N.S.W.,
1994).
n56 "When negotiators bargain over positions they tend to lock themselves in those positions... As more
attention is paid to positions, less attention is devoted to meeting the underlying concerns of the parties...
Bargaining over positions creates incentives that stall settlements... Positional bargaining becomes a contest of
will." R. Fisher & W. Ury, Getting to Yes: Negotiation Agreement Without Giving In 45 (Penguin, 1981).
n57 Adams & Bussin, supra note 42, at 143 (citing Hon. Mr. Justice George W. Adams, Negotiation: Why
Do We Do It Like We Do? (Industrial Relations Centre, Queens University, 1992)).
n58 Id. at 143.
n59 Susan L. Carpenter & W. J. D. Kennedy, Managing Public Disputes, a Practical Guide to Handling
Conflict and Reaching Agreements 11 (Jossey-Bass Publishers, 1988).
n60 Gareth Morgan, Images of Organization 23 (Sage, 1986).
n61 Id. at 25.
n62 Id. at 27.
n63 Id. at 29-30.
n64 Aubert, supra note 44, at 283.
n65 Morgan, supra note 60, at 39-40.
n66 Id. at 41.
n67 Fisher & Ury, supra note 56.
n68 Aubert, supra note 44, at 286.
n69 Julie MacFarlane, The Mediation Alternative, in Rethinking Disputes: The Mediation Alternative 5
(Julie Macfarlane, ed., Emond Montgomery, 1997).
n70 Gifford, supra note 45, at 41.

n71 Id. at 48.
n72 Michael Meltsner & Philip G. Schrag, Negotiating Tactics for Legal Services Lawyers, 7
Clearinghouse Rev. 259, 259-63 (1973).
n73 In full, the Latin maxim reads: "Caveat emptor, qui ignorare non debuit quod jus alienum emit," which
means: "Let a purchaser, who ought not be ignorant of the amount and nature of the interest (to be acquired),
exercise proper caution." Walter H. Hamilton, The Ancient Maxim Caveat Emptor, 40 Yale L.J. 1133, 1165
(1931).
n74 According to some scholars, the English courts first applied the doctrine of caveat emptor to the sale of
real property; a sixteenth-century seller conveyed the premises "as is," unless an express contract provision
provided otherwise. See Jean C. Love, Landlords' Liability for Defective Premises: Caveat Lessee, Negligence,
or Strict Liability? Wis. L. Rev. 19, 20 (1975). Other scholars claim that caveat emptor is often traced to 16th
Century decisions involving the sale of chattels (see Hamilton, supra note 73, at 1160-64. The phrase itself first
appeared in a text containing advice on horse trading published in 1534. Id. at 1164. Kevin M. Teeven, A History
of the Anglo-American Common Law of Contract 136 (1990), as noted in Alan M. Weinberger, Let the Buyer
Be Well Informed? - Doubting The Demise of Caveat Emptor, 55 Md. L. Rev. 387, 391 (1996) "if he be tame and
have been ridden upon, then caveat emptor." Alan Weinberger believes that caveat emptor's "earliest appearance
in the common law courts may have been in reaction to an upsurge in itinerant merchants. The doctrine alerted
buyers of the likelihood that their sellers would not be available to respond to customer complaints." Other
academics purport that the doctrine of caveat emptor originated much earlier in primitive Roman Law (see A.
Rogerson, Implied Warranty Against Latent Defects in Roman and English Law, in Studies in the Roman Law of
Sale 112, 113 (David Daube ed., 1959); William L. Burdick, Principles of Roman Law 445 (1938)).
n75 Weinberger, supra note 74, at 392, n.40.
n76 Id. at 392.
n77 Leonard Greenhalgh analyzed the "winning" as a masculine metaphor when describing negotiations.
Greenhalgh explained that "sports metaphors seem far more prevalent among males than among females. This
can be traced to the fact that competitive games play a more prominent role in the early development and
socialization of boys than they do in girls. More specifically, he argued that boys typically are taught to play
games in which the objective is to defeat their opponents and then gloat about the victory, or ridicule the
playmates who have lost. Meanwhile, girls have been taught to play games that are relationship-oriented
("Barbie and Ken" doll games or "house"). When they do participate in competitive games, girls are taught to
end the game or change the rules if it becomes apparent that the game has stopped being fun for their playmates
who are not doing so well. In other words, Greenhalgh argued that girls are taught to play games that preserve
and enhance the relationship, while boys are taught to preserve and enhance their feelings of self-worth at the
expense of the relationship." In the end, Greenhalgh argued that as a result of this socialization, "men have a
general tendency to think in terms of competing and therefore rely heavily on win-lose metaphors, while
women, have a general tendency to think in terms of preserving and enhancing relationships, and win-lose
metaphors are less salient to them." See Leonard Greenhalgh, The Case Against Winning in Negotiations, 3
Negotiation J. 167, 169 (1987).
n79 Steven Elleman, Problems in Patent Litigation: Mandatory Mediation May Provide Settlements and
Solutions, 12 Ohio St. J. on Disp. Resol. 759, 774 (1997).
n80 York, supra note 37, at 117.
n81 See id. at 20-21.
n82 B. McKinney, A Critical Analysis of Transformative Mediation, 29 Peace Res. 42, (1997).
n83 M. B. E. Clarkson, Values: Moving from the Old Paradigm to the New, in Learning Works: Searching
for Organizational Futures 18 (S. Wright & D. Morley ed., Toronto: the ABL Group, 1989).
n84 R. A. Baruch Bush & J. P. Folger, The Promise of Mediation, Responding to Conflict Through
Empowerment and Recognition 89 (San Francisco: JosseyBass Publishers, 1994).
n85 These were the responses of dispute resolution professionals who answered a questionnaire. (See
Network: Interaction for Conflict Resolution, Dispute Resolution in Canada: A Survey of Activities and
Services, Research Section, Department of Justice Canada 41-42).
n86 D. Morley, Frameworks for Organizational Change: Towards Action Learning in Global Environments,
in Learning Works: Searching for Organizational Future 166 (Toronto: The ABL Group, 1989).
n87 Id.
n88 Id. at 167.
n89 Peyton Young, Negotiation Analysis 16-17 (Ann Arbor: The University of Michigan Press).
n90 Singer & Lewis, Mediation Training Manual 3-6 (Center for Dispute Settlement, 1987), as noted in
Heinze, supra note 35, at 343-44.
n91 Susan L. Carpenter & W. J. D. Kennedy, Managing Public Disputes, A Practical Guide to Handling
Conflict and Reaching Agreements 11 (San Francisco: Jossey-Bass Publishers, 1988).
n92 [1996] F.S.R. 629 (C.A.) [hereinafter Lancashire].
n93 Id. at 679.
n94 C Act, supra note 7, § 3.
n95 See supra note 15, at 115 citing Slumber-Magic Adjustable Bed Co. v. Sleep-King Adjustable Bed Co.,
[1984] 3 C.P.R.3d 81, 115 (B.C.S.C.), where the plaintiff won a claim against the defendant, for substantially
reproducing his brochure for business purposes. The court found by comparison that the brochures were
identical -- the arrangement, pictures, slogans and lay-out were the same, except for "a few, relatively minor,
variations." As such, Justice McLaughlin asserted that the defendant had misappropriated the plaintiff's work.
n96 [1995] 62 C.P.R.3d 268 (Fed. T.D.) [hereinafter U & R]. In U & R, the plaintiff successfully mounted
an action for copyright infringement against the defendant who copied an income tax form that he had
independently created. The court held that the defendant reproduced a "substantial part" qualitatively similar to
the original form. Moreover, Justice Richard believed that the defendant, a competitor in the plaintiff's field of
tax education, had "ample access to the plaintiff's work."
n97 Id.
n98 L. Stearns, Copy Wrong: Plagiarism, Process, Property, and the Law, 80 Cal. L. Rev. 513, 516 (1992).
n99 C Act, supra note 7, § 34(1) provides that the general entitled remedies subject to infringement are "...
by way of injunction, damages, accounts, delivery up and otherwise that are or may be conferred by law for the
infringement of a right." Further, § 35 stipulates (1) the liability for infringement and (2) the proof of profits.
n100 Fisher & Ury, supra note 56, at 32.
n101 Scott H. Blackmand & Rebecca M. McNeill, Alternative Dispute Resolution in Commercial
Intellectual Property Disputes, 47 Am. U.L. Rev. 1709, 1716 (1998).
n102 L. Fuller, Mediation -- Its Forms and Functions, 44 S. Cal. L. Rev. 305, 308 (1971).
n103 Elleman, supra note 79, at 772.
n105 Edwin Armstrong was involved in a conflict with RCA over his rights to the invention of the radio.
There was a protracted period of complex legal dealings. Armstrong committed suicide during the proceedings.
His widow eventually won the patents suits on his behalf. Paul Heckel, in Debunking the Software Patent Myths
says that the denial of his rights and the strongarm tactics adopted by RCA and their lawyers "caused the great
inventor to kill himself," cited in Peter Ludlow, High Noon on the Electronic Frontier: Conceptual Issues in
Cyberspace (MIT press, 1996). The case is also covered in Tom Lewis, Empire of the Air (Harper Collin, 1991)
as cited in Wellington, supra note 20, at 12.
n106 Wellington, supra note 20, at 12.
n107 Sorbieraj & Anderson, supra note 2 at 112.
n108 Adams & Bussin, supra note 42, at 135-41.
n109 Elleman, supra note 79, at 762-63.
n110 Id. at 773.
n111 Muskat, Alternative to Court Litigation in Intellectual Property Disputes: Binding Arbitration and/or
Mediation -- Patent and Non patent Issues, 22 Idea 271, 281, as noted in Heinze, supra note 35, at 345.
n112 Singer & Lewis, supra note 90, at 3.

n113 Sobieraj & Anderson, supra note 2, at 112.
n114 York, supra note 37, at 19-20.
n115 The Law is an Entrepreneur: Lawyers React to Recession by Becoming More Innovative, 12 Profit:
The Magazine for Canadian Entrepreneurs 8 (June 1993).
n116 Carrie Menkel-Meadow, Whose Dispute is it Anyway?: A Philosophical and Democratic Defense of
Settlement (In Some Cases), 83 Geo. L.J. 2663, 2688-89 (1995).
n117 Kritzner & Anderson, The Arbitration Alternative: A Comparative Analysis of Case Processing Time,
Disposition Mode, and Cost in the American Arbitration Association and the Courts, 8 Just. Sys. J. 6 (1983) as
cited in Heinze, supra note 35, at 342.
n119 Paul Emond, Alternative Dispute Resolution: A Conceptual Overview, Comm. Disp. Resol. 6 (1989)
as noted in Adams & Bussin, supra note 42, at 142.
n120 Lecture by Adjunct Professor Brunsvold at the George Washington University National Law Center, in
Washington, D.C. Jan. 17, 1991 as cited in Heinze, supra note 35, at 344-45.
n121 Hill, Conference on Rules of Institutional Arbitration and Mediation 137 (WIPO, 1995) as noted in
Patrick Nutzi, Intellectual Property Arbitration, 4 Eur. Intell. Prop. Rev. 192, 193 (1997).
n123 Id. at 763.
n124 Id. at 761.
n125 Id. at 763.
n126 Gillialand, supra note 34.
n127 Although this example is modified to illustrate a particular point, it is modelled in a real case: Tedesco
v. Bosa [1992] 45 C.P.R.3d 82, 10 O.R.3d 779 (Ont. Gen. Div.). In this case, Peter Bosa, an Italian-Canadian
Senator, wanted to publish a book on Italians' contributions to Canada. Bosa had arranged to have the book
written for the Canadian Italian Historical Society. Bosa and the society arranged a contract with a freelance
journalist, Theresa Tedesco, to write the book. The contract stated that once Tedesco submitted a final draft, the
draft and its copyright would belong to the society. However, if the book were not published within two years,
the draft would be returned to Tedesco.
During the process of writing, Tedesco submitted a final chapter to Bosa. This chapter was not to the
senator's liking. As a result of this conflict, the society kept the manuscript and refused to return it to Tedesco.
Although two years had passed since the contract had been formed, the society maintained that the twoyear
period did not begin until a final draft was submitted. Since this was obviously not a final draft, the society kept
all rights to the book.
Tedesco sued and the judge ruled in her favour. In his argument, he stated that by the society's prevention of
the creation of the final draft, the society had in fact indemnified the contract. As a result, the society was
ordered to return the book to Tedeso who was also awarded the sum of $ 10,000 in damages.
n128 A typical timetable of an ADR session lasts between four and six weeks (see York, supra note 37, at
20):
Weeks 1-2: Agree on ADR and approach neutral or appointing body.
Weeks 3-4: Brief neutral, arrange venue and exchange information in preparation for ADR session.
Weeks 5-6: First ADR session lasting one day (process may continue if matter is not settled).
n129 Retired judges have been involved in settling corporate disputes for about $ 300.00 an hour or $ 2,000-
$ 2,500 for a full day. Want to Save Court Costs: Rent a Judge, 64 Can. Bus. 17 (Dec. 1991). In New York and
California, there are "Rent-a Judge" schemes where the parties can request the court to appoint a referee, often a
retired judge, who after an informal process delivers a judgment, which can be enforced by the courts. See York,
supra note 37, at 15.
n132 P Act, supra note 22, § 2.
n133 Nutzi, supra note 121, at 193.
n134 Scott H. Blackmand & Rebecca M. McNeill, Alternative Dispute Resolution in Commercial
Intellectual Property Disputes, 47 Am. U.L. Rev. 1709, 1716 (1998).
n135 Linda Singer, Settling Disputes 69 (2d ed., Westview Press, 1992).
n137 Blonder-Tongue Lab. Inc. v. University of Ill. Found., 402 U.S. 313, 331 (1971) as noted in Elleman,
n139 Id. at 113.
n141 See Margaret E. Anderson, Intellectual Property Mediations: Special Techniques for a Special Field, 3
Tx. Intell. Prop. L.J. 23, 24, (1994) as cited in Elleman, supra note 79, at 774-75.

n143 Casey Lide, ADR and Cyberspace: The Role of Alternative Dispute Resolution in Online Commerce,
Intellectual Property and Defamation, 12 Ohio St. J. on Disp. Resol. 200-01 (1996).
n144 Id. at 216.
n145 Karl P. Kilb, Arbitration of Patent Disputes: An Important Option in the Age of Information
Technology, 4 Fordham Intell. Prop. Media & Ent. L.J. 599, 599 (1993) as cited in Lide, supra note 143, at 209.
n146 Nutzi, supra note 121, at 193.
n148 David Vaver, What is a Trade Secret?, Trade Secrets 13 (Roger T. Hughes ed., Toronto: L.S.U.C.,
1990).
n149 Gillialand, supra note 34.
n150 There has been severe doubt whether, as a general legal principle, international commercial arbitration
for example, is confidential. See Nutzi, supra note 121, at 193.
n152 Carmen Collar Fernandez & Jerry Spolter, International Intellectual Property Dispute Resolution: Is
Mediation a Sleeping Giant?, 53 Disp. Resol. J. 62, 63 (Aug. 1998).
n153 For a detailed account of the IBM-Fujitsu dispute, which highlights some of the different countries'
philosophies on IP, namely United States and Japan, see Joseph L. Badaracco, Jr., The IBM-Fujitsu Conundrum,
in W. Michael Hoffman, Judith Brown Kamm, Rober E. Frederick, & Edward S. Petry, Jr., Emerging Global
Business Ethics 79-88 (Westport: Quorum Books, 1994).
n154 C. Braga, The North-South Debate on Intellectual Property Rights, in Global Piracy and Intellectual
Property 173, 176 (M. Smith ed., Halifax: The Institute for Research on Public Policy, 1991).
n155 Id.
n156 Id.
n157 See Initial Report to the Implementation of the International Covenant on Economic, Social and
Cultural Rights, art. 16-17 (Jan. 5, 1994) (Republic of Korea), symbol: E/1990/5/Add.19 for a detailed report on
Korea's protection of copyright. For China, see: http://psirus.sfsu.edu/IntRel/IRJournal/ sp95/zokaei.html.
n158 Id.
n159 Braga, supra note 154.

n160 See Initial Reports to the Implementation of the International Covenant on Economic, Social and
Cultural Rights, art. 16-17 (Sept. 25, 1995) (Zimbabwe), symbol: E/1990/5/Add.28.
n161 Id.
n162 For a general overview of GATT, see GATT and the Goods Counsel at
http://www.wto.org/english/tratope/gatte/gatte.html.
n163 Craig Karpe, Towards a Unifying Law: International Copyright Conventions, the GATT TRIPs
Agreement and related EC regulations, 5 Information & Comm. Tech. L. 95, 97 (1996).
n164 See generally, C. Levy, The United States Perspective on Intellectual Property and the GATT, in
Global Piracy & Intellectual Property, 167 (G. Smith ed., Halifax: The Institute for Research & Public Policy,
1991).
n166 Some sites that offer these services include: The Virtual Magistrate, http://vmag.vcilp.org, directed by
Robert Gellman and a joint venture of the Cyberspace Law Institute, the American Arbitration Association
(AAA), the Villanova Center for Information Law and Policy and several online service providers and public
interest groups. The project is funded by the National Center for Automated Information Research (NCAIR), a
New York-based law and technology research foundation; and the Online Ombuds Office,
http://www.ombuds.org/.
n167 Lide, supra note 143, at 218.
n168 Michael Ryan who conducted a detailed study of the WIPO, found it to possess "distinctive
organizational characteristics of climate and culture that have encouraged learning and adaptation." Its process is
both top-down and bottom-up and offers a flat organizational structure with staff members who are a part of
"transnational professional communities, share world views, communicate through institutionalized internal
mechanisms, are characterized by orientation toward achievement, and are motivated." Further, the WIPO seems
to be addressing the changing realities of intellectual property as related to trade, in a manner that does not
succumb to the sweeping fashion of TRIPS. See M. Ryan, Knowledge Diplomacy: Global Competition and the
Politics of Intellectual Property 16 (Washington: Brookings Institution, 1998).
n169 Fernandez & Spolter, supra note 152, at 67.
n170 See for example, T. Bingham, Judgement Ways, Building, November 10, 1992, at 40-41; Norman
Royce, Conciliation in Business Disputes: Has it a Future? 5 Construction L.J. 3456 (1989); N. Goddard,
Arbitration or Litigation? Arbitration, Nov. 1991, at 265-69; F. Miller, Another Blunder Hits the Statute Books,
142 New L.J. 1421-22 (1992); as cited in Penny Brooker, The 'Juridification' of Alternative Dispute Resolution,
1 Anglo-Am. L. Rev. 4, n.13.
n171 See, Lucy. V. Katz, Compulsory Alternative Dispute Resolution and Voluntarism: Two-Headed
Monster or Two Sides of the Coin? 1 J. Disp. Resol. 21, n.157 (1993).
n172 Emond, Alternative Dispute Resolution: A Conceptual Overview, Commercial Dispute Resolution 9
(1998).
n173 G. Sander & Rogers, Dispute Resolution 137 (2d ed., 1992).
n175 Rule of Civil Procedure, R.R.O., Reg. 194, § 24.1 (1990) (Ont.).
n176 Norman Maclnnes, Mandatory ADR in Ontario only Months Away, Law. Wkly., May 29, 1998 at 11.
Also see Charles Kent, Court Changes Bring ADR into Intellectual Property Regime, Law. Wkly., May 29,
1998, at 18.
n178 Id. at 145.
n179 Id. at 150.
n180 Frank E. A. Sander, Dispute Resolution Within and Outside the Courts: An Overview of the U.S.
Experience, in Attorney General and New Methods of Dispute Resolution 19-21 (Cochrane ed., 1990). See Katz,
n181 Id.
n182 Id.
n183 The interrelationship among the courts, the rule of law, and dispute resolution were underlined by the
Supreme Court of Canada in the following passage from the decision of the Honorable Mr. Justice Cory in
Edmonton J. v. Alberta, [1989] 64 D.L.R.4th 577:
There can be no doubt that the courts play an important role in any democratic society. They are the forum
not only for the resolution of disputes among citizens, but among citizens and the state in all its manifestations.
The more complex society becomes, the more critical the courts' functions become. It is precisely this
fundamental public function of the courts that makes ADR within the courts so crucial (as noted in Adams &
Busssin, supra note 42, at 134).
n184 Webber, supra note 1, at 186.
n185 Id.
n186 Id.
n188 "Juridification" is used to describe the monopolization of the legal field by legal professionals. See J.
Flood & A. Caiger, Lawyers and Arbitration: The Juridification of Construction Disputes, 56 MOD. L. REV. 412,
412-40 (1993), who cites Pierre Bourdieu, The Force of Law: Towards a Sociology of the Juridical Field, 38
Hastings L.J. 805-53 (1987).
n189 See Penny Brooker, supra note 170, at 1, who analyzes the development of ADR in the U.K.
construction industry and how it is being dominated by legal profession, resulting in hat she calls the
'juridification' of ADR.
n190 R. A. Baruch Bush & J. P. Folger, The Promise of Mediation, Responding to Conflict Through
Empowerment and Recognition 26 (San Francisco: JosseyBass Publishers, 1994). Some of the people that the
authors associate with "The Satisfaction Story" are: Fisher and Ury, 1981; Fisher and Brown, 1989; Suskind and
Cruikshank, 1987; including judges another justice system officials, Chief Justice Warren Burger (1982) and
other judicial leaders.
n191 Id. at 27. The authors argue that The Transformation Story of the mediation movement is not widely
told in the published literature of the field. The few who present this view include practitioners such as Albie
Davis, 1989 and academics such as Leonard Riskin and Carrie Menkel-Meadow.
n192 Id. at 20.
n193 Id. at 20-21.
n194 C. Costantino & C. S. Merchant, Designing Conflict Management Systems: A Guide to Creating
Productive and Healthy Organizations 52 (San Francisco: Jossey-Bass, 1966).
n195 Tracey Tyler, Judge blames lawyers' behaviour for low confidence in legal system, The Toronto Star,
Oct. 30, 1999, at A2.
n196 Katz, supra note 171, at 6.
n197 It is worth noting that a lot of my thoughts on "machine mediation" stem from my experiences as a
mediator in the Small Claims Court in North York, Ontario. I found the judges to be very pro settlement,
constantly framing the conflicts in terms of "rights;" one judge in particular insisted that we read the files of the
cases we were to mediate in order to spot the legal issues. While this may have been my experience with a few
select judges, the experience as a whole reinforced my belief that working with a rights-based mentality,
focusing on settlement, will likely lead to "machine mediation."
n198 Courts will require a party to engage "actively.., in the bargaining process with an open mind and a
sincere desire to reach an agreement." ( Detroit Police Officers Ass'n v. Detroit, 214 N.W.2d 803, 808 (Mich.
1974), and in another case the litigants were required to have "honesty of purpose, and freedom from intention to
defraud" ( Efron v. Kalmanovitz, 57 Cal. Rptr. 248, 251 (Ct. App. 1967) as noted in York, supra note 35, at 21.
n199 Singer, supra note 135, at 222.
n200 Leon Jaroff, Intellectual Chain Gang: Convicted of Stealing His Own Ideas and Notebooks, an
Idealistic Young Scientist Sits in Jail, Time, Oct. 28, 1996, at 70.
n201 Id.
n202 Id.
n203 Id.
n204 Taborsky was sentenced to 3 1/2 years and his wife, exhausted by the legal battles, left him. Taborsky
admits: "I decided that the case was more important than our marriage." Id. at 70.
n205 Jaroff, supra note 200, at 70.
n206 Katz, supra note 171, at 47.
n208 The authors of the study found that there was a high rate of plaintiffs' awards, and a very high (twenty-
five percent) appeal rate. The reason was that defendants tended to improve their position at trial de novo, even
when the plaintiff continued to prevail. See D. L. Mettrick, The Benefits of Research for Management; The Case
of Civil Arbitration Programs, 9 Just. Sys. J. 111-14 as noted in Katz, supra note 171, at 47-48 (1984).
n209 Fernandez & Spolter, supra note 152, at 64.
n211 A study by the Society of Professionals in Dispute Resolution recommends caution in adopting
mandatory mediation and recommends that mandatory mediation programs pay greater attention to historically
disadvantaged groups. See Society of Professionals in Dispute Resolution, Mandated Participation and Dispute
Resolution as it Relates to the Courts 1 (1991), as noted in Katz, supra note 171, at 52-53.
n212 L. E. Susskind, E. F. Babbitt, & P. N. Segal, When ADR Becomes the Law: A Review of Federal
Practice, 9 Negotiation J. 59 (1993).
n214 Id.
n215 Id. at 125.

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Copyright (c) 2007 The John Marshall School of Law

6 J. Marshall Rev. Intell. Prop. L. 365

LENGTH: 3487 words

NAME: WENDY LEVENSON DEAN*

BIO: Copyright © 2007 The John Marshall Law School

[*369] 2. Flexible and creative resolutions

n1 I AN EDITOR'S TREASURY: A CONTINUING ANTHOLOGY OF PROSE, VERSE, AND

n16 See Yeend & Rincon, supra note 8, at 604.

n18 James Pooley, Successful Mediation of Intellectual Property Disputes, IPFRONTLINE.COM,

n20 See McConnaughay supra note 4, at 5.

n21 Yeend & Ricon, supra note 7, at 606.

n24 See Yeend & Ricon, supra note 7, at 605.

n25 Guidelines, supra note 5, at 1.

n27 Id. at 1-2.

n31 Guidelines, supra note 5, at 1.

n35 See Guidelines, supra note 5, at 3.

n39 Id. at 2-3.

n44 Pooley, supra note 18.

Copyright (c) 1996 Ohio State Journal on Dispute Resolution

11 Ohio St. J. on Disp. Resol. 227

LENGTH: 7453 words

NAME: Jennifer Mills

[*228] will likely lead to more equitable results. n7

As two forums have emerged to deal with multilateral treaties in the

n5 WIPO, supra note 3.

n6 Tom Arnold et al., Patent ADR Handbook § 5.02 (1991).

n8 WIPO, supra note 3.

n10 WIPO, supra note 3.

n12 35 U.S.C. § 294 (1988).

n20 Luxman, supra note 19, at 44-46.

n21 WIPO, supra note 3.

n24 Arnold, supra note 6, at § 5.01.

n27 Arnold, supra note 6, § 5.03.

n29 Arnold, supra note 6, § 5.05.

n31 ADR, supra note 25, at 1.

n33 ADR, supra note 25, at 1.

n36 GATT, supra note 15, annex. to art. VI.

n37 Coopers & Lybrand: EC Commentaries, Dec. 22, 1994, § 14.1.

n38 Hill, supra note 9, at 17.

n43 Hill, supra note 9, at 17.

n50 Leaffer, supra note 48, at 301.

n52 Id. at 906.

n53 GATT, supra note 15, annex. 2, art. XIX, § 1.

n55 Daniel, supra note 51, at 907.

n56 Leaffer, supra note 48, at 301.

n57 Id. at 302.

n59 Leaffer, supra note 48, at 301.

n62 WIPO, supra note 3.

n66 Id. at 40-48.

n67 Id. at 23-28.

n68 Id. at 35.

n71 Rules, supra note 69m at 74-75 (1994).

n73 WIPO, supra note 65, at 49.

n74 Center, supra note 72.

n75 Giunta & Shang, supra note 49, at 334.

n77 Giunta & Shang, supra note 49, at 335.

n78 Leaffer, supra note 48, at 294.

n82 Leaffer, supra note 48, at 303.

n83 Changing World, supra note 79, at 3.