ON

Intellectual Property
Rights
I NTRODUCTI ON
What Is Intellectual Property? ............................................................................................... 2
I. I NTERNATI ONAL PERSPECTI VES
Why Protecting Intellectual Property Rights Matters ................................................... 10
A Short Guide to International IPR Treaties ..................................................................... 16
Intellectual Property Training and Technical Assistance Programs .......................... 26
Jordan Benefts From Intellectual Property Reforms...................................................... 28
A Message From Jackie Chan: “Fakes Cost More”........................................................... 31
Taking Action: How Countries Are Fighting IPR Crime.............................................. 32
e U.S. Approach: Traditional Knowledge, Genetic Resources, and Folklore ........ 40
I I. LAWS I N EVOLUTI ON
e Challenge of Copyright in the Digital Age................................................................ 50
What Is “Fair Use”? ................................................................................................................ 59
e Importance of the Public Domain............................................................................... 60
Roundtable: Enforcement, a Priority for All Countries................................................. 62
New Tools for Fighting Optical Disc Piracy ..................................................................... 70
I I I. I SSUES BY I NDUSTRY
A Trade Association at Work ............................................................................................... 74
Intellectual Property Rights and the Pharmaceutical Industry.................................... 78
e Cost of Developing a New Drug .................................................................................. 82
Malaria: Partnering to Find a Cure.................................................................................... 84
Protecting Trademarks on the Internet ............................................................................. 86
I V. SOURCES
Glossary of IP Terms.............................................................................................................. 90
Sources of Information on IP.............................................................................................. 100
Additional Readings on IP................................................................................................... 104
Kids’ Corner: Educational Materials for Children and Young Adults........................ 107
ON
Intellectual Property Rights
T A B L E O F C O N T E N T S
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What Is
Intellectual
By Thomas G. Field Jr.
THE BOTTOM LINE
T
um and Coca-Cola,” perhaps the
best-known Calypso song of all
time, became a big hit for the Andrews
Sisters in the 1940s. It also sparked a fa-
mous U.S. court case brought to establish
the authorship of Trinidad musician Lionel
Belasco, who had written the song several de-
cades earlier under the title “L’Année Passée.”
e lawyer acting for the man who published
Belasco’s original score proved to the court
that “Rum and Coca-Cola” was the Creole
musician’s work and no one else’s.
Belasco won recognition for his creation
and also received compensation for the
unauthorized use of his work because the
United States has laws that protect the intel-
lectual property of talented individuals like
him and enforces those laws against those
who would violate them. If his publisher had
sued in a country with weak or non-existent
protections, Belasco’s search for recognition
and compensation would not have had a
happy ending.
WHAT IS INTELLECTUAL PROPERTY?
·
hy do countries such as the
United States, Japan, and The
Netherlands protect inventions; literary and
artistic works; and symbols, images, names,
and designs used in commerce: the informa-
tion and original expressions of creative indi-
viduals known as intellectual property (IP)?
They do so because they know safeguard-
ing these property rights fosters economic
growth, provides incentives for technologi-
cal innovation, and attracts investment that
will create new jobs and opportunities for all
their citizens. The World Bank’s Global Eco-
nomic Prospects Report for 2002 confirmed
the growing importance of intellectual prop-
erty for today’s globalized economies, find-
ing that “across the range of income levels,
intellectual property rights (IPR) are associ-
ated with greater trade and foreign direct in-
vestment flows, which in turn translate into
faster rates of economic growth.”
In the United States alone, for example,
studies in the past decade have estimated
that over 50 percent of U.S. exports now de-
pend on some form of intellectual property
protection, compared to less then 10 percent
50 years ago.
Intellectually or artistically gifted people
have the right to prevent the unauthorized
use or sale of their creations, just the same
as owners of physical property, such as cars,
buildings, and stores. Yet, compared to mak-
ers of chairs, refrigerators, and other tan-
gible goods, people whose work is essentially
intangible face more dif culties in earning
a living if their claim to their creations is
not respected. Artists, authors, inventors,
and others unable to rely on locks and fences
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to protect their work turn to IP rights to
keep others from harvesting the fruits of
their labor.
Beyond making it possible for innovators
and artists to be compensated fairly and for
countries to attract foreign investment and
technology, intellectual property protection
is critical to consumers. Most advances in
transportation, communications, agricul-
ture, and health care would not exist without
strong IP support.
Increased recognition and support of
intellectual property also has much to do
with the rapidly rising standards of living
in countries like China and India. Just a few
years ago, India was losing
the battle to retain the
best and the brightest of
its engineers and com-
puter scientists. e lack
of protection for their intellectual property
was forcing those scientists and technicians
to emigrate to countries where their hard
work could be protected and kept safe from
unfair exploitation by competitors seeking
easy advantages. e Indian Parliament
fnally passed a law in 1999 to protect the
intellectual creations of its computer sci-
entists. e result: a burgeoning high-tech
industry producing some of the world’s
Left, the cover for the
original sheet music
for “Rum and Coca-
Cola,” before Lionel
Belasco’s publisher
won his lawsuit.
Below, intellectual
property symbols in
the United States:
copyright (
©
),
registered trademark
(
®
), and trademark
(

).
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most advanced software and employing
thousands of workers who might otherwise
have left India for more lucrative parts of
the world.
KEY FORMS OF INTELLECTUAL
PROPERTY
(
he key forms of intellectual property
are patents, copyrights, trademarks,
and trade secrets. Because intellectual prop-
erty shares many of the characteristics of
real and personal property, associated rights
permit intellectual property to be treated as
an asset that can be bought, sold, licensed,
or even given away at no cost. IP laws enable
owners, inventors, and creators to protect
their property from unauthorized uses.
Copyright
Copyright is a legal term describing the
economic rights given to creators of liter-
ary and artistic works, including the right to
reproduce the work, to make copies, and to
perform or display the work publicly. Copy-
rights ofer essentially the only protection
for music, flms, novels, poems, architecture,
and other works of cultural value. As artists
and creators have developed new forms of
expression, these categories have expanded
to include them. Computer programs and
sound recordings are now protected, too.
Copyrights also endure much longer than
some other forms of IP. e Berne Conven-
tion, the 1886 international agreement under
which signatory states recognize each other’s
copyrighted works, mandates that the period
of copyright protection cover the life of the
author plus 50 years. Under the Berne Con-
vention, literary, artistic, and other qualify-
ing works are protected by copyright as soon
as they exist. No formal registration is need-
ed to protect them in the countries party to
that convention.
However, the Berne Convention permits
copyright to be conditioned, as it is in the
United States, upon a work having been
created in fxed form. Also, many countries
have national copyright centers to admin-
ister their copyright systems. In the United
States, for example, the Constitution gives
Congress the power to enact laws establish-
ing a system of copyright, and this system
is administered by the Library of Congress’
Copyright Of ce.
e U.S. Copyright Of ce serves as a place
where claims to copyright are registered and
where documents relating to copyright may
be recorded when the requirements of the
U.S. copyright law are met. For all works,
however — even foreign ones — prompt U.S.
registration confers important remedial ad-
vantages at little cost.
Ready access to those remedies has
spawned enormous U.S. entertainment in-
dustries. According to the 2004 edition of
Copyright Industries in the U.S. Economy,
by Stephen Siwek, the “core” U.S. copyright
industries accounted for 6 percent of the U.S.
Gross Domestic Product, or $626.2 billion, in
2002. e report defnes “core” copyright in-
dustries as newspapers, book publishing, re-
cording, music, periodicals, motion pictures,
radio and TV broadcasts, and computer
software. In the 2004 report, bookstores and
newsstands were added to “core” industries.
Only an author or those deriving their
rights through the author — a publisher, for
instance — can rightfully claim copyright.
Regardless of who holds them, however,
rights are limited. In the United States, for
example, strangers may reproduce a portion
of works for purposes of scholarship, criti-
cism, news reporting, or teaching. Similar
“fair use” provisions exist in other countries,
too. e scope of this exception is discussed
in more detail in the article “What Is ‘Fair
Use’?” on page 59.
Copyright protects arrangements of facts,
but it does not cover newly collected facts as
such. Moreover, copyright does not protect
new ideas and processes; they may be pro-
tected, if at all, by patents.
Patents
One might say that a patent is a contract
between society as a whole and an individual
inventor. Under the terms of this social con-
tract, the inventor is given the exclusive right
to prevent others from making, using, and
selling a patented invention for a fxed period
of time — in most countries, for up to 20
years — in return for the inventor’s disclos-
ing the details of the invention to the public.
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A worker hangs a seven-story Spider-Man on the side of
a hotel in Las Vegas, Nevada. Copyright laws protect this
superhero character, although the name Spider-Man™ now is
also a trademark of Marvel Comics.
Chairman of Open Port Technology, Inc., Randy Storch
holds a patent granted to his company for least-cost routing
(LCR) technology. His company says LCR reduces the cost of
routing messages over the Internet.
The works of composers, writers, and choreographers —
such as Martha Graham, the renowned American dancer
— are protected by copyright laws. Here, her company
performs one of her dances, Night Journey.
Legendary blues master B.B. King, left, plays his guitar.
His recorded performances are copyrighted, as is most of
the music he plays.
This newspaper reader in Belgrade, Serbia and
Montenegro, can choose among a large number of
newspapers and magazines, all of which are covered by
the copyright laws of most countries.
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Many products would not exist without
patent protection, especially those that re-
quire substantial investments but, once sold,
can be easily duplicated by competitors. At
least since 1474, when frst granted by the
Republic of Venice, patent protection has en-
couraged the development and distribution
of new technologies.
When patents are not available, technol-
ogy is closely held. If inventors had to rely
on secrecy to protect their inventions, much
important but undisclosed information often
would die with them.
Patents, however, are not easily obtained.
Patent rights are granted not for vague ideas
but for carefully tailored claims. To avoid
protecting technology already available, or
within easy reach of ordinary artisans, those
claims are examined by experts. Because
patent claims vary as much in value as the
technologies they protect, applicants must
negotiate claims of appropriate defensible
scope. (Defensible scope means that appli-
cants must be careful in setting the bound-
aries of what their invention consists of and
what can be protected from infringement
in their invention.) is often takes two or
more years and is expensive.
Trade Secrets
Any information that may be used in the
operation of a business and that is suf ciently
valuable to aford an actual or potential eco-
nomic advantage is considered a trade secret.
Examples of trade secrets can be formulas for
products, such as the formula for Coca-Cola;
compilations of information that provide
a business with a competitive advantage,
such as a database listing customers; and
even advertising strategies and distribution
processes.
Unlike patents, trade secrets are protected
for a theoretically unlimited period of time,
and without any procedural formalities.
Trade secrets, however, tend to escape, and
protection is not free. Under the best of
circumstances, frms must restrict access
to premises and documents, educate key
employees and government inspectors, and
closely monitor publications and trade show
presentations. Although secrecy is expensive
to maintain, large companies rely heavily on
it when patents are not available. e larger
the company, the more it needs legal protec-
tion for its commercial secrets.
Companies that cannot rely on a country’s
courts to help preserve important secrets
must rely on self-help. ey may, for example,
severely limit the number of people with ac-
cess to competitively important information.
More likely, information needed for critical
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Above, the California Institute of Technology makes money out of
patents for the rovers it created for NASA by licensing their image
to toymaker Lego for commercial use. Right, Arizona Cardinals
football team’s running back Marcel Shipp displays his team’s
trademark-protected new logo on a helmet, hat, and feece.
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operations will be shared only if adequate
trade secret protection is available. If not,
few, if any, local employees will be trained
beyond the level necessary to perform essen-
tially unskilled assembly tasks.
Trademarks
Trademarks are commercial source indi-
cators, distinctive signs that identify certain
goods or services produced or provided by
a specifc person or enterprise. In villages,
cobblers’ names used to serve that function.
Trademarks are especially important when
consumers and producers are far away from
one another. Children ask for Barbie dolls,
Lego building blocks, and Hot Wheels toy
cars. Some adults dream of Ferrari automo-
biles, but more can aford to buy Toyota or
Honda brands. ese consumers need trade-
marks to seek or avoid the goods and services
of particular frms.
roughout most of the world, trade-
marks must be registered to be enforceable,
and registrations must be renewed. Yet,
while copyrights and patents eventually
expire, names of companies that treat cus-
tomers well become increasingly valuable
over time. If trademark rights were to expire,
consumers would be collectively harmed as
much as owners. Imagine the confusion if
unaf liated frms could sell products under
another company’s trademark. And consider,
for example, the dubious quality of counter-
feit and fake drugs and their potential for
causing great harm, if not death, to unsus-
pecting users.
Trademark protection is also widespread
in sports, estimated to account for 2.5 per-
cent of world trade. Much support for the
Olympics, for example, derives not from
copyrighted broadcasts, but from merchan-
dising rights protected by trademarks.
At an earlier time, purchasers of prod-
ucts bearing the names or logos of famous
sports teams or events would probably
have assumed no connection, much less an
endorsement of quality between the sports
team and, say, the baseball cap bearing the
team’s symbol. Increasingly, however, con-
sumers assume both. As early as 1993, U.S.
baseball teams alone licensed uses of their
trademarks on $2.5 billion in goods.
Other Forms of Intellectual Property
Within the basic forms of intellectual
property, many variations and special kinds
of protection are possible. Geographical indi-
cations, which identify a good as originating
in a locality where a given quality, reputation,
or other characteristic of the good is essen-
tially attributable to its geographic origin,
are an example. Some countries separately
protect geographical indications for goods
such as French cognac or Scotch whiskey. In
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Above, although the ingredients in these soft drinks
are public knowledge, the “recipes” for making Pepsi
or Coke constitute trade secrets closely held by the
Coca-Cola and Pepsi companies. Left, Barbie dolls,
here dressed as astronauts, have been popular with
young girls for decades. Barbie™ is one of toymaker
Mattel‘s most successful trademarks.
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the United States, geographical indications
are protected with collective marks and cer-
tifcation marks. ey are treated as a subset
of trademarks to prevent consumer confu-
sion, as well as to protect business interests.
Similarly, in the United States, famous ath-
letes and performers are able to license or to
forbid fraudulent or misleading commercial
uses of their names and images. Based on
trademarks or related, still-developing rights
of publicity, well-known fgures often earn
more from endorsements than from activi-
ties underlying their fame.
Also, the ornamental or aesthetic aspects
of electrical appliances, chairs, and the like
are protected in a variety of ways. Many in-
dustrial designs are protected in the United
States, Japan, and South Korea as design
patents. Other countries — notably in Eu-
rope — ofer copyright-like protection. In the
United States, works having purely aesthetic
appeal, such as jewelry or patterns that may
be applied to fabrics, are protected by copy-
right. Moreover, the United States ofers two
specifc types of statutory protection for new
plant varieties, as well as protection unique
to boat hulls and computer chips. Designs
that serve no purpose other than to indicate
commercial source may be protected under
trademark law.
EMERGING IP ISSUES: DOMAIN NAMES
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he need for new forms of IP some-
times arises, and the assignment of
Internet addresses has posed particularly
difficult issues. Like telephone numbers,
Internet addresses have the basic form
“123.456.123.” If that were the end of it, there
would be no problem.
Because useful directories are so far un-
available, however, most addresses also have
an alphanumeric form such as “BBC.uk”,
“BBC.com”, or “yale.edu”. e unique part
of each (“BBC” or “Yale”) is registered as a
“domain name.” Just as postal addresses
indicate unique physical locations, do-
main names indicate unique locations in
“cyberspace.”
Various entities control the registration,
renewal, and transfer of domain names
depending on the fnal portion of any al-
phanumeric address. Addresses ending with
country codes “fr” or “uk” are subject to the
laws of France and the United Kingdom,
respectively. ose ending with “edu” are
controlled, under agreement with the U.S.
Department of Commerce, by Educause, a
non-proft U.S. organization. ose ending
with “com” and a few other terms have a
global reach. ey are governed by rules es-
tablished by the Internet Corporation for As-
signed Names and Numbers (ICANN), also
under agreement with the U.S. Department
of Commerce.
Because domain names often comprise
celebrities’ or companies’ names, trade-
marks, and the like, few people regard them
as merely addresses. In the early days of the
Internet, individuals quick to understand
this registered many “.com” domain names
for sale at hefty premiums. For example, a
tourist agency registered “Barcelona.com” as
its domain name, a move denounced by the
Spanish city of Barcelona, which went on to
Bangalore Bio 2005, a three-day biotechnology trade show
featuring discoveries by Indian scientists and business
opportunities. India’s increased support of IPR has helped
lift the country’s living standards.
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establish its superior claim to that domain
name. Holders of domain names intending
to suggest unauthorized af liations were
condemned as “cybersquatters.” Procedures
were soon established to prevent misleading
registrations or have ownership transferred
to others with superior claims of legitimacy.
Under the most favorable circumstances,
however, time and money must be spent to
have a domain name transferred. Also, many
addresses may falsely suggest sponsorship
by the same person or frm. Experience has
shown that cancelling them is insuf cient if
others can then re-register. But maintaining
registrations of possibly hundreds of spuri-
ous addresses is a major waste of money.
Such problems have been alleviated by
imposing signifcant civil and criminal pen-
alties on cybersquatters. Still, some remain
beyond reach, and further measures will be
needed to halt activities that often mislead
computer users throughout the world.
IP MATTERS, VERY MUCH

lthough the first international
treaties protecting intellectual
property rights — the Paris Convention for
the Protection of Industrial Property and
the Berne Convention for the Protection of
Literary and Artistic Works — were reached
in the 1880s, coordination across countries
for IPR protection remained inadequate until
recently.
Intellectual property rights were frst in-
cluded in the Uruguay Round negotiations of
the General Agreement on Tarifs and Trade
(GATT), 1986-1993, with the Agreement
on Trade-Related Aspects of Intellectual
Property Rights (TRIPS). TRIPS requires
signatories to make it easier for their citizens
and others to obtain and enforce IP rights,
although it does not deal with domain names
as such.
TRIPS member countries should be aware
that if their IP laws seem, on paper, to support
innovation and protect IP, but in practice do
not, they generate little besides cynicism.
Conversely, cost-efective means to secure,
transfer, and enforce IP rights boost cultural
development and standards of living, as well
as promote public health and safety.
Although efective IP enforcement serves
important economic ends, it also promotes
a variety of other common social goals. By
providing the opportunity for pharmaceu-
tical companies to recoup investments in
research, enforcement of IP rights can help
eliminate serious health risks. Besides en-
couraging the creation of new technologies,
patent and trademark laws are useful as well
to prevent serious, well-documented harm
posed by counterfeit goods. For example,
those who consciously palm of medical
products under false labels are apt to be
unconcerned about whether their goods are
worthless or toxic to unsuspecting users.
Local cultures are also at stake. Works by
local artists, authors, musicians, and others
are often supported in ways that are relatively
independent of the need for private risk capi-
tal. Yet, even when that is true, they are often
displaced by the illegal sale of cheap or free
music, movies, and books originating abroad,
works that would cost far more if copyrights
in such works were locally enforced.
People everywhere who are concerned
about cultural growth and preservation, as
well as improved health and economic well-
being, should understand how IP protection
serves those ends. 
Professor Thomas G. Field Jr. helped launch the
Franklin Pierce Law Center in New Hampshire in
1973. He credits much of his general understanding
of intellectual property to students who attend from
abroad. The casebook, Introduction to Intellectual
Property, is among his more recent publications. For
more information, see: http://www.piercelaw.edu/
tfeld/tgf.htm.
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ntellectual property issues are getting
more and more attention these days.
Unfortunately, far too often the issues are
framed in such a way as to highlight con-
troversy and polarize debate. In fact, there is
much about intellectual property protection
on which everyone can agree.
To arrive at a fuller understanding of the
issue, it is worth spending some time consid-
ering how intellectual property rights (IPR)
developed and what role they play in achiev-
ing widely shared objectives. What comes
out of such an examination is the conclusion
that intellectual property protection is a vital
part of social, cultural, and economic devel-
opment. Protection of intellectual property
rights alone will not necessarily bring about
this development. But it is hard to imagine
that a country could ever reach these goals in
the absence of such protection.
COPYRIGHTS AND CULTURE
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e can credit 17th century
England with the concept of a
“copy right,” a law that protects the creative
products of authors, artists, singers, and,
to reflect developments since the 1600s,
filmmakers and software developers. This
concept even has been enshrined in the
U.S. Constitution, whose Article I, Section
8, Clause 8 reads, “the Congress shall have
power . . . to promote the progress of science
and useful arts, by securing for limited times
to authors and inventors the exclusive right
to their respective writings and discoveries.”
e essential idea behind a copyright
is simple: Artists and creators should be
able to enjoy the fruits of their labor for a
specifed time period, after which the mate-
rial becomes available for public use. Society
benefts because this incentive to create will
yield a rich and varied cultural menu for its
citizens. Indeed, one can say that copyright
protection is a necessary ingredient for en-
suring cultural wealth in our societies.
But if copyright protection is important for
reaching cultural objectives, then it is equally
true that the theft of these copyrighted goods
— that is, the pirating of cultural works — is
a threat to the creative sectors in our societ-
ies. Many international institutions, such
as the World Bank, the World Intellectual
Property Organization (WIPO), and even the
United Nations Educational, Scientifc, and
Cultural Organization (UNESCO), recognize
this link. In fact, if you visit UNESCO’s web
site (http://www.unesco.org), you will fnd an
entire section devoted to the issue and a list
of programs and publications that explain the
benefts of copyright to educational, scien-
tifc, and cultural policies and provide help in
fnding ways to fght piracy.
By E. Anthony Wayne
Why Protecting
Intellectual
Property
Rights Matters
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While there has been much press play
recently regarding on-line downloading of
music and movies in developed countries like
the United States, in fact it is in the develop-
ing world that much of the serious damage is
being done. Many new musical voices, new
authors, and new stories on flm around the
world have never been made available, sim-
ply because the incentives were not there for
these artists to take a risk. ey have known
that whatever they produce will be immedi-
ately pirated — stolen — and they will not be
provided the means to develop their talent.
is is not an abstract argument: It has
happened on all continents. A good example
is Hong Kong, where a thriving movie indus-
try was so hurt by rampant piracy that, just
a few years ago, observers were predicting it
would disappear from the flmmaking map.
Today, the industry is in better shape and
moviegoers around the world enjoy new
and exciting releases primarily because
Hong Kong authorities took decisive action
to combat the piracy problem. Studios in
Bangladesh’s “Dhaliwood” movie industry
went on strike in March 2004 to protest the
problem of piracy and demand action by
the government. Similar developments have
taken place in the world of music. Ethiopian
musicians went on a seven-month strike in
2003 to press for better anti-piracy measures
from the government. ese artists all un-
derstood the importance of protecting their
works from pirates.
An illustration by Theodore R. Davis in Harper’s Weekly magazine
(July 10, 1869) shows examiners at work at the U.S. Patent Of ce
in Washington, D.C.
Today’s bicycle manufacturers build on
the patented work of several 19th century
inventors. Here, a tobacco label showing a man
riding a “velocipede,” the French term for a
precursor of the bicycle in the late 18th century.
Policemen display some of the hundreds
of fake works of art they seized in Milan
in 2005, including counterfeit paintings
of renowned Italian artists. Governments
support artists by conducting raids of
counterfeiters’ facilities and destroying
their fake products.
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PATENTS AND INNOVATION
(
atents protect diverse inventions
such as industrial designs, manu-
facturing processes, high-tech products,
and molecular compounds. Like copyrights,
patents were recognized in the U.S. Consti-
tution. The Constitution granted Congress
the powers to promote “the progress of sci-
ence and useful arts” by providing inventors
the limited but exclusive right to their “dis-
coveries.”
e concept of a patent is based on a
trade-of. e inventor or innovator is given
the exclusive right to make or use the inven-
tion for a limited period of time. In exchange,
most countries’ rules require the inventor to
reveal the method behind the invention so
that others may understand and learn from
it. After the exclusive period of time elapses,
anyone can make, use, or sell the invention.
e inventor is granted an economic in-
centive to take risks and create; the public
receives the beneft of the invention, as well
as the inventor’s knowledge for application in
other uses.
Americans have always prided themselves
in being a nation of innovators and inventors,
willing to try something new, whether in in-
dustry or politics. As a result, patents are an
important part of America’s history. While
most American schoolchildren probably do
not know that patents are mentioned in the
U.S. Constitution, many of them do know
from their studies that one of the frst patents
issued was for Eli Whitney’s cotton gin, a ma-
chine that was to have a critical infuence on
America’s subsequent development.
But if this is true for America’s experience,
then it is just as true for other countries, in-
cluding developing ones. Strong intellectual
protection will not only encourage innova-
tion, it will provide the level of confdence in
an economy needed to attract foreign invest-
ment and spur technology transfer. is has
been shown in a number of studies looking
at the relationship between intellectual
property, especially patents, and develop-
ment. For example, a study highlighted in
the World Bank’s Global Economic Prospects
Report 2002 found that “across the range of
income levels, intellectual property rights
are associated with greater trade and foreign
direct investment fows, which in turn trans-
late into faster rates of economic growth.”
Another 2002 World Bank publication,
Development, Trade, and the WTO: A Hand-
book, noted a number of studies which, de-
spite the lack of clear-cut results, did indicate
that stronger patent regimes could: 1) lead to
increased global trade; 2) attract more for-
eign direct investment; 3) lead to increased
licensing of technologies to, and possibly
more local production; and 4) contribute to
higher growth rates.
A good example of this today can be
found in Jordan, where strengthened pat-
ent protection has been linked to tangible
economic benefts (see story on p. 28). e
International Intellectual Property Institute
(IIPI) released a comprehensive report in Au-
gust 2004 that looked at the establishment
of globally competitive pharmaceutical and
biomedical technology industries in Jordan.
e report found that “Jordan’s economy has
benefted greatly from the recent adoption of
better intellectual property protections,” ac-
cording to an IIPI release. e report noted
that the strengthened intellectual property
regime, particularly for patents, “spurred a
new focus on research-based innovation for
Jordanian pharmaceutical companies.”
is was refected in a jump in the health-
service contributions to the Jordanian GDP
from 2.8 percent in 1997 to 3.5 percent in
2001. Employment in the health-services sec-
tor has increased 52 percent since 1997. e
report also found that “the pharmaceutical
industry represents Jordan’s second leading
sector, and from 1999 to 2002, drug exports
from local frms grew by 30 percent.”
TRADEMARKS AND CONSUMER
PROTECTION

trademark is a word, phrase, sym-
bol, or design, or a combination
of words, phrases, symbols, or designs, that
identifies and distinguishes the source of
the goods of one party from those of others.
They thus identify the producer of a product
and serve as an indicator of quality. They also
inform consumers where to seek recourse if
the product fails. Some forms of trademarks
12
13
A patented device
that has brightened
our world: American
inventor Thomas Edison’s
flament lamp (1879),
with the frst practical
lightbulb.
A sketch of Eli Whitney, who invented the cotton gin
and patented it in 1793.
A plate from the catalogue of the 1871 London
International Exhibition shows an Elias Howe
sewing machine, invented in 1845. Howe patented
the machine in the United States in 1846, and was
able to sue other companies for infringement of his
patent rights.
A phony Pokemon card, left, held up next to a real one at Nintendo’s
Redmond, Washington, of ces. To fght counterfeiters, Nintendo is
training customs of cials and police in the United States how to tell the
diference between real and fake cards.
15
Enduring quality:
Visitors to the Great
Wall in China can
still see the original
brick maker’s mark
on some of its
bricks. These marks
were assurances
of quality and
accountability
to the emperors
who ordered the
building of this
cultural wonder.
When consumers buy counterfeit and pirated goods — in
this case, pirated music compact discs (CDs) and movie
digital video discs (DVDs) — they lose the authentic
manufacturers’ assurance of quality and accountability.
Some old packages and containers of Bayer Aspirin, a
well-known brand for this pain reliever. The German
company Bayer was granted a patent for this wonder drug
and launched it on the market in 1899. Aspirin
®
is a Bayer
AG Company registered trademark.
In the United States, copyright protection lasts for the life
of the author plus an additional 70 years for works such as
books and movies created after January 1, 1978.
The frst children’s crayons ever made, in 1903, came from
Crayola
®
, now a registered trademark of Binney & Smith.
14
15
have been around for thousands of years.
Visitors to the Great Wall in China can still
see the original producer’s mark on some of
its bricks. This mark allowed the emperors
of that time to be assured of quality and, if
needed, accountability.
is assurance of quality and account-
ability is completely lost when counterfeiters
illegally use a trademark and deceive con-
sumers with their goods. When many people
think of counterfeit goods, they might bring
to mind items such as fake Rolex watches,
Zippo lighters, or Louis Vuitton handbags.
e counterfeiting of these goods does infict
serious harm on legitimate companies, and
it deprives governments of lost revenues. But
counterfeiting of trademarks has another se-
rious consequence. It can threaten the health
and safety of the public.
e United States is not immune to this
aspect of the counterfeiting epidemic. In
testimony before the U.S. Senate Judiciary
Committee in March 2004, U.S. Assistant
Attorney General Christopher Wray pro-
vided examples of trademark violations. He
noted that, in early 2004, a man from the
state of Alabama pled guilty to 28 counts
of counterfeiting and pesticide misbranding
charges. He sold mislabeled and adulterated
pesticides needed to control mosquitoes and,
indirectly, West Nile virus, to municipalities
and private businesses in a number of U.S.
states. e defendant falsely identifed the
brand name of the pesticide, the manufac-
turer, and the active ingredients. In another
case in 2002, the U.S. Department of Justice
convicted a California man on federal charg-
es involving a conspiracy to sell counterfeit
baby formula. After exposing thousands in
our most vulnerable population to coun-
terfeit baby formula, the defendant fed to
Canada in 1995. He was arrested there in
2001 and in 2002 was brought to the United
States to stand trial.
Counterfeiting is a serious public health
and safety threat in the developing world as
well. One of the more tragic stories comes
from China. In May 2004, the Associated
Press reported from Beijing that 47 people
had been accused of selling fake infant for-
mula, an act that authorities said led to the
deaths of dozens of children. According to
the report, subsequent police raids uncovered
thousands of bags of counterfeit milk powder
with the labels of 45 diferent brands.
Counterfeit pharmaceuticals also have
become a serious and deadly problem around
the globe, especially in the developing world.
No one knows this better than the head
of Nigeria’s National Agency for Food and
Drug Administration and Control, Dorothy
Akunyili. Her story, which was detailed in
a May 2004 front-page article in the Wall
Street Journal, seems to come straight from
an action novel. Unfortunately, it is fact,
not fction. Her work to expose and combat
counterfeit pharmaceuticals has led to as-
sassination attempts against her life and
arson attacks against her facilities. But she
has bravely continued her work, spurred on
in part by the personal experience of losing
her sister, who died because of a counterfeit
insulin injection. She, like many others, has
understood the dangers and threats posed by
counterfeiting.
IP AND SOCIETY
(
here is a common thread that runs
through the above discussion of copy-
rights, patents, and trademarks. Promoting
cultural development, fostering innovation
and growth, and protecting public health
and safety are all commonly held goals. We
all want to live in societies where these values
are cherished and fostered. In the current de-
bate surrounding intellectual property, it is
worth remembering the role of intellectual
property protection in our daily lives.
e United States believes strongly in
the value of protecting intellectual property
rights, for the reasons outlined above and
more, and stands ready to work with others
to promote such protection. 
E. Anthony Wayne is U.S. Assistant Secretary of State
for Economic and Business Afairs.
16
17
S
trong protection for intellectual prop-
erty rights (IPR) worldwide is vital to
the future economic growth and develop-
ment of all countries. Because they create
common rules and regulations, international
IPR treaties, in turn, are essential to achiev-
ing the robust intellectual property protec-
tion that spurs global economic expansion
and the growth of new technologies.
e international community, however,
did not have a single source for intellectual
property obligations and norms until the
1994 Uruguay Round of the General Agree-
ment on Tarifs and Trade created the World
Trade Organization (WTO) and included
the Agreement on Trade-Related Aspects of
Intellectual Property Rights (TRIPS).
e signifcance of the TRIPS Agreement
is three-fold:
1) It is the frst single, truly international
agreement that establishes minimum
standards of protection for several forms
of intellectual property;
2) It is the frst international intellectual
property agreement that mandates de-
tailed civil, criminal, and border enforce-
ment provisions; and
3) It is the frst international intellectual
property agreement that is subject to
binding, enforceable dispute settlement.
TRIPS, in efect, lays the groundwork for
a strong and modern IPR infrastructure
for the world community.
As a strong adherent of the TRIPS Agree-
ment and all other international IPR treaties
discussed below, the U.S. government en-
courages other countries to join and imple-
ment them.
TRIPS
(
he TRIPS Agreement came into force
in 1995, as part of the Agreement
Establishing the World Trade Organization.
TRIPS incorporates and builds upon the
latest versions of the primary intellectual
property agreements administered by the
World Intellectual Property Organization
(WIPO), the Paris Convention for the Pro-
tection of Industrial Property, and the Berne
Convention for the Protection of Literary
and Artistic Works, agreements that go back
to the 1880s.
TRIPS is unique among these IPR accords
because membership in the WTO is a “pack-
age deal,” meaning that WTO members are
not free to pick and choose among agree-
ments. ey are subject to all the WTO’s
multilateral agreements, including TRIPS.
TRIPS applies basic international trade
principles to member states regarding intel-
lectual property, including national treat-
ment and most-favored-nation treatment.
TRIPS establishes minimum standards for
the availability, scope, and use of seven forms
of intellectual property: copyrights, trade-
A Short Guide to
International
IPR Treaties
By Paul E. Salmon
16
17
marks, geographical indications, industrial
designs, patents, layout designs for integrated
circuits, and undisclosed information (trade
secrets). It spells out permissible limitations
and exceptions in order to balance the inter-
ests of intellectual property with interests
in other areas, such as public health and
economic development. (For the complete
text of the TRIPS Agreement, as well as an
explanation of its provisions, see the WTO
web site at http://www.wto.org.)
According to TRIPS, developed countries
were to have implemented the agreement
fully by January 1, 1996. Developing-country
members and members in transition to a
market economy were entitled to delay full
implementation of TRIPS obligations until
January 1, 2000. Least-developed members
were given until January 1, 2006, to imple-
ment their obligations, with the possibility of
further transition upon request. Developing
countries that did not provide patent protec-
tion for particular areas of technology on
their date of application were given an ad-
ditional fve years, until January 1, 2005, to
provide such protection.
At the 2001 WTO Ministerial Confer-
ence in Doha, least-developed countries were
given an additional 10 years to implement
TRIPS patent and “undisclosed information”
provisions as they relate to pharmaceuticals.
Because the TRIPS Agreement is a decade
old, however, it does not address several new
developments, such as the Internet and digi-
tal copyright issues, advanced biotechnology,
and international harmonization, the process
of creating uniform global standards of laws
or practice. It sets the foor for minimum IPR
protection, not the ceiling.
Since the conclusion of the TRIPS Agree-
ment, the World Intellectual Property Or-
ganization has addressed digital copyright
issues in the so-called Internet Treaties,
namely the WIPO Copyright Treaty (WCT)
and the WIPO Performances and Phono-
grams Treaty (WPPT).
What follows are summaries of other
WIPO treaties that complement the TRIPS
Agreement, particularly in addressing new
technological developments. For texts of the
WIPO treaties discussed below, see: http:
//www.wipo.int/.
The home web page for the World
Intellectual Property Organization (WIPO),
the international body for the protection of
IPR and the administering agency for most
international IP agreements.
18
19
TRADEMARK LAW TREATY
(
he Trademark Law Treaty (TLT),
adopted on October 27, 1994, entered
into force on August 1, 1996. Thirty-three
states, including the United States, are party
to the TLT as of July 1, 2005. The TLT was
enacted to simplify procedures in the appli-
cation and registration process and to har-
monize trademark procedures in different
countries. The TLT harmonizes procedures
of national trademark offices by establishing
the maximum requirements a contracting
party can impose.
e TLT gives service marks — the dis-
tinctive identifers of businesses that ofer a
service, as opposed to goods — “equal” status
with trademarks. Previously, many foreign
countries treated trademarks and service
marks diferently. e TLT requires mem-
ber nations to register service marks and
treat them as they would trademarks.
From the trademark owner’s perspec-
tive, the TLT saves time and money in the
preparation and fling of documents for the
application. It streamlines the process for
post-registration renewals, recording assign-
ments, changes of name and address, and
powers of attorney. Member countries to the
TLT are now required to permit the use of
multi-class applications, enabling trademark
owners to fle a single application covering
multiple classes of goods and services.
Another signifcant feature of the TLT
that benefts trademark owners is its prohibi-
tion of requirements by national of ces for
authentication or certifcation of documents
as well as signatures on trademark applica-
tions and correspondence. Many countries
had required that any signatures submitted
in support of registration of a mark be no-
tarized or otherwise legalized in accordance
with the laws of that nation. Under the TLT,
it is no longer necessary in most instances to
go through these procedures. is feature
enables trademark owners to complete and
fle trademark documents more quickly, at
less cost.
An additional advantage of the TLT is
the harmonization of the initial and renewal
terms of trademark registration among sig-
natory countries: e TLT provides for an
initial 10-year term, with 10-year renewals.
Other key features of the TLT include the
introduction of an intent-to-use application
system (with proof of use prior to registra-
tion); streamlined renewal procedures;
minimization of the elements to obtain an
application fling date; and simplifed pro-
cedures for recording changes in name and
ownership of trademark applications and
registrations.
Overall, the TLT is intended to facilitate
international trade: It is of particular impor-
tance to individuals and small businesses
looking for markets in other countries.
Currently, WIPO’s Standing Committee on
Trademarks, Industrial Designs, and Geo-
graphical Indications (SCT) is conducting
negotiations on proposed revisions to the
TLT. is standing committee recommend-
ed that the WIPO General Assembly hold a
diplomatic conference March 13-31, 2006, to
consider adoption of the revised TLT.
PATENT LAW TREATY
(
he Patent Law Treaty (PLT), adopted
by WIPO in June of 2000, entered
into force on April 28, 2005. The PLT is
the product of several years of multilateral
negotiations on harmonizing global patent
systems. The PLT harmonizes certain patent
application procedures in order to reduce or
eliminate formalities and the potential for
loss of rights. The PLT does not harmonize
substantive patent law, that is, the laws of
each country that set forth the conditions
that must be met in order to receive a pat-
ent for an invention in that country. WIPO,
however, is holding discussions regarding
harmonization of substantive patent law.
e PLT will make it easier for patent
applicants and patent owners to obtain and
maintain patents throughout the world by
simplifying and, to a large degree, merging
national and international formal require-
ments associated with patent applications
and patents.
18
19
e PLT:
 simplifes and minimizes patent applica-
tion requirements to obtain a fling date;
 imposes a limit on the formal requirements
that Contracting Parties may impose;
 eases representation requirements for for-
mal matters;
 provides a basis for the electronic fling of
applications;
 provides relief with respect to time limits
that may be imposed by the Of ce of a
Contracting Party and reinstatement of
rights where an applicant or owner has
failed to comply with a time limit and that
failure has the direct consequence of caus-
ing a loss of rights; and
 provides for correction or addition of
priority claims and restoration of priority
rights.
PATENT COOPERATION TREATY SYSTEM
(
he roots of the Patent Cooperation
Treaty (PCT) go back to 1966, when
the Executive Committee of the Paris Con-
vention for the Protection of Intellectual
Property called for a study of how to reduce,
for applicants and patent offices, the duplica-
tion of effort involved in filing and obtaining
patent applications for the same invention
in different countries. The resulting WIPO
treaty, the PCT, was signed in Washington,
D.C., in 1970 and entered into force in 1978.
The treaty was amended in 1979, 1984, 2001,
and 2004. As of September 15, 2005, there
are 128 Contracting Parties to the PCT.
By simplifying patent application fling,
the PCT assists innovators in obtaining pat-
ent protection throughout the world. It also
encourages small businesses and individuals
to seek patent protection abroad.
Under this WIPO-administered treaty,
nationals or residents of a contracting state
fle a single patent application, called an “in-
ternational” application, with their national
patent of ce or with WIPO as a receiving of-
fce. is automatically lodges the application
for patent protection in all 128 Contracting
Parties of the PCT.
e treaty provides a longer period of
time, 30 months, before applicants must
commit themselves to undertake the ex-
penses of translation, national fling fees, and
prosecution in every country in which they
William Hedley developed the system that gave
locomotives with smooth wheels suf cient traction. He
patented this in 1813, the same year he unveiled his famous
steam locomotive, “Puf ng Billy,” here seen outside of
London’s Patent Museum (today’s Science Museum).
Berliner gramophone, 1890.
Emile Berliner patented a form of
recording in which sound waves were
photoengraved on a zinc disc in 1887.
Eventually, his invention became the
basis for the record industry.
The frst Benz motor
car, 1888. The
German imperial
patent 5789 was
granted to Karl
Benz in 1886 for the
design of an “oil
spirit motor tricycle.”
20
want protection. By providing applicants
with more time and information to evaluate
the strength of their potential patent and to
determine marketing plans, the 30-month
period allows applicants to be more selec-
tive as to the countries in which they will
fle. is is a major improvement over the
12-month priority period provided under the
Paris Convention for patent applicants.
Under the PCT, WIPO publishes the
“international application,” together with
a nonbinding indication as to the potential
patentability of the invention. is nonbind-
ing indication is a preliminary search and/or
examination by an “International Authority,”
one of 11 patent of ces designated by WIPO
that currently meet the treaty’s minimum
staf ng and documentation requirements.
e nonbinding indication helps applicants
decide whether to proceed with their patent
applications in national or regional of ces.
Patent of ces also beneft from these non-
binding indications of patentability when de-
ciding whether to grant national or regional
patents based upon PCT applications. For-
eign search reports identify relevant docu-
ments that help patent of ces to conserve
resources in the examination process and to
improve the quality of examination.
MADRID SYSTEM FOR
THE INTERNATIONAL REGISTRATION
OF MARKS
(
he Protocol Relating to the Madrid
Agreement Concerning the Interna-
tional Registration of Marks — the Madrid
Protocol — was adopted in Spain’s capital
on June 27, 1989, and entered into force on
December 1, 1995. The protocol is one of
two treaties comprising the Madrid System
for international registration of trademarks.
The first treaty, the 1891 Madrid Agreement,
provides for the registration of trademarks in
several countries through the filing of one
international trademark registration with
WIPO in Geneva.
e Madrid Protocol, developed because
some countries had problems with the opera-
tion of the Madrid Agreement, is seen as an
improvement to the system for international
registration of trademarks. As a result, more
and more trademark owners are using the
Madrid Protocol every year to protect their
trademarks in foreign countries. As of Sep-
tember 15, 2005, there were 66 contracting
parties to the Madrid Protocol.
e Madrid Protocol is a fling treaty and
not a substantive harmonization treaty. It
provides a cost-efective and ef cient way
for trademark holders — individuals and
businesses — to ensure protection for their
marks in multiple countries through the fl-
ing of one application with a single of ce, in
one language, with one set of fees, in one cur-
rency. Moreover, no local agent is needed to
fle the application. Applications may be fled
in English, French, or Spanish.
An application for international registra-
tion has the same efect as a national applica-
tion for registration of the mark in each of the
countries designated by the applicant. Once
the trademark of ce in a designated country
grants protection, the mark is protected just
as if that of ce had registered it.
e Madrid Protocol also simplifes the
subsequent management of the mark, since
a simple, single procedural step serves to
record subsequent changes in ownership or
in the name or address of the holder with
WIPO’s International Bureau.
Before the protocol was enacted, bur-
densome administrative requirements for
the normal transfer of business assets often
made it dif cult for trademark owners to car-
ry out valid assignments of their marks in-
ternationally. e protocol allows the holder
of an international registration to fle a single
request with a single payment, in order to re-
cord the assignment of a trademark with all
the member countries. Registration renewal
also involves a simple, single procedural step.
International registration lasts 10 years, with
10-year renewal periods.
Trademark owners may designate addi-
tional countries if they decide to seek pro-
tection in more member countries or if new
countries accede to the protocol.
20
Nobel Prize winners Drs. William Shockley (seated), John Bardeen (left), and Walter H. Brattain at the
Bell Telephone Laboratories in 1948. Their invention of the transistor spawned the Information Age and,
ultimately, the need for new or revised IP treaties to deal with issues such as domain names.
A woman looks at Microsoft® products at a shop in Brussels. Thanks to the Madrid Protocol’s improvements
to the system for international registration of trademarks, it is easier for companies like Microsoft to protect
their marks in foreign countries.
21
23
Bakers from Dresden, Germany, have kept the trade secret of the exact components of their Christmas cake for
more than 100 years. Only about 130 bakeries and cake shops in that city are allowed to produce these cakes
with a seal of quality under a registered trademark, “Echter Dresdner Christstollen.”
IPR protections reward the ingenuity of breeders of new
plant varieties.
One of Italy’s culinary delights, Parmesan cheese,
is typical of the products that the TRIPS Agreement
protects under the rubric of geographical indications.
The so-called Internet Treaties — the WIPO Copyright
Treaty and the WIPO Performances and Phonograms
Treaty — address digital copyright issues that cropped
up with the development of the Internet.
22
23
If the basic application — or registration
upon which the international registration is
based — is cancelled for any reason in the
frst fve years, the Madrid Protocol gives
the holder of the international registration
the opportunity to turn the international
registration into a series of national applica-
tions in each designated country. is series
of applications keeps the priority date of the
original international registration in each
country. e holder also preserves the rights
acquired in each member country, even if
international registration fails.
THE HAGUE SYSTEM FOR
THE INTERNATIONAL DEPOSIT
OF INDUSTRIAL DESIGNS
(
he Hague System is an international
registration system that enables own-
ers to obtain protection for their industrial
designs with a minimum of formality and
expense. A single international application
filed with WIPO’s International Bureau
replaces a whole series of applications previ-
ously required in a number of states and/or
intergovernmental organizations party to the
Hague System. The subsequent management
of the international registration is consider-
ably easier under this system. For example,
one single step is all that is needed to record a
change in the name or address of the holder,
or a change in ownership for some or for all
of the designated contracting parties.
e Hague System had 42 contracting
parties as of April 26, 2005.
BUDAPEST TREATY ON
THE INTERNATIONAL RECOGNITION
OF THE DEPOSIT OF MICROORGANISMS
FOR THE PURPOSE OF PATENT
PROCEDURE
(
he Budapest Treaty on the Interna-
tional Recognition of the Deposit of
Microorganisms for the Purpose of Patent
Procedure, signed on April 28, 1977, was
amended on September 26, 1980. The Bu-
dapest Treaty eliminates the need to deposit
microorganisms in each country where pat-
ent protection is sought.
Under the treaty, the deposit of a micro-
organism with an “international depositary
authority” satisfes the deposit requirements
of treaty members’ national patent laws. An
“international depositary authority” is capa-
ble of storing biological material and has es-
tablished procedures that assure compliance
with the Budapest Treaty. Such procedures
include requirements that the deposit will
remain available for the life of the patent and
that samples will be furnished only to those
persons or entities entitled to receive them.
e establishment of “international de-
positary authorities” ofers several advantag-
es to both patent applicants and contracting
states. Patent applicants beneft because the
need to deposit in many countries in which
they seek patent protection is dramatically
reduced. Since a single deposit in any “in-
ternational depositary authority” will satisfy
the national disclosure requirements of any
member state, patent applicants’ costs are
much lower. Using a single authority as a
deposit increases the deposit’s security, and
provides a mechanism of distribution of the
deposit. Contracting states beneft because
they can rely on the treaty’s uniform stan-
dards to assure efective deposit and public
availability. ey no longer need to indepen-
dently establish a ‘recognized’ depositary
to meet national patentability disclosure
requirements.
As of May 2005, there are 60 Patent Of-
fces that abide by the terms of the Budapest
Treaty and 35 “international depositary au-
thorities” in 22 diferent countries.
INTERNATIONAL CONVENTION FOR
THE PROTECTION OF NEW VARIETIES
OF PLANTS
(
he International Convention for
the Protection of New Varieties of
Plants (UPOV) established an internation-
ally recognized intellectual property system
for the protection of new plant varieties. The
UPOV Convention encourages and rewards
the ingenuity and creativeness of breeders
developing new varieties of plants. Anyone
who develops a new variety of plant that may
be disease resistant, drought resistant, cold
tolerant, or simply aesthetically more pleas-
24
25
ing is no less an inventor than someone who
improves an automobile engine or develops
a new medicinal drug. The only difference is
that the plant breeder works with living ma-
terial, rather than inanimate matter.
e process of creating a new plant vari-
ety is often long and expensive. Reproducing
an existing plant variety, however, can be
quick and relatively easy. us, an efective
system of intellectual property protection
needs to reward innovation by permitting
inventors to recover their investment and,
at the same time, disseminate the knowledge
of that innovation for others to improve
upon. e UPOV system establishes basic
legal principles of protection that reward
breeders for their inventiveness by provid-
ing exclusive rights to their plant invention,
while encouraging the development of new
plant varieties.
In 2001, WTO gave least-developed countries
another 10 years to implement TRIPS patent
and “undisclosed information” provisions on
pharmaceuticals. Here, a scientist in a lab conducts
quantitative analysis of medicine tablets.
TRIPS covers seven forms of
IP, including trademarks and
patents. Below, the recently
updated logo for the Zenith
Electronics Corporation. Right,
SniferSTAR, a patented device
from Sandia National Laboratories
in Albuquerque, New Mexico,
intended to detect airborne blister
agents and nerve gases.
24
25
Under the 1991 UPOV system, the most
recently concluded of these, the exclusive
rights granted to the inventor (commonly
referred to as “breeder’s rights”) require that
another party other than the owner of the
breeder’s rights receive the breeder’s autho-
rization to:
 produce or reproduce the protected vari-
ety;
 condition the variety for propagation pur-
poses; and
 ofer to sell or market, import, export, or
to stock the protected variety.
To receive a breeder’s right, a breeder
must invent a plant variety that is new, dis-
tinct, uniform, and stable. Under the UPOV
Convention, however, a plant breeder gener-
ally does not need breeder authorization to
use protected plant varieties for noncom-
mercial or experimental acts or acts done for
the purposes of breeding new plant varieties.
e UPOV Convention also allows each
member nation to restrict the breeder’s right
in relation to any variety to allow farmers
to use part of their harvest for subsequent
plantings in their own land. ese restric-
tions, however, must be within reasonable
limits and subject to the safeguarding of the
legitimate interests of the breeder.
UPOV member states hold biannual meet-
ings of the Council, a permanent body of the
convention. Other UPOV bodies include the
Consultative Committee, the Administrative
and Legal Committee, and the Technical
Committee, made up of several Technical
Working Parties (TWPs) across several ag-
ricultural sectors. e TWPs meet periodi-
cally to share and discuss observations and
advancements in agricultural sectors, which
helps to standardize examination standards
among member states. ese TWP meetings
beneft breeders as well, since more uniform
standards lead to greater consistency of ap-
plication flings in diferent territories.
As of June 29, 2005, there were 59 mem-
ber States to the UPOV Convention. UPOV
membership is expected to continue to in-
crease in the next several years.
For more information on UPOV, see:
http://www.upov.int.
CONCLUSION
1
n the information age, with technol-
ogy advancing at an accelerating rate,
simply implementing the TRIPS Agreement
is not enough to establish a robust intellec-
tual property system. While it was the first
comprehensive IPR agreement of its time, it
is a decade old, and reflects a “snapshot” in
time. Technological advances in information
technology, biotechnology, and other fields
require the updating of national and inter-
national laws that protect IP. Fortunately,
WIPO has led the way in developing new in-
ternational norms to meet these challenges.
WIPO also has led the way in simplifying
and streamlining the procedures for seeking,
obtaining, and maintaining rights in multi-
ple countries. rough its “Global Protection
Services” and its harmonization treaties, it
saves creators and national IP of ces a great
deal of time and efort. WIPO also makes
available its excellent technical assistance
for establishing and improving IPR systems
worldwide. Countries should look to both the
WTO and to WIPO when crafting their IPR
systems. 
Paul E. Salmon is a patent attorney in the U.S. Patent
and Trademark Of ce’s Of ce of International
Relations. Mr. Salmon also served as the Intellectual
Property Attaché in Geneva, Switzerland, where he
represented the U.S. government in meetings of WIPO
and the WTO. He lectures frequently on the subject of
international patent law.
26
27
t
ountries with effective intellectual
property (IP) protection reap the ben-
efit of protecting their own intellectual prop-
erty, as well as creating a positive foreign in-
vestment environment. But many countries
face serious obstacles to IP protection, such
as a lack of IP awareness, inadequate laws,
and ineffective enforcement mechanisms,
and many do not have the resources to ad-
dress these issues.
e U.S. government and U.S.-based IP
private industries provide extensive training
for foreign ofcials and nationals. During
2003 and early 2004, U.S. trainers spon-
sored 295 programs, ranging from optical
disc forensic training in the Philippines to
prosecution and investigation techniques
in Egypt. U.S. government IP training pro-
viders include the Patent and Trademark
Ofce, the Department of Commerce Com-
mercial Law Development Program, the
Department of Justice, the Department of
Homeland Security divisions of Customs
and Border Protection and of Immigration
and Customs Enforcement, and the Library
of Congress’ Copyright Ofce. e U.S. State
Department funds many training programs,
either through the Agency for International
Development (USAID), the Bureau of Inter-
national Narcotics and Law Enforcement,
or the Bureau of Educational and Cultural
Afairs. ese programs include, for exam-
ple, prosecutorial training, led by the Justice
Department, with hands-on instruction on
how to try an IPR case and operational train-
ing by the Department of Homeland Security
to help customs ofcers to better identify and
seize counterfeit goods at ports and border
crossings.
U.S. embassies abroad also provide and
coordinate IP training programs, as well as
public awareness and outreach activities.
e State Department invests signifcant re-
sources to develop the necessary IP expertise
in its ofcer corps overseas, so as to enable
them to support our overall training eforts
in addition to recognizing IP issues and ad-
dressing them through diplomatic channels.
e U.S. private sector is also very ac-
tive. e Recording Industry Association of
America, the Motion Picture Association of
America, the Business Software Alliance,
the Pharmaceutical Research and Manufac-
turers of America, the International Intel-
lectual Property Institute, the International
Anti-Counterfeiting Coalition, and their
member companies and contributors all
provide training worldwide. For instance,
in December 2004, the International Intel-
lectual Property Institute paired with the
U.S. Patent and Trademark Ofce to hold a
three-day seminar in West Africa for over
70 participants, including judges, attorneys,
public health experts, and business people
from Nigeria, e Gambia, Senegal, Ghana,
and Burundi. e participants learned about
By Allison Areias
Training and
Technical Assistance Programs
Intellectual
Property
26
27
the role IP plays in economic development
for West Africa, the problems of counterfeit
medicines in their region, and how IP acts as
a catalyst for the flm and music industries in
their countries.
Training programs focus on all aspects
of IP enforcement, as well as intragovern-
mental coordination and the importance
of strong relationships between the police,
IP of cials, judicial authorities, and rights
holders. Focusing IP enforcement training
eforts on smuggling trends and routes is also
critical, especially for areas where porous
borders facilitate international traf cking in
counterfeit and pirated products. With the
commercialization of the Internet and the
rise of Internet piracy, U.S. trainers also help
countries develop the legislative and enforce-
ment framework necessary to address this
growing problem.
U.S. government and industry training
is catalogued at http://www.training.ipr.gov.
e site includes brief descriptions of the
training programs and contact information
for the training providers. Although many of
these programs are for foreign government
of cials, some are open to the public and of-
fered free of charge.
For more information about IP training,
please contact the Of ce of International
Intellectual Property Enforcement, U.S.
Department of State, at (202) 647-3251, or
at EB/TPP/IPE, Room 3638, 2201 C Street,
Washington, D.C., 20520. 
Allison Areias is a U.S. Foreign Service of cer who
served in the State Department Economic Bureau’s
Of ce of International Intellectual Property
Enforcement.
U.S. trainers recently sponsored an optical disc
forensic training program in the Philippines. Here,
Filipino of cials from the Videogram Regulatory
Board and security forces confscate boxes of
pirated video compact discs from stalls during a
raid in Manila.
Web site for the U.S.
government IPR Training
Programs Database.
28
29
1
ntellectual property rights (IPR) pro-
tection can be a powerful tool for
economic growth. In Jordan, for example,
recent intellectual property reforms have
greatly benefited that country’s economy in
general and its pharmaceutical sector in par-
ticular. Jordan’s pharmaceutical sector has
gained new export markets and has started
to engage in innovative research. New health
sectors, such as contract clinical research,
have emerged, and health-sector employ-
ment has grown.
Jordan joined the World Trade Organi-
zation (WTO) in 2000, becoming its 136th
member. In 2001, it entered the U.S.-Jordan
Free Trade Agreement (FTA), the frst such
agreement between the United States and an
Arab trading partner. rough these agree-
ments, the government of the Hashemite
Kingdom of Jordan continued a process of
comprehensive economic reforms that had
been underway for about a decade. In fact,
Jordan passed several new laws to improve
protection of intellectual property rights
prior to its accession to the WTO. “e
government of Jordan has embarked on an
aggressive program to transform the country
from a dependence on foreign aid to success
in the era of globalized trade. Trade agree-
ments, legal reforms, and a strong IPR pro-
tection regime are all a part of that strategy,”
according to U.S. Embassy Chargé d’Afaires
David Hale in Amman, Jordan.
Laws consistent with the WTO Agree-
ment on Trade-Related Aspects of Intellectu-
al Property Rights (TRIPS) now protect trade
secrets, plant varieties, and semiconductor
chip designs in Jordan. Registration of copy-
rights, patents, and trademarks is required.
Copyrights are registered at the National
Library and patents are registered with the
Registrar of Patents and Trademarks, both
part of Jordan’s Ministry of Industry and
Trade. Jordan has signed the Patent Co-
operation Treaty and the protocol relating
to the Madrid Agreement Concerning the
Registration of Marks, but ratifcation was
still pending in early 2005. Jordan has also
acceded to the World Intellectual Property
Organization (WIPO) treaties on copyrights
(WCT) and performances and phonographs
(WPPT).
Jordan’s pharmaceutical industry abides
by the new TRIPS-consistent patent law. In
addition, with the signing of the U.S.-Jordan
FTA, Jordan committed to even stronger
enforcement of intellectual property rights,
particularly in the pharmaceutical sector.
According to Economic and Trade Of cer
Greg Lawless at the U.S. Embassy in Amman,
intellectual property rights enforcement has
improved in Jordan. “Efective enforcement
mechanisms and legal procedures, still not
completed, are undergoing further refne-
ment,” he said. Although signifcant chal-
lenges remain, Jordan’s enforcement action
Jordan Benefts from
Reforms
By Jeanne Holden
Intellectual
Property
28
29
against audio/video and software piracy is
growing in quantity and improving its capa-
bility to target problem areas, he added.
According to the Pharmaceutical Manu-
facturers Association of America (PhRMA),
the U.S.-Jordan FTA has made Jordan’s
market more appealing for pharmaceutical
research and development, as well as for
sales and licensing agreements. e benefts
of the U.S.-Jordan FTA for industry include
expanded data protection, elimination of ex-
clusions from patentability for biotechnology
inventions, and limitations on compulsory
licensing.
In October 2001, PhRMA established an
of ce in Amman to serve the Middle East
and North Africa region. It was PhRMA’s
frst presence in the region. Jordan’s com-
mitment to free trade and high-standard
business practices were decisive factors in
the decision, according to Susan Finston,
PhRMA’s associate vice president. “Jordan
was the place where in less than 45 business
days we could open an of ce, get credentials,
and have all of the infrastructure and the
legal permits that we needed for business,”
she said.
Many PhRMA members have established
or expanded their commercial activities in
Amman, including American Home Prod-
ucts, AstraZeneca, Sanof-Aventis, Bristol-
Myers Squibb, Eli Lilly, GlaxoSmithKline,
Janssen-Cilag, Merck Sharp & Dohme,
Novartis, Organon, Roche, Pfzer, and Scher-
ing-Plough.
Several PhRMA members are conducting
clinical trials and entering into co-marketing
and/or licensing agreements with Jordanian
companies. According to the International
Intellectual Property Institute (IIPI), a non-
proft economic development organization
and think tank based in Washington, D.C.,
Bristol-Myers Squibb initiated a three-year,
5,000-patient cardiovascular risk factor
study in Jordan in 2001. Moreover, PhRMA
reports that, in 2004 alone, its member com-
panies carried out 19 clinical trials in Jordan
for conditions such as cancer, osteoporosis,
diabetes, and cardiovascular disease.
rough clinical trials, it is hoped that
more innovative pharmaceutical products
will eventually be made available to Jordan’s
citizens. Rapid introduction of new products
would also beneft Jordan’s medical tourism
sector (a term referring to people who travel
to other regions or countries in search of
health-care options). According to a recent
IIPI report, medical tourism represents
two-thirds of total tourism revenues in Jor-
dan. e October 2004 report, Establishing
Globally Competitive Pharmaceutical and
Biotechnology Industries in Jordan, stressed
that clinical trials are enhancing physician
and hospital skills and, in the process, fur-
ther enhancing economic growth in medical
tourism. It said that a recent survey of pa-
tients identifed medical expertise of physi-
cians as the main reason medical tourists
come to Jordan.
Jordan’s leading Hikma pharmaceutical company
was the frst Arab pharmaceutical company to
export one of its products — a non-steroidal anti-
infammatory drug — to the U.S. market.
30
31
IIPI produced the report in partnership
with the Achievement of Market Friendly
Initiatives and Results (AMIR) Program, a
project funded by the U.S. Agency for Inter-
national Development (USAID). According
to the U.S. Embassy in Amman, USAID has
provided signifcant amounts of technical
assistance to the Jordanian public and pri-
vate sectors in support of intellectual prop-
erty rights improvements during the past
fve years, including assistance in crafting
laws and regulations.
At the request of the government of Jor-
dan, USAID also is providing technical assis-
tance to improve the regulatory environment
for patents and trademarks. USAID contin-
ues to support Jordan’s implementation and
enforcement of the new intellectual property
laws by working with the Jordan Intellectual
Property Association (JIPA). JIPA is hosting
training programs for the National Library,
customs authorities, and the private sector.
“e adoption of stronger intellectual
property protection is helping to transform
Jordan into the leading knowledge economy
in the region,” the IIPI report concluded.
Growth in Jordan’s pharmaceutical and
biomedical technology industries has been
strong since the implementation of a stronger
intellectual property regime, it says. Health-
service contributions to the Jordanian gross
domestic product (GDP) grew from 2.8
percent in 1997 to 3.5 percent in 2001, and
health-services employment has grown 52
percent since 1997, the report said.
e international research-based pharma-
ceutical industry has greatly increased direct
employment in Jordan since 2000, according
to the IIPI report. Pfzer said it doubled the
number of its local employees. Sanof-Aven-
tis and Novartis tripled their local labor
forces, and Merck increased its employment
in Jordan by 500 percent. e IIPI report said
this growing multinational presence contrib-
utes added value to Jordan’s society through
activities such as marketing and distribution,
sales-force training, and educating health-
care professionals and the public. Merck, for
example, held some 75 educational programs
and academic meetings in Jordan in 2004.
e IIPI report found that Jordan’s generic
pharmaceutical companies also benefted
from stronger intellectual property laws,
with drug exports from local Jordanian frms
growing 30 percent from 1999 to 2002. Jor-
dan’s exports in pharmaceuticals in 2004 will
top U.S. $200 million, according to estimates
provided by the U.S. Embassy in Amman.
When combined with domestic output, total
production by pharmaceutical frms easily
will be over U.S. $300 million. “is repre-
sents a signifcant improvement over 2003, a
year in which economic growth was afected
by regional conficts,” Lawless said.
Jordan’s experience suggests that intel-
lectual property rights protection can be a
powerful tool for economic growth. “Market
size, population, geography: None of these
is destiny,” declared Susan Finston. “Destiny
resides in the political will of governments to
take up the important challenge of economic
reform.” 
Jeanne Holden is a free-lance writer with expertise in
economics and IP issues. She worked as a writer-editor
in the U.S. Information Agency for 17 years.
30
31
“Fakes Cost More”
Jackie Chan, one of the most famous names in martial
arts and action movies worldwide, in his newest role: the
scourge of counterfeiters everywhere. At the launch of the
“Fakes Cost More” campaign in Hong Kong on June 2, 2005,
Chan showed his disdain for counterfeit goods by chain
sawing a fake goods store and stripping a mock consumer
of all his copied clothes and shoes. The next stops in the
campaign will be Europe and the United States.
A Message from JACKIE CHAN:
t
ounterfeiting is a major growth indus-
try, with a global market valued at U.S.
$500 billion. Industry sources estimate the
worldwide production of counterfeit products
to have soared 1,700 percent over the last 10
years. But the most surprising aspect of this
growth is not in the numbers themselves, but
the wide variety of industries that have become
hotbeds for fakes.
ese days, counterfeiting has moved well
beyond DVDs — including those of movies
I’ve made — and handbags. Fake products are
becoming popular in industries such as food,
medicine, toys, even cars and planes. is is
enough to cause a threat to our safety, and re-
ally quite terrifying to think about it!
I was horrifed to discover the existence
of fake milk powder. Everyone knows just
how fragile babies are, and they need to be
protected. ese criminals even use fake milk
powder to exploit the public to boost their own
gain: Selling fake milk powder whilst buying
the real milk powder at home. When these
people are caught they really need to be pun-
ished heavily and made an example of for such
terrible crimes.
is is why I am taking part in “Fakes Cost
More,” a global campaign organized by the
International Trademark Association (INTA),
in hopes of raising awareness around the world
in regards to the level of counterfeit goods
infltration and the danger this poses to all so-
cieties. You can do your part, too, by refusing
to buy fakes — because they do cost more, for
all of us.
32
PERFORMING ARTISTS GROUP WINS IN
BELGIAN COURT

Brussels court ruled against an
Internet service provider (ISP) in a
lawsuit brought by SABAM, a Belgian group
responsible for collecting royalties due per-
forming artists. SABAM claims that this is
the first such successful judgment of its kind
in Europe. The November 30, 2004, ruling
requires that Tiscali, a small but popular ISP,
block certain net services that permit Inter-
net web surfers to download music protected
by copyright. The judge did not fault Tiscali
management for the activity of its site users,
but did find that Tiscali had an obligation to
halt such infractions of copyright.
SABAM says its goal is to turn of the
peer-to-peer trading of data from users’
hard drives when on line, a system used by
popular sites to facilitate music downloads.
Defenders of the Internet users and music
traders claim that compliance with the judg-
ment is technically impossible. ey liken
it to asking for an interdiction of CD writer
technology because it could be misused for
pirating copies of music. Sources at Universal
Music in Brussels, one company that has suf-
fered heavily from Internet piracy, assert that
the screening technology does exist, and that
ISP companies could flter transmissions
made over their systems.
Universal Music estimates that up to 85
percent of the blank recordable digital media
sold in Belgium is used for downloads of pro-
tected intellectual property, be it music, vid-
eos, movies, or software. e Belgian Anti-
Piracy Federation, supported by the Motion
Picture Association of America, estimates
that 250,000 protected movies or videos are
downloaded daily in Belgium.
BURKINA FASO TARGETS
COPYRIGHT PIRACY
J
urkina Faso, which has a vibrant
and significant local music in-
dustry under assault by cut-rate imported
pirated music products, is fighting back. In
the fall of 2004, the Ministry of Culture,
Arts, and Tourism and the Copyrights Of-
fice kicked off a three-day meeting to discuss
anti-piracy strategies against the more than
10 million pirated cassettes that enter the
country each year, 80 percent of them from
neighboring countries. The meeting ended
with the incineration of 17,000 pirated cas-
settes and CDs seized by the Copyrights Of-
fice and the Gendarmerie in Ouagadougou
and Bobo-Dioulasso.
Before reporters covering the meet-
ing, Mahamoudou Ouedraogo, minister of
culture, arts, and tourism, called piracy “a
cancer” for Burkina Faso and insisted that
pirates should be prosecuted for their crimes.
 :
Fighting
How Countries Are
IPR Crime
32
A percussionist from Burkina Faso performs at
the Saint Louis Jazz Festival in northern Senegal.
Burkina Faso’s vibrant music industry is sufering
from an onslaught of cut-rate imported pirated
music products.
Pirated compact discs are fooding many countries’ markets,
hurting local and international artists. These are confscated
CDs at Pakistan’s Federal Investigation Agency in Karachi.
South Korea’s pop band, Shinhwa, performing in Japan. Seoul
amended its Copyright Act so as to stem a drastic slide in its
music industry’s revenues.
33
35
34
People shop for music, movies, and other goods at a bazaar
in New Delhi. A New Delhi court issued a warrant in August
2005 that gives police broad powers to search for and seize
pirated movies in any part of the city.
More than one million pirated CDs and DVDs were
confscated and then destroyed in this September
15, 2005, anti-piracy crackdown in Jakarta,
Indonesia.
Tallinn, Estonia: The Estonian Organization for Copyright
Protection is partnering with other groups to teach the
younger generation about the importance of IPR.
34
35
e director general of the government’s Of-
fce for the Rights of Authors, in turn, out-
lined Burkina Faso’s anti-piracy strategy. e
strategy will include setting up an indepen-
dent anti-piracy organization; issuing a com-
mon policy with the neighboring countries
to secure the borders against pirated goods;
setting up a subregional court in charge of
copyrights; providing intellectual property
rights (IPR) training to judges, gendarmes,
police, and customs agents; and pressing
criminal charges against pirates and sellers
of pirated goods, of which there are an esti-
mated 100,000 in Burkina Faso. e majority
of these sellers are street hawkers.
SUPPORTING IPR THROUGH IMPROVED
GOVERNMENTNGO COOPERATION
IN ESTONIA
c
stonia’s Police Board and its Customs
and Tax Board signed a cooperative
agreement on December 27, 2004, that al-
lows them to improve Estonia’s IPR regime
through the exchange of information on op-
erations, investigations, and procedures. Both
boards also are working more closely with
the country’s leading IPR nongovernmental
organization (NGO), the Estonian Organi-
zation for Copyright Protection (EOCP), in
gathering information and securing evidence
on specific cases of IPR infringement.
EOCP and other Estonian NGOs also
work independently to teach the younger
generation about the importance of IPR. Ac-
cording to EOCP’s managing director, Ilmar
Harg, Internet piracy is a more worrisome
problem than pirated CDs in Estonia, with
an average of 50 web sites closed each month
because of pirated content. In November of
2004, the NGO organized a media campaign
in Estonia’s leading newspapers explaining
the criminal nature of IPR infringement
on the Internet. e campaign materials
reported that, beginning in 2005, the Esto-
nian Police will step up its investigations and
prosecutions of Internet piracy, and noted
that the Estonian penal code calls for up to
three years of imprisonment for those found
guilty of Internet piracy.
e Estonian Computer Club, another
local NGO that boasts about 4,500 members,
is using a U.S. Embassy grant to organize
several IPR-related seminars and Local Area
Network (LAN) parties for young computer
users. e seminars will be held in coopera-
tion with EOCP and the Business Software
Alliance.
IN INDIA, A LAW FIRM COMBATS PIRACY
WITH NEW STRATEGY
(
he Mumbai-based law firm of Krish-
na & Saurastri’s new strategy for
combating copyright infringement in India is
to use the legal system to inconvenience the
pirated material manufacturer through per-
sistent search-and-seizure tactics and with
recurrent civil and criminal litigation.
According to Sunil Krishna of Krishna &
Saurastri, their strategy combats violations
in the pharmaceutical, software, audio, and
music industries. Owing to what Krishna
describes as “the reluctance of local police
to pursue” complaints about counterfeited
goods, his frm now has turned to the “Anton
Pillar” order along with other means to fght
piracy. e “Anton Pillar” order allows for
the appointment of court receivers to search
and seize suspected counterfeit property for
custodial purposes without any prior notif-
cation to the alleged perpetrator. e court
also orders the police to provide protection
to the receiver of the goods. Krishna claims
that this method has proved extremely suc-
cessful with pirated software.
After the seizure, Krishna says, he can
obtain an injunction against the alleged per-
petrator. is will prevent additional manu-
facturing and/or trading of the counterfeit
products. Violating the court injunction is
punishable by a minimum of six months to
a maximum of three years’ imprisonment.
Krishna argues that this sentence serves
as a deterrent against future counterfeiting
operations.
e attorney cites two cases where both
civil and criminal statutes were used in
successfully eradicating a spurious pharma-
ceutical product. Krishna said this process
is time-consuming, and involves fling hun-
dreds of cases against the manufacturers of
36
37
the fake goods. Convinced that it is a suc-
cessful strategy “guaranteed” to make the
manufacturer or trader of illegal goods close
up shop permanently, Krishna says that the
cost for this approach is less than 5 percent
of the legitimate turnover of the company
whose goods are being copied.
Krishna believes the government of In-
dia could make a few changes that would
make his job easier. He favors the continual
education of law enforcement of cers about
piracy. He recommends that Indian Customs
be empowered to destroy counterfeit goods,
something they cannot do now. He also
suggests that pirated goods coming into or
going out of India could be prosecuted un-
der the Conservation of Foreign Exchange
and Prevention of Smuggling Activities Act.
e act allows for a one-year imprisonment
without bail for the illegal import or export
of any good.
OPTICAL DISC REGULATIONS NOW LAW
IN INDONESIA
(
ormer Indonesian President
Megawati Soekarnoputri signed
Indonesia’s first-ever optical disc regulations
on October 5, 2004. The long-awaited regu-
lations require producers to register their
production facilities, maintain and report
production records, and open their factories
to unannounced police and/or civil service
investigators, among other measures. Then
Minister of Industry and Trade Rini Soe-
wandi signed the accompanying implement-
ing ministerial regulations on October 19,
her last day in office. In anticipation of a deci-
sion by incoming President Susilo Bambang
Yudhoyono to split the Ministry of Industry
and Trade into two separate ministries, Soe-
wandi issued two separate implementing
regulations, dividing issues and responsibili-
ties between the two future ministries.
According to a local Indonesian Motion
Picture Association consultant, who worked
with Indonesian of cials in drafting the new
regulations, these will require existing and
future companies with optical disc produc-
tion facilities to:
 Register each of their production facilities,
the production capacity at each facility,
and manager names at each facility with
the Ministry of Industry.
 Hang company signs outside factories in a
manner that makes them clearly visible to
the public.
 Use and have in their possession only
those production molds that are engraved
with government-approved source identi-
fcation codes (SID).
 Keep records of orders, the quantity of
polycarbonate (the material used to make
discs) purchased, numbers of disc copies
produced, samples of each batch of discs
produced, and copyright agreements.
 Register with an internationally accredited
organization that issues SID codes, such as
the International Federation of the Phono-
graphic Industry (IFPI).
e regulations provide for the possibility
of administrative sanctions, specifcally the
removal of a producer’s registration. Since
the optical disc regulations fall under Indo-
nesia’s copyright law, they call for criminal
penalties of up to fve years’ imprisonment.
ese new regulations went into efect on
April 18, 2005.
PARAGUAY: USE OF LAWS,
ENFORCEMENT TO PROTECT IPR
(
araguay moved forcefully in 2004
with legislation and enforcement
actions that strengthen IPR protection. For
instance, the government worked with the
private sector and supported the introduc-
tion of two draft laws that increase penalties
in criminal cases of IPR violations, one law
for copyright piracy and the other for coun-
terfeiting. The draft laws increase penalties
to five years or more, avoiding provisions for
crimes with lower penalties that provide the
option of paying a fine in lieu of jail time.
Paraguay’s Specialized Technical Unit,
designed to act as an intelligence and inter-
agency coordination unit for IPR enforce-
ment, became part of the Ministry of Indus-
try and Commerce, and gained a stronger
focus on copyright piracy and falsifcation.
is unit has participated in a signifcant
number of enforcing actions, often in coop-
36
eration with private sector groups. Reviews
of company registration data following
increased cooperation (including data shar-
ing) between the ministry and the Customs
Service led to the closure of 56 importing
companies and the cancellation of 73 import
licenses.
A report prepared by the ministry in Feb-
ruary 2005 states that between December
2003 through January 2004, for instance,
action by the Paraguayan authorities re-
sulted in: 11 million virgin CDs confscated;
1,600 CD burners confscated; fve cigarette
factories raided that were suspected of pro-
ducing counterfeit cigarettes; three printers
raided that were producing cartons and
labels for counterfeit cigarettes; four ware-
houses raided where counterfeit cigarettes
were stored; 15 operations resulting in the
seizure of various counterfeit products, such
as watches, toys, and cell phones; raids of 10
TV cable operator companies engaged in
piracy of cable signals; two raids in Market
4 in Asunción, with 11 stores raided and the
confscation of thousands of pirated CDs and
DVDs; and the investigation of fve major or-
ganized crime groups that imported CDs for
sound-recording piracy.
e ministry reached agreement in Au-
gust 2004 with Fox Sports Latin America
to cooperate in ending the theft of Fox’s
programming, among the most popular in
Paraguay. e frst such agreement signed by
Fox in Latin America, it allows Fox and the
ministry to use the powers of the country’s
communications regulator (CONATEL) to
revoke the licenses of companies providing
pirated cable signals, a more ef cient method
than relying solely on the courts. Since the
agreement was reached, at least four cable
TV providers have reached accords with Fox
and stopped pirating the signals.
SOUTH KOREA: BRINGING SOUND
RECORDING PROTECTION ON
THE INTERNET INTO THE PUBLIC EYE
S
outh Korean media headlines in Janu-
ary 2005 on the government’s new
action to protect sound recordings grabbed
the attention of the Korean public. A drastic
slide in revenues over the last three years for
the music industry in South Korea, including
both domestic and foreign rights holders,
prompted the government to push through
amendments to the country’s Copyright Act
that require prior permission from rights
holders before anyone can download music
from the Internet. In an effort to protect the
“cultural future” of Korea — especially the
37
Paraguayan workers unload boxes containing smuggled CDs
confscated during a police action in Asunción, Paraguay.
A can of authentic Tsingtao beer (right), from
China, displayed beside two similar products
marketed in Taiwan. A dispute over alleged
piracy erupted when the manufacturer of the
product on the left, under a cooperation accord
with Tsingtao, argued that the bottle in the
center was violating his trademark.
38
39
“Korea wave” of popular music, TV dramas,
and films that permeates Asia — the govern-
ment has been very aggressively raising pub-
lic consciousness about the new rules.
e Ministry of Culture and Tourism
posted information on its web site to inform
and educate the public regarding the practi-
cal consequences of the new amendments,
which went into efect January 17. e web
site unequivocally states that only perform-
ers and phonogram producers themselves
can transmit their performance or phono-
grams over the Internet or other networks. If
the general public, the users, want to trans-
mit phonograms over the Internet, they must
seek prior permission from the rights hold-
ers. e site lists acts now illegal in Korea,
including uploading music fles and other
copyrighted works onto web sites, mini-
homepages, Internet cafes, or blogs, and
uploading music fles with the purpose of fle
sharing to closed web sites, mini-homepages,
Internet cafes, or blogs. e government’s
campaign seems to be bearing fruit: Record-
ing companies report that they already have
received inquiries from some of the smaller
on-line music services asking for a meeting
to discuss contract details.
Taiwan pop singer
“Black” shows of
his anti-piracy
badge.
Taiwan’s former Premier Yu Shyi-
Kun holds a model of a compact
disc as he attends an anti-piracy
protest in Taipei. The protesters
said rampant piracy of CDs is
threatening the survival of the
island’s music industry.
38
39
In addition, three National Assembly
members are sponsoring a bill to revise Ko-
rea’s Copyright Act yet again. e bill would
grant signifcant additional rights to produc-
ers and performers, including the right of
communication to the public. e Ministry
of Culture and Tourism’s Game and Music
Division, in turn, drafted a new Music Pro-
motion Bill for consideration by the National
Assembly that would introduce additional
protections for sound recordings, as well as
authorize the ministry to set up and run an
inspection team to investigate and handle il-
legal phonogram cases.
SRI LANKA’S BIGGEST RAID DISCOVERS
ILLICIT DISCPRINTING PLANT

lthough the sale of counterfeit CDs
and DVDs is common in Sri Lanka,
authorities assumed discs on sale were being
imported to Sri Lanka from other parts of
Asia. Then, on the night of October 9, 2004,
Sri Lankan police investigating other crimi-
nal activities raided a previously unknown
CD manufacturing plant, Optical Media
Pvt. Ltd. Owned and operated by Malaysian
nationals, the plant had been in operation
since early that year, ironically as a company
approved by the Board of Investment, the
government of Sri Lanka’s foreign investment
promotion agency. The police also raided the
main bazaar in Colombo and confiscated a
large number of optical media products. The
news of the raids spread to other counter-
feit CD sellers, and most of the shops have
stopped displaying counterfeit copies of the
Eagle brand produced by the plant.
e plant had counterfeited music, movie,
and software products and produced CDs
using polycarbonate resin, which will make
it possible to calculate the number of CDs
and DVDs that were pirated. Informants told
the police that a truck had removed approxi-
mately 175,000 discs and some stampers the
night before the raid. Of cials assume that,
because of the large number of discs involved
and the presence of several hundred Chinese
Microsoft discs, the plant must have manu-
factured illegal discs for export as well as lo-
cal consumption.
e U.S. Embassy in Colombo reports
that its public/private IPR Working Group is
helping to coordinate private sector support,
including that of Microsoft, for Sri Lankan
authorities’ continuing investigations.
TAIWAN STRENGTHENS
COPYRIGHT LAW

new law passed by Taiwan’s Leg-
islative Yuan on August 24, 2004,
closes loopholes in the version they passed
in 2003. The new bill makes any technol-
ogy or information used for circumventing
“anti-piracy measures” a crime punishable by
up to one year in prison and/or a fine of up
to approximately U.S.$8000. It also allows
Taiwan Customs to impound goods, pending
determination of their authenticity. However,
rights holders must still take measures to ap-
ply for attachment and/or initiate criminal or
civil proceedings to protect their intellectual
property rights within three days, or Cus-
toms is required to release the goods.
e 2003 law eliminated minimum sen-
tences for counterfeiters, giving judges the
discretion to allow violators to pay a fne
instead of serving jail time. Most intellectual
property pirates saw paying these minimal
fnes as a justifable cost of doing business.
e new law mandates that those involved in
the sale or rent of copyright-infringing opti-
cal discs must be imprisoned between six
months and fve years, and also may be fned
between U.S.$16,100 to U.S.$161,000. 
40
41

U.S. agency negotiates a collab-
orative agreement with a univer-
sity research organization in Brazil to study
plants in that country as potential sources of
drugs to fight cancer.
Members of a Native-American tribe cre-
ate a digital database in which they record
all of their community’s cultural knowledge,
history, practices, and arts.
A U.S. corporation seeking to study mi-
croorganisms in Yellowstone National Park
enters a Cooperative Research and Develop-
ment Agreement with the U.S. government,
stating that any benefts of commercializa-
tion will be shared.
ough these situations may seem unre-
lated, they have something in common: All
are mechanisms aimed at protecting the
value of genetic resources, traditional knowl-
edge, and folklore, three elements that are
often intertwined in daily life in indigenous
communities. A traditional healing remedy,
for example, may involve preparing a local
plant according to a recipe passed down from
generation to generation and consuming it as
part of a cultural ceremony.
e United States respects and recog-
nizes the importance of protecting genetic
resources, traditional knowledge, and ex-
pressions of folklore by facilitating equitable
beneft sharing, eliminating erroneously is-
sued patents, eliminating misappropriation
of traditional knowledge, and preserving
expressions of folklore, says Linda Lourie, an
attorney with the U.S. Patent and Trademark
Of ce’s (USPTO) International Relations Of-
fce.
As a country composed of people from all
over the globe, as well as more than 560 Na-
tive-American tribes, the U.S. government
has had to handle a myriad of concerns re-
garding these often-complex matters. “We’ve
resolved these issues by national means,”
Lourie stressed. Some of these solutions uti-
lize existing U.S. intellectual property laws,
while others do not. Tribal businesses, for ex-
ample, use established intellectual property
laws, while Native-American expressions of
folklore are protected by other types of laws,
programs, and even museums.
In the international arena, the United
States is at the forefront in developing ben-
eft-sharing agreements with source coun-
tries regarding their genetic resources. “We
have consistently led the world in negotiating
these kinds of arrangements,” she said, “and
we certainly would encourage other coun-
tries to do so.”
e United States is eager to share its
experiences with other countries in interna-
tional fora, said Lourie. “But,” she cautioned,
“each country has diferent issues that need
to be resolved diferently. One size does not
ft all.”
By Jeanne Holden
e U.S.
Traditional Knowledge,
Genetic Resources,
and Folklore
Approach:
40
41
WHAT ARE THE ISSUES?
1
n 1993, the Convention on Biologi-
cal Diversity (CBD) came into force.
It represents a commitment by nations to
conserve biological diversity, to use biologi-
cal resources sustainably, and to share the
benefits arising from the use of genetic re-
sources fairly and equitably. Article 8(j) of
the convention draws a connection among
traditional knowledge, folklore, and genetic
resources by calling on nations to “respect,
preserve, and maintain knowledge, innova-
tions, and practices of indigenous and local
communities” and to promote wider applica-
tion with the approval of the holders of such
knowledge and practices.
Since 1993, the international community
has been working to better understand and
implement Article 8(j) within the framework
of the World Trade Organization (WTO)
and the World Intellectual Property Orga-
nization (WIPO), among others. In these
discussions, several developing countries
have advocated creating new forms of legal
protections for these resources at WIPO.
In response, WIPO member states estab-
lished an Intergovernmental Committee
(IGC) as an international forum for discuss-
ing the relationship between intellectual
property and genetic resources, traditional
knowledge, and folklore.
Anthony Morales of the Gabrieleno Native-
American tribe, at a powwow in California. The
United States has developed a host of solutions
to preserve its tribes’ traditional knowledge,
folklore, and genetic resources.
A variety of herbal remedies,
some of which have been traditional
healing remedies for centuries.
42
43
But what is meant by these three terms?
Ultimately there is no uniformity in defni-
tions. e term “genetic resources” is defned
in the Convention on Biological Diversity,
Article 2, as “genetic material of actual or
potential value.” Genetic material refers to
any material of plant, animal, microbial, or
other origin containing functional units of
heredity.
According to the International Bureau
of WIPO, “traditional knowledge” refers to
systems of knowledge, generally passed from
generation to generation, pertaining to a
particular people or territory, and including
their creations, innovations, and cultural
expressions. By defnition, some form of
traditional knowledge has existed for a long
time. However, such knowledge is not static
and can be constantly evolving in response to
a changing environment. Traditional knowl-
edge may focus on natural elements such as
mineral deposits, location of salmon, healing
properties of local plants, land management
practices, or agricultural technologies.
e term “expressions of folklore” has
also been defned by WIPO for purposes of
its discussions. WIPO says this term refers
to characteristic elements of “traditional
artistic heritage” developed and maintained
by a community or by individuals who refect
the traditional artistic expectations of such
a community. Expressions of folklore may
be oral, as in folktales; musical, as in songs;
actions, as in folk dances, plays, or rituals;
or tangible expressions, such as drawings,
paintings, carvings, sculptures, pottery,
woodwork, metal ware, jewelry, basket weav-
ing, needlework, textiles, carpets, costumes,
musical instruments, and architectural
forms, among others.
e concerns of traditional knowl-
edge holders within the United States and
other countries include: loss of traditional
knowledge; lack of respect for traditional
knowledge; the misappropriation of tradi-
tional knowledge, including use without
beneft sharing and ofensive use; and the
need to preserve and promote the use of tra-
ditional knowledge. Indigenous communities
have many similar concerns regarding their
traditional artistic expressions.
Holders of genetic resources worldwide
also are largely focused on the issues of
“protection,” “preservation,” and “equity,”
although even those terms have not been
defned uniformly.
ere have been calls for the creation of
new international legal protections for these
resources, but many questions remain unan-
swered. Who would be the benefciaries of
any protection measures created for genetic
resources, traditional knowledge, or folklore?
No country, international intergovernmen-
tal organization, or person has been able to
identify the intended benefciaries of these
sought-after protection measures. Similarly,
none has determined what the scope of such
protection might be, what would constitute
“fair use” or other exceptions of limitations,
or even what enforcement mechanisms
could be applied. How would an expatriate of
an indigenous community from one country
proft from, or have the right to use, genetic
resources, traditional knowledge, or folklore
from her past in her new home? How would
combinations of traditions be protected?
What about traditions or knowledge that
span borders or continents or are universally
practiced?
Some countries want to prevent others
from using their traditions while others want
to commercialize or proft from such use.
How could any one system encompass all
these interests? And, to make matters even
more complex, there is no agreement as to
what actual harm would be remedied by new
means of protection.
In the United States, tribal enterprises
can and do avail themselves of U.S. intel-
lectual property laws, said Eric Wilson, an
international program analyst with the U.S.
Department of the Interior. e Mississippi
Band of Choctaw, for example, holds annual
seminars for tribal government and tribal
industry managers on intellectual property.
e tribe is engaged in manufacturing en-
terprises and wants to be able to avail itself
of relevant intellectual property rights (IPR),
he explained.
e current laws of intellectual property
rights are not enough to cover all the con-
cerns of indigenous peoples, and such laws
alone cannot be expected to do so, Wilson
42
43
The National Dance Company of Korea in the traditional dance Janggochum. Some countries want IP
protection for dances and other expressions of folklore. In the United States, other types of laws also
protect folklore.
A Cambodian troupe that performs Khmer classical and folk dance and music.
45
44
Cecilia Bearchum goes over a binder used to teach
Walla Walla Native-American vocabulary and
grammar at the Umatilla Indian Reservation in
Oregon.
A worker near Trombetas, Brazil, with new
sprouts of native vegetation that will be used
to reforest and replenish the country’s rich
genetic resources.
An ethnobotanist examines a specimen from the Brazil nut
at the New York Botanical Garden, which for years collected
plants in Latin America under a program that developed
beneft-sharing with source countries.
Staf at the University of North Carolina in Chapel Hill’s
Southern Folklife Collection — one of many U.S. institutions
that preserve, protect, and distribute American expressions
of folklore.
44
45
stressed. “Indigenous values,” as they are
sometimes called, are quite broad and vary
among the tribal communities, with some
interests belonging to an entire tribe, a clan,
or an individual.
In order to achieve protection of intel-
lectual interests, Wilson suggested that some
of the solutions will need to come from the
indigenous communities themselves. He
said that it would be appropriate for national
governments to give legal recognition to cus-
tomary indigenous law.
TRADITIONAL KNOWLEDGE
(
ne approach taken to respond to
traditional knowledge holders, said
Linda Lourie, consists of ensuring that pat-
ents are not granted on known products or
processes, including those that are consid-
ered traditional knowledge.
A patent is a grant by a national govern-
ment to an inventor for the right to exclude
others from making, using, or selling his or
her invention. To qualify for patent protec-
tion in most countries, an invention must be
new, it must be useful, and it must not be a
trivial extension of what is already known.
Some holders of traditional knowledge fear
that others will seek patents based on their
long-held knowledge and reap the benefts
from it. But an applicant trying to patent
traditional knowledge likely cannot meet the
three necessary requirements, Lourie said.
“Traditional knowledge is already known,
so if it has been documented; it’s no longer
new.”
According to the U.S. Patent Act (Title
35 U.S. Code, Section 102), if an invention a)
was known or used by others in the United
States, or patented or described in a printed
publication in this or a foreign country be-
fore the invention thereof by the applicant for
patent, or b) was patented or described in a
printed publication in this or a foreign coun-
try or in public use or on sale in this country,
more than one year prior to the date of the
application for patent in the United States,
then it is not entitled to a patent.
“However,” Lourie explained, “if our pat-
ent examiners in Virginia do not know about
traditional practices overseas, they cannot
protect them.”
Lack of information about a traditional
remedy led to a problem in 1995 when a U.S.
patent covering the use of the turmeric plant
in healing wounds was mistakenly granted
to Indian nationals from the University of
Mississippi Medical Center. Turmeric has
been used for a long time in India to heal
wounds, and this had been documented in
Indian publications. e Indian Council for
Scientifc and Industrial Research requested
a reexamination of the patent, and the U.S.
Patent and Trademark Of ce revoked the
patent for lack of novelty. e ability of a
third party to request reexamination and the
eventual cancellation of the claims when a
mistake has occurred demonstrate that the
current patent system works well to correct
itself.
e importance of publishing traditional
knowledge and making that information
available to patent examiners internation-
ally cannot be overemphasized, said Lourie.
“If traditional knowledge is documented,
that knowledge may not be the subject of a
patent, even if it is not widely known in an
industrialized country.”
e United States is encouraging other
countries to create digital databases to cata-
log their traditional knowledge and protect
it from patent attempts. Digital databases
would allow patent examiners all over the
world to search and examine traditional
knowledge. Several developing countries
are working toward this end. India and
China have been very involved in develop-
ing searchable digital libraries of their tra-
ditional knowledge, Lourie said. U.S. patent
examiners regularly check the international
databases that are already in use.
Lourie acknowledged that some tradi-
tional knowledge holders might want to keep
certain aspects of their knowledge secret
or limited to specifc individuals or groups.
If so, she said, they may want to take steps
to guard their knowledge as a trade secret.
In the United States, infringement of a
trade secret is considered a type of unfair
competition.
47
Within the United States, some Na-
tive American tribes are cataloging their
tribal values in a way that fulflls the need for
documentation and the need to limit outsid-
ers’ access to information. According to Eric
Wilson, the Tulalip Tribes in the U.S. state
of Washington, for example, have developed
a sophisticated digital computer inventory,
named “Cultural Stories,” that delineates
who is to have access to what traditional
information about their knowledge, history,
culture, or practices. Some users have unlim-
ited access, while others, such as U.S. patent
examiners, may have limited access.
Some holders of traditional knowledge
want to be sure that any new discoveries
derived from their traditional knowledge in-
clude an equitable sharing of benefts. ese
communities may want to negotiate contrac-
tual beneft-sharing agreements regarding
new products or processes created through
research using their traditional knowledge.
Lourie cautioned, however, that it could be
a mistake to expect a windfall from such
contracts; to date, very few fnancial benefts
have accrued from commercialization of tra-
ditional knowledge.
FOLKLORE
1
n the United States, expressions of
folklore are protected in a variety of
ways, ranging from standard U.S. intellec-
tual property laws to laws and programs spe-
cifically designed to protect and preserve the
cultural heritage of its indigenous peoples.
One mechanism is the Indian (Native
American) Arts and Crafts Act, a federal law
enacted in 1935 and amended in 1990. is
truth-in-advertising law prohibits the mar-
keting of products misrepresented as Native
American-made. It covers all Indian and In-
dian-style traditional and contemporary arts
and crafts, such as baskets, jewelry, masks,
and rugs. An individual or business violating
the act can face civil penalties or criminal
penalties or both.
e Database of Of cial Insignia of Na-
tive-American Tribes was established at
the USPTO in 2001 in response to Native-
American concerns about the preservation of
expressions of folklore. Of cial insignia are
not trademarked designs; they are insignia
that various federally and state-recognized
Native-American tribes have identifed as
their of cial tribal emblem. Inclusion of of-
fcial insignia in the database ensures that an
examining attorney will be able to identify
46
Left, a woman from Almolonga, Guatemala, using a traditional design
in her weaving. Above, young students from the Beijing Shaolin Kung
Fu School. Monks from the Shaolin monastery in Henan province —
considered the cradle of Chinese martial arts — are trying to protect the
Shaolin trademark from encroachment by marketers who use it to push
products ranging from medicine to cars and furniture.
46
any of cial insignia that may preclude regis-
tration of a mark where the mark suggests a
false connection with the tribe.
In addition, all trademark applications
containing tribal names, recognizable like-
nesses of Native Americans, symbols per-
ceived as being Native American in origin,
and any other application that the USPTO
believes suggests an association with Native
Americans are examined by an attorney at
the USPTO who has developed expertise and
familiarity in this area.
e U.S. government has taken several
other steps to protect and preserve its peo-
ples’ expressions of folklore. e American
Folklife Center in the Library of Congress
was created in 1976 by the U.S. Congress
“to preserve and present American folk life”
through programs of research, documenta-
tion, archival preservation, live performance,
exhibition, public programs, and training.
e center incorporates the Library’s Ar-
chive of Folk Culture, established in 1928
as a repository for American folk music. e
center holds more than 1,000,000 photo-
graphs, manuscripts, audio recordings, and
moving images.
e U.S. government also maintains the
Smithsonian Center for Folklife and Cultural
Heritage to promote the understanding of
grassroots cultures in the United States and
abroad. Its collection includes many thou-
sands of commercial discs, audiotapes, com-
pact discs, still images, videotapes, and mo-
tion picture flm. It produces annual folklife
festivals, recordings, exhibitions, documen-
tary flms, and educational materials.
e newest U.S. efort to protect and
preserve Native-American culture is the
Smithsonian Institution’s National Museum
of the American Indian, which opened in
Washington, D.C., on September 21, 2004.
It is the frst national museum in the United
States dedicated to the preservation, study,
and exhibition of the life, languages, history,
and arts of Native Americans.
GENETIC RESOURCES
(
hroughout the world, many com-
munities are focusing on issues of
equity as well as protection and preserva-
tion of resources. Those communities have
expressed their concern that industrialized-
country companies could utilize source-
country natural resources for agricultural
and pharmaceutical products and assert
intellectual property rights claims.
47
The National Museum of the American Indian in
Washington, D.C.
The Jeferson Building of the Library of Congress.
Congress created the Library’s American Folklife Center
“to preserve and present American folklife.”
48
49
Many others believe that such concerns
have been overstated. Where the U.S. gov-
ernment, including the National Cancer
Institute (NCI), is involved in genetic re-
source research in other countries, it enters
into beneft-sharing agreements with those
countries to gain fair access to genetic re-
sources and/or traditional knowledge, said
Linda Lourie. “ere are many success
stories” involving collaborative agreements
and contracts for cooperation negotiated on
mutually benefcial terms.
“NCI was ahead of the Convention on Bio-
logical Diversity by about three or four years”
in negotiating agreements with source coun-
tries regarding their resources, says scientist
Dr. Gordon Cragg.
Cragg, chief of the Natural Products
Branch of NCI’s Developmental erapeutics
Program, explained that, in the 1980s, NCI
started developing policies for collaborating
with source countries on the use of their ge-
netic resources in research aimed at fnding
more efective treatments for cancer. ese
agreements provided the source countries
with short-term benefts that would accrue
without having to wait and see whether
promising discoveries were derived from
their resources. e benefts included train-
ing source-country scientists in NCI labora-
tories or U.S. universities’ laboratories and
technology transfer, he said.
“e chances of a discovery becoming a
commercial product is usually said to be one
in 10,000,” said Cragg, adding, “I think that is
optimistic.”
NCI, part of the U.S. National Institutes
of Health, one arm of the U.S. Department of
Health and Human Services, functions much
like a non-proft pharmaceutical company.
Established in 1937, NCI had evolved by the
1950s into a drug research and develop-
ment center, collecting plants mostly in the
United States, Mexico, Canada, and parts of
Africa and Europe. In the 1980s, NCI began
a collection program for plants and marine
organisms in tropical regions.
is was the program in which NCI frst
developed policies for beneft-sharing with
source countries. “We began letting out con-
tracts to high-quality research organizations
in the United States for collections overseas,”
explains Bjarne Gabrielsen, senior advisor
for drug discovery and development in NCI’s
Technology Transfer Branch. “e Missouri
Botanical Garden collected plants in Africa,
the New York Botanical Garden collected in
Latin America, the University of Illinois in
Chicago collected in South Asia,” he said.
“e collections were done mainly in tropical
and subtropical countries, mainly developing
countries.”
At this stage, Cragg’s program started
using Letters of Collection, agreements
among NCI, a U.S. contractor organization,
and a collecting organization in the source
country. “e U.S. contractor goes into an
area, obtains the necessary permits, and
collects plants and marine organisms for
us” with the source country organization,
said Gabrielsen. “e NCI does the extrac-
tion and testing.” In addition to short-term
benefts, NCI requires that, if a promising
potential drug is discovered and licensed to a
pharmaceutical company, the company must
negotiate an agreement so that benefts, such
as part of the royalties, will be returned to
the country.
Over time, in response to the Convention
on Biological Diversity and to greater aware-
ness on the part of source countries about
the value of their resources, research orga-
nizations and pharmaceutical companies in-
creasingly have adopted policies of equitable
collaboration and compensation.
In this, too, NCI has been a leader. In the
1990s, NCI de-emphasized its collections in
its plant-derived drug discovery program in
favor of expanding closer collaboration with
qualifed source-country scientists and orga-
nizations under agreements called Memo-
randa of Understanding.
“Where source-country organizations
have the skills, expertise, and knowledge
and some reasonable infrastructure in their
labs, we support them by helping them
further their own drug discovery research
programs,” said Cragg. For example, he said,
NCI’s Developmental erapeutics Program
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49
has provided a research organization at the
Federal University of Ceara in Fortaleza,
Brazil, with the training and cancer cell lines
to establish their own cancer drug discovery
program. is group is now screening mate-
rials from research programs all over Brazil.
“We have fve such agreements in Brazil,”
said Cragg, as well as collaborations with
organizations in Australia, Bangladesh,
China, Costa Rica, Fiji, Iceland, South Korea,
Mexico, New Zealand, Nicaragua, Pakistan,
Panama, Papua New Guinea, South Africa,
and Zimbabwe.
rough this type of collaboration, the
developing-country organization may make
a promising discovery in-country, said Cragg.
Even if they send NCI a sample for more ex-
tensive testing, such testing is regarded as
routine and NCI makes no intellectual prop-
erty claim, he said. “e results are sent back
to them and the source-country organization
can take out the patent, if appropriate.
“To our minds,” stressed Cragg, “it is an
ideal process. ... If a pharmaceutical com-
pany wants to use the discovery and the
source-country organization has the patent,
it must negotiate a licensing agreement and
the source-country organization can dictate
[the] terms.
“By establishing these close collaborations
aimed at developing promising treatments
for the U.S. and global cancer population,
we achieve NCI’s mission and also the goals
of the Convention on Biological Diversity,”
said Cragg. “e source country is deriving
signifcant beneft.”
Linda Lourie pointed out that the U.S.
government also requires a contract when
companies want to collect genetic resources
from federally owned lands or from the ap-
proximately 56 million acres of land the
federal government holds in trust for U.S.
tribes and individual Native Americans. For
example, in order to study unique microor-
ganisms in the hot springs of the U.S. gov-
ernment-owned Yellowstone National Park
that can withstand great heat, researchers
must enter into a Cooperative Research and
Development Agreement (CRADA) with the
U.S. government that includes beneft shar-
ing, with milestone payments if the results
are commercialized, she said.
“e U.S. view of protection of genetic re-
sources,” Lourie said, “is to encourage other
countries to establish appropriate access and
beneft-sharing regimes that provide beneft
sharing on mutually agreed terms.” Some
countries develop policies limiting access by
creating so many barriers as to almost pro-
hibit collaboration, thus ruling themselves
out of the potential benefts of collaboration,
said Cragg.
CONCLUSION
(
he United States has developed
a wide variety of mechanisms to
respond to concerns regarding the protec-
tion of traditional knowledge, folklore, and
genetic resources. In the U.S. view, intellec-
tual property laws are and should continue
to be available to indigenous individuals and
peoples who meet the appropriate criteria for
such legal protection.
e U.S. government supports the ex-
change of views on traditional knowledge,
expressions of folklore, and genetic re-
sources in international fora, particularly in
WIPO, which has the necessary expertise
and resources to tackle these complex and
technical issues. WIPO activities have in-
cluded fact-fnding missions, case studies
and surveys, sample contractual clauses, and
examples of databases.
U.S. experts agree that intellectual prop-
erty protections do not ofer a solution for
all of the issues involved in the protection,
preservation, promotion, and use of tradi-
tional knowledge, expressions of folklore,
and genetic resources worldwide. In the U.S.
view, however, the key to resolving these
issues satisfactorily is a solutions-oriented
approach rooted in each country’s national
context. 
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51
S
ince its inception, copyright law has
responded to technological change.
Today, the changes that are grabbing all
the headlines relate to digital technology
and digital communications networks, such
as the Internet and personal computers.
These technologies, like many innovations,
are both promising and potentially harmful
to various parties interested in the use and
exploitation of works of authorship, from
books and music to films and web pages.
There is no doubt that the issues related to
achieving the right balance between these
interests in light of recent developments are
daunting and justifiably can be described as
“new” or “unique.” But, at the same time, they
are merely one step in a journey of continual
and successful adaptation that character-
izes the history of copyright law. This article
examines some of the digital issues faced by
copyright law today.
CHARACTERISTICS OF DIGITAL
TECHNOLOGIES WITH
COPYRIGHT IMPLICATIONS
(
he technologies that presently are
raising issues for copyright law are
those related to digital storage and transmis-
sion of works. There are a number of aspects
to these technologies that have implications
for copyright law, including the following:
 Ease of Reproduction: Once a work is
rendered in digital form, it can be repro-
duced rapidly, at little cost, and without
any loss of quality. Each copy, in turn, can
be further reproduced, again without any
loss of quality. In this way, a single copy of
a work in digital form can supply the needs
of millions of users. We have seen how the
compact discs (CDs) containing the origi-
nal digital versions of recorded music and
sold to consumers in the ‘80s and ’90s have
become the “masters” from which billions
of copies have been made and distributed
on computers and on the Internet in this
decade.
 Ease of Dissemination: e emergence
of global digital networks allows the
rapid, worldwide dissemination of works
in digital form. Like broadcasting, digital
networks allow dissemination to many
individuals from a single point (although,
unlike broadcasting, digitized materials
need not reach each individual simulta-
neously). However, digital networks allow
each recipient on the network to engage
in further dissemination of the work,
which can cause the work to spread at a
geometric (sometimes called “viral”) rate
of increase. is, combined with the ease
of reproducing works, means that a single
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e Challenge of
Copyright
Digital Age
in the
By Marybeth Peters
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digital copy of a work can be multiplied
many thousands of times around the
world within a few hours. When trans-
mitted through high-speed transmission
lines, like coaxial cable networks or even
fber optic lines, the process is even faster,
and the capacity for the transmission of
works grows as well.
 Ease of Storage: Digital storage is dense,
and it gets denser with each passing year.
Ever-increasing quantities of material can
be stored in a smaller and smaller amount
of space. In the early 1990s, CDs, which
can store over 600 megabytes of data, were
perhaps the predominant form of digital
storage used by commercial pirates for
storing entire libraries of computer pro-
grams or sound recordings with aggregate
retail values in the millions of dollars. To-
day’s popular iPod portable music player
can store nearly 70 times that amount
(around 10,000 songs) in a device the size
of a cigarette pack.
NEW FORMS OF EXPLOITATION … AND
ILLICIT COMPETITION
(
he revolution in the way new tech-
nology can reproduce, disseminate,
and store digital information, including
copyrighted works, is truly a double-edged
sword for authors and rights holders. On the
one hand, it can provide for new and exciting
ways for authors to provide copies of their
Copyright law in the United States and in other
countries is coming to grips with new digital
technologies and communications networks, such
as the Internet and personal computers.
U.S. Federal Bureau of
Investigation (FBI) anti-
piracy warning text, for
display on digital and
software intellectual
property.
53
52
works in convenient, inexpensive ways to a
much larger audience than in the past. For
example, a recording artist can put his or
her music on a web site that can be accessed
by fans from around the globe, without a
large investment in manufacturing, packag-
ing, and shipping physical products to these
remote locations. On the other hand, these
new technologies make it easier for pirates
and those who want to compete illicitly with
that author to make and distribute infringing
copies of the work.
e challenge of copyright in the digital
age is to preserve the author’s and rights
holder’s incentive to create new works and
use new technologies to distribute them
to users and consumers in the face of such
a competitive threat from the illicit use of
technology by infringers. It also involves
making sure that benefcial uses of works are
not being needlessly stifed by a copyright
system rendered inef cient by the advance
of new technology. is article describes
how the United States has met this chal-
lenge in the past, and how it may meet it in
the future.
COMMON THEMES
(
his article mentions several com-
mon themes in the approach that
the copyright law of the United States took
to past technological changes, and how chal-
lenges posed by those once-new technologies
were addressed.
Embracing New Forms of Expression:
Time and again over the last two cen-
turies, the subject matter of copyright has
embraced new forms of authorship. Photog-
raphy, cinematography, electronic databases,
and computer programs are some examples.
In each case, policy-makers ultimately were
able to look beyond the particular technol-
ogy or medium of expression in order to
recognize the common thread of creative au-
thorship that runs through all of copyright.
Maintaining the Framework of
Exclusive Rights:
A fundamental tenet of both national and
international systems of copyright is that
authors are entitled to exclusive rights over
certain activities (e.g. reproduction, distribu-
tion, or performance) involving their creative
U.S. of cial William Lash III shows pirated copies of
DVD movies to journalists. Once a movie is rendered
in a digital form, it is easy for commercial pirates to
reproduce it rapidly and at little cost.
A billboard for the Apple iPod, which can store around
10,000 songs, nearly 70 times the amount that CDs can
hold.
52
53
works. ese rights allow the author to pre-
serve both his economic and non-economic
interests in his creative works, which, in
turn, promotes literary and artistic creativ-
ity and benefts the public welfare. is same
principle is recognized in a provision of the
U.S. Constitution authorizing Congress to
grant exclusive copyrights “To promote the
Progress of Science and useful Arts.” As new
technologies have expanded the means by
which works may be exploited, policy-mak-
ers periodically have had to reexamine the
exclusive rights granted to authors under
copyright, to ensure that authors and owners
of copyright continue to exercise exclusive
control over their works.
On occasion, a more expansive interpreta-
tion of existing rights is the answer. In the
United States, for example, an existing right
of public performance was interpreted to
include radio and television broadcasts. On
other occasions, new rights have been added
to the copyright bundle, as when rights of
communication to the public were added to
the primary international copyright treaty,
the Berne Convention, in response to the
advent of broadcasting.
At the same time, legislators have had to
examine the nature and scope of exemptions
from exclusive rights. For example, the limit-
ed exemptions for reproduction of computer
programs contained in Section 117 of the U.S.
Copyright Act were considered an appropri-
ate means of tailoring exclusive rights to the
need of that technology, namely, the need to
make copies in the course of authorized use
and the need to make backup copies to guard
against mechanical failure or accidental
erasure. Similarly, in 2002, the United States
revised and adapted exemptions for educa-
tional use of works to accommodate new
“distance learning” technologies that allow
teachers to reach students via communica-
tions networks like the Internet.
In short, new technologies often prompt
debate about whether the set of exclusive
rights granted to authors and rights hold-
ers should be modifed, either with new or
broadened rights or new or broadened ex-
emptions, to continue to serve the purpose
of copyright.
U.S. rapper Ludacris surveying his songs on a pay-for-download music site.
54
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Market-Driven Solutions:
One reason that a system of exclusive
rights like copyright has been so successful
throughout history at providing the means
to support creative activity is that it allows
copyright owners to rely on the marketplace
to fnd fnancial support for their creative
endeavors. In particular, where technologi-
cal change is very rapid, the fexibility of the
marketplace is often the most ef cient way to
make sure that works continue to be created
and disseminated to the public.
Any marketplace will have its inef cien-
cies, however, and it is a challenge for coun-
tries to try to address them. For example, an
exclusive right does not necessarily beneft a
rights holder if inef ciencies in the market-
place make the exercise of the right impracti-
cable. e exploitation of public performance
rights in musical works is a classic example in
the United States. Typically, the value of any
single public performance of a musical work
is small. e class of users, which includes
broadcasters, bars, restaurants, supermar-
kets, and the like, is extremely large. In ag-
gregate, the value of this form of exploitation
is substantial, but so is the cost of adminis-
tering rights over such a large base of users.
is inef ciency of the marketplace has
largely been overcome in the United States
through a familiar market-driven solution:
collective administration of the right of pub-
lic performance. In this system, collecting
societies collect license fees from each user
and then distribute these payments to the
writers and publishers. For example, in the
United States, performing rights societies
such as the American Society of Compos-
ers, Authors, and Publishers (ASCAP) and
Broadcast Music, Inc. (BMI), grant blanket
public performance licenses to many ven-
ues and distribute the income from these
licenses to their members.
A similar approach is being attempted for
administering reproduction rights — pho-
tocopying, electronic copying — with some
success. For example, in this area the Copy-
right Clearance Center has flled a void in the
marketplace and acts as mediator to license
a wide range of uses. Compulsory licensing,
where the government creates and admin-
isters a license for the use of copyrighted
works, is another approach to purported in-
ef ciencies of the marketplace. For example,
in the United States, Sections 111 and 119 of
the Copyright Act grant compulsory licenses
for the retransmission of broadcast television
signals because of the high transaction costs
associated with obtaining necessary permis-
sion for such retransmissions.
e U.S. experience in this area has
shown, however, that the best forms of col-
lective management of copyright are those
that retain as many characteristics of a
marketplace of exclusive rights as possible.
is requires that any system of collective
administration be voluntary, non-exclusive,
and responsive to market forces (including
market forces brought on by technologi-
cal change). All three of these factors point
toward private entities operating within a
competitive environment for collective ad-
ministration of rights. In addition, the third
factor suggests that collective administration
of rights should be decentralized in order to
account for diferent market conditions in
diferent countries.
Moreover, the imposition of a compul-
sory license administered by the government
can be costly to society. First, a compulsory
license is a signifcant derogation from the
norm of exclusive rights. Second, a compul-
sory license can cause signifcant distortions
in the marketplace, since it serves to control
prices, both directly through the mecha-
nisms for setting royalty rates and indirectly
through the control of supply. ird, once a
compulsory license has become established,
a web of reliance interests builds up around
it, making it extraordinarily dif cult to elim-
inate even after the conditions that justifed
its adoption cease to exist.
For all of these reasons, compulsory
licenses are permitted sparingly under in-
ternational copyright treaties and should
be approached with great caution at the na-
tional level. Market failure, such as in the
cable and satellite retransmission market
where transaction costs are prohibitively
high, may be one justifcation for use of a
compulsory license.
54
55
Chinese pop singer Zhang
Jie in Beijing April 19,
2005, during an event to
promote a Chinese music
distribution platform that
adheres to international
IPR standards by
promoting distribution of
legitimate products.
A digital camera from Kodak, one of the many
companies that are ofering new products and services
for the digital age, including Picture CD software and
on-line photo-sharing services.
Members of the rock band Transmatic, who signed
a deal with Virgin Immortal Records after being
“discovered” in cyberspace.
56
57
EARLY CHALLENGES
(
he advent of digital technology
posed a number of challenges to the
international copyright community.
Maintaining the Framework of
Exclusive Rights
Because of the degree to which advances
in digital technology have facilitated rapid,
widespread reproduction and dissemination
of works, the international community has
paid signifcant attention in recent years to
the need to adjust the existing framework
of exclusive rights to address issues of new
technology. e conclusion internation-
ally has been that the existing framework is
generally adequate to accommodate the new
technologies and needs minor revisions rath-
er than a major overhaul. is is refected in
the modest, though important, scope of the
WIPO Copyright Treaty (WCT), concluded
shortly after digital technology started to
become prevalent.
e WCT requires member countries to
recognize certain exclusive rights designed
for activity that takes place over new digital
communications networks like the Internet.
Among other things, it requires that authors
enjoy a right of communication to the public,
including the right of “making available” their
works, such as providing downloads from an
Internet web site. While many existing copy-
right laws provide such a right through the
more traditional rights of reproduction or
performance, the WCT made clear that such
a right, in whatever form, must be granted to
authors.
Technological Adjuncts to
Copyright Protection
While the WCT leaves the existing
framework of exclusive rights largely intact,
it does contain provisions, relatively new to
international copyright agreements, on tech-
nological adjuncts to copyright protection.
ese adjuncts are intended to further the
development of digital networks by ensuring
that copyright can be meaningfully enforced
and licensed online.
Under the WCT, countries must put ef-
fective legal remedies in place against the
circumvention of technological measures
that owners use to safeguard their rights.
Countries must also provide legal remedies
against persons who delete or alter rights
management information attached by the
copyright owner to the work. In the United
States, the principal change to U.S. law
in the legislation implementing the WCT
was the addition of provisions on techno-
logical adjuncts to copyright protection.
Title I of the Digital Millennium Copyright
Act (DMCA) created a new form of liability
for circumventing technological measures
that restrict access to protected works,
or that control reproduction, distribution,
public performance, or public display of pro-
tected works.
e WCT, therefore, recognizes that own-
ers cannot rely on technological measures
alone to protect their works, because every
technical device can be defeated by some-
one who is determined to access a work. In
other words, while the framework of existing
property rights continues to be appropriate,
the meaningful exercise of these rights in
the context of new uses, such as those on the
Internet, requires supplementing them with
legal rules that prohibit the compromise of
their technology.
Markets and Management of Rights
As discussed above, collective manage-
ment of rights is a market response to the
inef ciencies of individually licensing rights
to large numbers of works to large numbers
of users, where the value of any individual
use is relatively small. Traditionally, indi-
vidually licensing such works would result
in transaction costs that exceed the value of
the license.
At frst blush, collective management of
rights appears to be an attractive approach
to managing rights to at least some works
on digital networks. It’s unclear, however, to
what extent the same conditions apply. e
information infrastructure that permits rap-
id, inexpensive dissemination of works may
also enhance the ability of rights holders to
manage rights individually. e private sec-
tor currently is working to create technolo-
56
57
gies that facilitate individual transactions be-
tween rights holders and users. e intensive
use of automation could reduce the cost of
such a transaction to levels that would make
individual rights management economically
feasible. Alternatively, or additionally, such
technologies could be used within a frame-
work of collective management as a supple-
ment to traditional blanket licenses.
For these technologies to meet their full
potential in the marketplace, however, they
must be allowed to develop with minimal
interference. Market forces — and not
governments — must determine whether
collective management of rights, individual
management of rights, or some combination
prevails.
FUTURE CHALLENGES
Determining the Proper Scope of
Secondary Liability in the Digital Age
Another interesting facet of the rapid
evolution of digital technologies in the past
decade is the personal nature of the new
technology. A single individual, with very
little investment, now can copy and distrib-
ute millions of copies of works over the In-
ternet, especially works that can be digitized
easily, like music or motion pictures or pho-
tographs. In the United States, we have seen
companies deploy peer-to-peer networking
technology to take advantage of this fact,
essentially enlisting millions of consumers
into a network of copyright infringement on
a scale never seen before. e fact that the
activities of many individuals can cause mas-
sive, large-scale infringement raises serious
questions about enforcement. It is quite dif-
fcult for copyright owners to identify, locate,
and bring enforcement actions against the
vast number of individuals who might be in-
fringing their works. And even if the owners
could bring such actions, it is unlikely that
such individuals would be able to pay for the
damage their actions have caused.
In an efort to address ef ciently the
infringement in these circumstances, U.S.
copyright owners have turned to doctrines
of secondary liability to hold the facilitators
of these networks liable for the infringement.
ese companies, such as the old Napster,
Aimster, Grokster, Morpheus, and Kazaa,
provided software and services to users, and
earn advertising dollars based on the size of
the audience the infringing activity attracts.
Secondary liability doctrines have long been
part of the U.S. common law of copyright.
ey provide an efective means of enforce-
ment by placing liability on those who are
benefting from the infringement and are
in a position to control or restrain it. ese
doctrines may play a much more important
role in copyright in the future, as more and
more technological developments permit
companies to take advantage of individuals’
infringing activity.
e various cases brought against such
companies suggest the courts may be having
trouble fnding the appropriate standard for
secondary liability in the digital age. In the
United States, the prospect of secondary li-
ability for copyright infringement tradition-
ally was an important safeguard that dis-
couraged businesses from using copyrighted
works as a “draw” for customers without
permission. is prospect of liability, how-
ever, had to be balanced by the courts with
freedom to engage in largely unrelated areas
of commerce.
e U.S. Supreme Court addressed these
issues more than 20 years ago in the case of
Sony Corp. of America v. Universal Studios,
Inc. Ever since then, this case has guided the
courts in the proper application of the doc-
trine of contributory infringement. Sony in-
volved the sale of the Betamax videocassette
recorder, which purchasers used to “time-
shift,” that is, to record broadcast television
programming for viewing at a later time. e
Court found no contributory liability, saying
that there would be no such liability as long as
a product was capable of “commercially sig-
nifcant” or “substantial non-infringing uses.”
Since the Court found that the predominant
use of the Betamax was non-infringing, it did
not need to further clarify what it meant by
“substantial non-infringing uses.” However,
the Court did acknowledge that copyright
owners are entitled to efective, not “merely
symbolic,” copyright protection.
58
59
Most recently, in MGM Studios v.
Grokster, the U.S. Supreme Court addressed
whether the providers of peer-to-peer soft-
ware could be held liable under secondary
copyright liability theories. e Court ruled
unanimously that such providers could be
held liable if they “distribute a device with
the object of promoting its use to infringe
copyright, as shown by clear expression
or other afrmative steps taken to foster
infringement.” In other words, if a tech-
nology provider induces its customers to
infringe copyrights, it can be held liable for
that infringement. e Court instructed
lower courts to examine all the facts and
circumstances to determine whether such
inducement took place, and held that the rule
in the Sony case does not prevent liability
where the defendant has been found to have
induced infringement. is rule should allow
copyright owners to obtain efective enforce-
ment of their copyrights against software
and service providers who seek to encour-
age and proft from copyright infringement.
Many commentators have already called this
case one the most important in the history of
U.S. copyright law.
As an international matter, there is very
little uniformity among national laws as to
secondary liability, whether it be liability for
a company that uses peer-to-peer technology
to encourage infringement, or, as the United
States addressed in Title II of the DMCA, an
Internet service provider that provides facili-
ties used by others to infringe. is may be
an area that warrants examination concern-
ing international standards for such liability,
especially given the global nature of the In-
ternet, where a company can set up an in-
fringement-facilitating operation that serves
customers throughout the world from one
country. Maintaining efective protection
for copyright in the digital age might require
such international standards.
Reducing Inefciencies for
Subsequent Users
As we have seen over the past decade, the
Internet provides the individual with access
to a vast reservoir of information of all types,
from text to photographs to music to audio-
visual works. Moreover, digital technology
also provides that individual with the ability
to become an author by creating and dis-
seminating her own works. Often that author
would like to use some of the material he or
she might fnd, but is unsure of the copyright
status of a work or whom to ask for permis-
sion. As we described above, collective li-
censing of works can help such an author by
providing efcient mechanisms so he or she
can obtain permission to use works.
ere may be, however, some or even
many works for which the author cannot
fnd an owner or an administering collec-
tive agency, and he or she cannot resolve
the question of whether the copyright law
permits or prohibits using such works. One
challenge for the future is how the law should
treat these so-called “orphan works.” If it is
truly the case that the copyright owner of
such a work no longer cares about its subse-
quent use, then such use should not be re-
strained merely because of uncertainty about
a work’s status. is result would deprive the
public of access to a new and productive use
of the work, which is ultimately the goal of
any efcient copyright system.
In the United States, the Copyright Ofce
has begun an inquiry into the orphan works
question to determine the nature and scope
of the problem and what legal or regula-
tory solutions might be needed to address it.
Other countries, including Canada, have
already developed mechanisms for issues
related to orphan works. Part of the chal-
lenge in addressing such a problem is ensur-
ing that it is fully consistent with and does
not derogate from the legitimate interests
of authors and rights holders, and that it
complies with international copyright rules
that prohibit the imposition of formalities
that are a condition to the enjoyment and
exercise of copyright. 
Marybeth Peters is the Register of Copyrights, U.S.
Copyright Ofce, Library of Congress.
58
59
(
air use” is an exception to the exclu-
sive protection of copyright under
American law. It permits certain limited uses
without permission from the author or owner.
Depending on the circumstances, copying
may be considered “fair” for the purpose of
criticism, comment, news reporting, teaching
(including multiple copies for classroom use),
scholarship, or research.
e 1961 Report of the Register of Copy-
rights on the General Revision of the U.S.
Copyright Law cites examples of activities that
courts have regarded as “fair use”: “quotation
of excerpts in a review or criticism for pur-
poses of illustration or comment; quotation
of short passages in a scholarly or technical
work, for illustration or clarifcation of the
author’s observations; use in a parody of some
of the content of the work parodied; summary
of an address or article, with brief quotations,
in a news report; reproduction by a library
of a portion of a work to replace part of a
damaged copy; reproduction by a teacher or
student of a small part of a work to illustrate
a lesson; reproduction of a work in legislative
or judicial proceedings or reports; incidental
and fortuitous reproduction, in a newsreel or
broadcast, of a work located in the scene of an
event being reported.”
To determine whether a specifc use under
one of these categories is “fair,” courts are re-
quired to consider the following factors:
 the purpose and character of the use,
including whether such use is of a
commercial nature or is for nonproft
educational purposes;
 the nature of the copyrighted work;
 the amount and substantiality of the
portion used in relation to the copyrighted
work as a whole (is it long or short in length,
that is, are you copying the entire work, as
you might with an image, or just part as you
might with a long novel); and
 the efect of the use upon the potential
market for or value of the copyrighted work.
e distinction between “fair use” and
infringement may be unclear and not easily
defned. ere is no specifc number of words,
lines, or notes that may safely be taken without
permission. Acknowledging the source of the
copyrighted material does not substitute for
obtaining permission.
Keep in mind that, even in an educa-
tional setting, it is not “fair use” to copy for a
“commercial motive” or to copy “system-
atically,” that is, “where the aim is to substi-
tute for subscription or purchase.” No factor
by itself will determine whether a particular
use is “fair.” All four factors must be weighed
together in light of the circumstances. See the
U.S. Copyright Of ce’s Copyright Information
Circulars and Form Letters for “Circular 21
— Reproductions of Copyrighted Works by
Educators and Librarians.”
FOR CLASSROOM USE, HOW DOES
“FAIR USE” APPLY?
e Internet magnifes the possibility for
making an infnite number of perfect copies,
which changes what it means to be “fair.” Be
careful when using material from the Internet;
keep in mind the four factors of the “fair use”
test, or get permission from the owner. e
National Digital Library Program goes to great
efort to identify possible copyright owners for
items in American Memory, though it is often
unable to ascertain possible rights holders
because of the age of the materials. When the
rights holder is known to the program, it will
provide that information in the Restriction
Statements accompanying the collections.
This material was drawn from the Library of
Congress’ Copyright Of ce web pages, http:
//www.copyright.gov/fs/f102.html and http://
memory.loc.gov/ammem/ndlpedu/start/cpyrt/.
WHAT IS “FAIR USE”?

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61
(
he patent and copyright clause of
the U.S. Constitution (Article I,
Section 8, Clause 8) that provides Congress
with the power “[t]o promote the Progress of
Science and useful Arts,” speaks of “securing
for limited times to authors and inventors,
the exclusive right to their respective writings
and discoveries.” The insertion of the phrase
“ for limited times” shows that the Founding
Fathers of the United States realized that it
is critical to balance the intellectual prop-
erty interests of authors and inventors with
society’s need for the exchange of ideas. They
achieved this balance by limiting the term of
the exclusive right and allowing the growth
of an unrestricted “public domain.” Just as
a functioning intellectual property system
can generate significant cultural and eco-
nomic benefits, a robust public domain also
contributes to a democratic society, a strong
economy, and the advancement of science.
e term “public domain” refers to mate-
rials and information that are not protected
by intellectual property rights (IPR). Infor-
mation in the public domain is available for
the public to use without prior authorization
or restrictions on reuse. In the United States,
this includes factual information
1
and works
created by federal government employees in
the scope of their employment. e public
domain also includes works subject to copy-
right protection, but for which such protec-
tion has expired, been renounced (such as
information contractually designated as
unprotected), or been abandoned.
Public domain is diferent from “open
access,” which typically refers to works that
are copyright-protected, but whose authors
or publishers have chosen to make the work
freely available to the public. Even if works
are in the public domain, users should still
acknowledge the source of the work, since
failure to do so could constitute plagiarism.
e U.S. government, producer of the
single largest public body of scientifc and
educational information, is one of the world’s
greatest contributors to the public domain. Its
Ofce of Management and Budget’s Circular
A-130, ”Management of Federal Information
Resources,” recognizes that government in-
formation is a valuable national resource and
that the free fow of information between the
government and the public is essential to a
democratic society. U.S. government practic-
es also have promoted broad dissemination
of information generated by federal govern-
ment funding. Grantees who receive federal
government funding are strongly encouraged
to share the results of their research.
By Anita R. Eisenstadt
Domain
Public
e IMPORTANCE
1
Note that the European Database Directive
adopted in 1996 created a new type of intellectual
property protection (sui generis) for databases,
restricting certain uses of factual information
compiled in databases.
of the
60
61
International and intergovernmental or-
ganizations — UNESCO, the United Nations’
World Summit on the Information Society,
the International Council for Science (ICSU),
and the Committee on Data for Science and
Technology (CODATA) — have focused on
the importance of the public domain for both
developed and developing countries.
Certainly, there is tension in fnding the
optimal balance between the public domain
and intellectual property protection. It is
essential to promote the broad dissemina-
tion of knowledge and information while
ensuring that authors and inventors receive
appropriate protection for their work. e
approaches to resolving this tension are al-
most as diverse as the governments seeking
to resolve it. However, one thing is clear: Free
and forward-moving societies need both.
For additional reading on this topic, see:
 e Role of Scientifc and Technical Data
and Information in the Public Domain:
Proceedings of a Symposium, National
Research Council, http://books.nap.edu/
catalog/10785.html.
 UNESCO Policy Guidelines Related
to Governmental Public Domain
Information, http://portal.unesco.org/ci/
ev.php?URL_ID=15863&URL_DO=DO_
TOPIC&URL_SECT.
 WSIS Declaration of Principles and
Plan of Action, http://www.itu.int/wsis;
www.CODATA.org.
 Duke Law School Conference on the
Public Domain, http://www.law.duke.edu/
pd/. 
Anita R. Eisenstadt is a foreign afairs of cer for
Communications and Information Policy in the
State Department’s Bureau of Economic and Business
Afairs, Of ce of International Communications
and Information Policy, on detail from the National
Science Foundation where she serves as assistant
general counsel. She is an expert on federal scientifc
data policy.
A customer at the U.S. Government
Printing Of ce bookstore. The agency
is the federal government’s primary
resource for gathering, cataloging,
producing, providing, and preserving
published information, most of it in the
public domain.
A robust public domain also
contributes to a democratic society:
Much of the U.S. government’s
published information is now
available electronically.
62
63
¹
any countries have adopted
sophisticated laws to protect
intellectual property in order to join interna-
tional or regional accords and organizations.
By doing this, a country has taken an impor-
tant first step. However, the creation of laws
alone will not enable a country to effectively
enforce the rights of property holders. That
requires the development of appropriate en-
forcement mechanisms.
Why does efective enforcement often lag
behind the institution of law? What are the
barriers to enforcement? Will the benefts
of enforcement be shared by all countries or
just a few?
e State Department’s Bureau of Inter-
national Information Programs (IIP) invited
a panel of U.S. government experts to dis-
cuss these and other questions regarding
the enforcement of intellectual property
rights (IPR). Led by moderator Berta Gomez,
then a senior writer-editor in IIP’s Of ce of
Economic Security, the roundtable discus-
sion included: Michael Smith, an attorney
adviser in the Of ce of Enforcement at the
U.S. Patent and Trademark Of ce (USPTO);
Jason Gull, a trial attorney with the U.S. De-
partment of Justice’s Computer Crimes and
Intellectual Property Section; and Joseph
Howard, a senior attorney adviser in the In-
tellectual Property Rights Branch of the U.S.
Customs and Border Protection Service, part
of the Department of Homeland Security.
According to these experts, efective
enforcement of intellectual property rights
should be a priority for all countries seek-
ing economic growth and full participation
in the world economy. e following is their
discussion.
MODERATOR: First, where does enforce-
ment ft into an overall intellectual property
strategy?
SMITH: As the world economy develops and
as economies are more reliant on high-tech-
nology sectors, the importance of protecting
intellectual property rights is rising.
When the Patent and Trademark Of ce
began conducting overseas training in 1997,
the emphasis was on advising countries about
drafting legislation that would conform to
obligations under the World Trade Organiza-
tion’s Agreement on Trade-Related Aspects
of Intellectual Property Rights (TRIPS). Over
time, the focus has shifted from these laws to
what countries actually are doing on a daily
basis. We’ve found that many countries have
laws on the books that are TRIPS-compliant,
but that much remains to be done to actually
enforce those rights at the borders and in the
civil and criminal court systems.
Roundtable:
Priority
for All Countries
Enforcement,
a
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63
As copyrights, trademarks, and patents
become more important each year to the U.S.
economy, our interest in protecting those
rights abroad increases. And U.S. and other
rights holders around the world are reluctant
to invest in countries where, on a day-to-day
basis, copyrights, patents, trademarks, and
trade secrets are not adequately protected.
GULL: From our perspective at the Depart-
ment of Justice, the harmonizing of intellec-
tual property laws around the world through
international agreements, going back even to
the Berne Convention, is important to defn-
ing the rights of authors, inventors, and com-
panies in products they develop. We would
like to see countries come to a general agree-
ment about what those rights should be.
But without efective enforcement, these
laws are essentially empty promises. Efec-
tive enforcement of these rights is required
so that authors and inventors can make ratio-
nal decisions about whether they’re going to
publish, release, or invent something.
In the last few years, enforcement has be-
come a much more signifcant issue. A com-
bination of factors, including improvements
in shipping, technology, telecommuni-
cations, and the Internet, has created mar-
kets that are increasingly global in scope.
Just as tangible things can move easily
and cheaply across borders, IP problems can
likewise be exported. For example, counter-
feit products manufactured in East Asia have
been a problem for a long time. But coun-
terfeit production like this becomes an even
greater problem as the products become less
expensive and easier to ship to other parts of
the world.
e Internet allows for instantaneous
distribution of information around the world
at essentially no cost. So, in addition to all
the positive activity this technology allows,
people are using the Internet to engage in
massive infringement of intellectual proper-
ty. is problem is growing as the digital sec-
tor of the economy is growing in the United
States and in other countries.
MODERATOR: You said improvements in
shipping make it easier for goods to cross
borders. Is this one of the barriers to efective
enforcement?
A U.S. Federal Bureau of Investigation
(FBI) “wanted” poster for an individual
charged with copyright
infringement.
Los Angeles, California, health department of cials during
a news conference announcing the confscation of illegal
pharmaceuticals. In the United States, a variety of federal laws
and agencies protect consumers from counterfeit products
that endanger health and safety.
64
65
HOWARD: Perhaps the most critical ob-
stacle to efective enforcement is the absence
of a full understanding of the value of intel-
lectual property rights to every nation that
engages in international trade.
I’ve spoken in several countries overseas,
and in each I was asked, “Why should we do
this? Why are we protecting the wealthy na-
tions or manufacturers who own these intel-
lectual property rights?”
My response is that, frst, if your country
is governed by the rule of law and has signed
certain international agreements, it is obli-
gated to adhere to its agreements. Secondly,
as your country develops its own sectors in
which manufacturers, inventors, or artisans
are creating intellectual property, it’s impor-
tant that you give them the full value of their
rights.
Many times, people don’t appreciate that
protecting intellectual property is important
to employment, which leads to growth and
a better quality of life. If you don’t respect
intellectual property rights, no one wants to
invest in your country. You won’t attract the
foreign capital that you need to improve the
lifestyle of your nation’s inhabitants.
Once people appreciate the value of the
rule of law, then it’s clearly not just benefting
the wealthy countries.
GULL: I, too, am asked by foreign audiences,
“Why protect intellectual property when
it’s all American or rich countries’ brands?
Why should I do the bidding of these U.S.
companies?” One answer is that, in much the
same way that trademark owners must work
to protect their brands, countries themselves
must work to enforce IPR to protect the
country’s own reputation.
A trademark is simply a brand. It con-
veys information about the reputation of
the manufacturer and the reputation of the
product. If a particular trademark holder
starts turning out poor-quality products,
people will stop buying them. e reputation
goes down.
To encourage investment, you need an
efective legal regime that protects people’s
rights, including intellectual property rights.
A country can help build its own brand im-
age by ensuring efective IP enforcement.
Conversely, countries that neglect IPR en-
forcement will tend to see their reputations,
and the investment climate, sufer.
SMITH: Another key barrier to efective en-
forcement is a lack of political will. Without
political will starting at the very top of the
government, it’s hard for enforcement au-
thorities to look at these issues as important
and to commit resources to solving them.
When the USPTO conducts technical
assistance, we try to explain why enforce-
ment is important to the local economy.
For example, local music is not only an
indigenous cultural heritage issue; it is a
copyright issue of economic concern to lo-
cal industries. We have found, particularly in
Asia, that there’s a link between the ability of
the country to provide efective enforcement
mechanisms and the growth of music made
by local artists.
MODERATOR: But how does a government
go about providing efective enforcement
once it has decided to do so?
GULL: Although political will is certainly
important, that is not to say that protecting
intellectual property rights is just a matter of
convincing the upper levels of government
that this is an important issue, and that their
decrees will trickle down to street-level en-
forcement.
e government also has to work on pub-
lic awareness to make sure that the public
agrees that intellectual property is worth
protecting. Michael’s point about indigenous
music is an excellent one.
Of course, many pirated products are
copies of goods produced by U.S. companies,
such as Microsoft’s software or American pop
stars’ CDs, which are then sold overseas. But
if a country allows piracy to go unchecked,
its own industries – music, or flm, or soft-
ware — will likely fnd their own products
being pirated along American ones. Since
the domestic creators of music, or movies, or
software, tend to rely more heavily on their
own domestic markets for their livelihoods,
a high level of piracy at home may hurt these
domestic producers most of all.
64
65
A soil compressor destroys counterfeit CDs and tapes
in Brasilia on Brazil’s National Counterfeit Fighting Day.
Governments should make sure that their publics agree
that IP is worth protecting.
Foreign media in China were invited to this IPR case
being heard in Beijing’s highest court. In many countries,
low damage awards are not a deterrent to pirates and
counterfeiters.
A police of cer throws a box of pirated CDs into the
fre near Jakarta. Indonesia has imposed harsher laws
providing fnes and jail terms for copyright violators.
In Cressier, Switzerland, of cials crush counterfeit
Swiss watches. To support one of its most famous
industries, Switzerland’s border control confscates
thousands of counterfeit watches every year.
Sherif Deputies in Whittier, California, check counterfeit
Microsoft registration hologram stickers seized following an
undercover investigation. A criminal investigation can be
initiated through the complaint of a rights holder, but this
should not be a requirement before police can act.
66
67
Piracy can make it even tougher for
domestic industries to compete with large
foreign companies. In countries where every
kind of CD, DVD, or software is available
for a couple of dollars per disc, a local flm
studio or software publisher will fnd it very
dif cult to compete, based on price, with the
latest Silicon Valley software or Hollywood
blockbuster.
Ironically, countries that want to avoid
being overrun by American goods might
consider strengthening their protection of
intellectual property. at would serve local
industry in the long run by allowing that in-
dustry to grow and encouraging investment.
If the public is on board with protecting
intellectual property, then police of cials
will be willing to shut down street vendors
selling pirated and counterfeit products.
Prosecutors will be willing to pursue those
cases because they won’t face the wrath of
an unhappy public. Judges will be more will-
ing to mete out deterrent penalties, whether
prison time or monetary damages.
HOWARD: It is particularly important for a
country to have a mechanism whereby a for-
eign rights holder can bring a problem to the
attention of authorities and have a realistic
chance of receiving enforcement activity on
his or her behalf. is overcomes the inertia
that otherwise is present. It encourages the
authorities to enforce rights.
MODERATOR: Can you describe the train-
ing or speaking that you do overseas?
HOWARD: I’ve gone to other countries,
looked at legislation, and talked to people
about what we do. I explain that it’s reason-
able, if you don’t have the resources to have
a database of all the intellectual property
rights that might be infringed, to at least have
a mechanism so that others can bring infor-
mation to your attention. Many countries
thought that that was useful.
e U.S. Customs Service also enforces
exclusion orders (legally binding commands
barring entry into the United States of goods
that allegedly violate U.S. intellectual proper-
ty rights) issuing from the U.S. International
Trade Commission (USITC). Just as with
intellectual property rights that are recorded
with us, information about exclusion orders
issued by the USITC is entered into the IPR
module for dissemination to feld of cers.
e public version of the IPR module
1
can
be easily accessed. e web address is http:
//www.cbp.gov. Click on the “Quick link” at
that page for “Intellectual Property Rights,”
and at the next page click on “Intellectual
Property Rights Search (IPRS).” e web site
also contains a wealth of information about
our intellectual property rights border en-
forcement program.
MODERATOR: And this is a case in which
new technology actually helps enforcement?
HOWARD: Yes. But as my colleagues have
pointed out, people have to want to do it.
at’s crucial.
MODERATOR: Do you have examples of
countries in which you’ve seen progress and
growing interest in protecting IPR?
HOWARD: I was in Egypt when they were
talking about IP enforcement issues, and the
people I spoke with said that they wanted a
customs system like that in the United States.
It seems people from all over the world look
to our government for guidance on how to
do certain things. ey might not like what
we say in some instances, but they’re open to
considering what we have to say.
1
The Intellectual Property Rights Module (IPR
module) is the U.S. Customs Services’s automated
system containing information about recorded
intellectual property rights. The IPR module
currently contains over 25,000 recordations.
It provides a systematic listing and detailed
information, including images, to assist Customs
of cers in providing adequate protection on a
timely basis. The IPR module is an extension of the
Customs recordation process. Recordation refers
to bringing a valid, federally registered intellectual
property right, a trademark or copyright, to the IPR
Branch, Of ce of Regulations and Rulings, Bureau
of Customs and Border Protection and recording
that right with the IPR Branch. Information about
that intellectual property right is entered into the
IPR module and made available to feld of cers.
A public version of the IPR module is available to
those outside of Customs.
66
67
SMITH: I think most countries would agree
that the U.S. system for protecting intellec-
tual property rights at the border is one of
the most ef cient systems in the world. But
a lot of what is done in the United States is
not practical for most countries. Certainly
developing and least developed countries
don’t have nearly the resources that the U.S.
government has. Also, most countries don’t
have as many border crossing points as the
United States.
e customs services in these countries
have to decide how best to utilize the re-
sources that they have. In technical assis-
tance programs overseas, the Patent Of ce
uses that as a starting point to encourage
compliance with a country’s obligations
under the TRIPS agreement. TRIPS provides
minimum standards, such as establishing a
system so that rights holders can go and re-
cord and seek enforcement of their rights.
Having said that, a country can be fully
in compliance with the minimum obliga-
tions of the TRIPS agreement and still have
a huge problem at its borders. For instance,
the TRIPS agreement requires countries to
provide for protection against imports of
pirated copies of goods and goods bearing
counterfeit trademarks. It does not require
countries to provide protection at the border
with regard to exportations of such goods or
movements of such goods within the country
that might be exported later.
So a primary concern of the U.S. gov-
ernment is the exportation of pirated and
counterfeit goods that are produced in one
country to other countries, for instance,
within Europe or Asia. In that case, we would
advocate for “TRIPS-plus” provisions. We do
this in bilateral negotiations as part of the
free trade agreements negotiation process. In
training, we would emphasize why, although
these are not TRIPS requirements, they are
often needed in order to have an efective
enforcement system.
MODERATOR: Are countries receptive to
this?
SMITH: Defnitely now more than 10 years
ago. I think that, as countries have become
more comfortable with their obligations
under the TRIPS agreement and have had
legislation in place for a while, they become
more receptive.
Of particular importance to the U.S.
government right now is regulating optical
disc (i.e., CDs, VCDs, DVDs, etc.) piracy in
countries where the production exceeds the
amount of legitimate demand. Obviously,
this overproduction of pirated material can’t
be supported by the local economy, so the
product is being exported. In these instanc-
es, we would advocate export controls at the
border and optical disc regulations.
MODERATOR: How big a problem is cor-
ruption as it relates to IPR?
A growing problem for governments and rights holders:
Massive infringement of IP through the Internet is growing.
To check cybercrime, India is requiring identity proof from
cybercafé customers.
A steamroller
crushes a pile of
counterfeit Winnie-
the-Pooh dolls
during Thailand’s
annual destruction
of seized
counterfeit items.
68
69
GULL: Corruption is a significant problem
in a number of countries around the world
that are trying to enforce intellectual prop-
erty rights.
Part of this is related to just how much
money is at stake. When there’s a lot of
money involved in an illicit activity, there is
bound to be some corruption.
Another aspect of intellectual property
piracy and counterfeiting is organized crime.
Criminal gangs, both within the United
States and in many other parts of the world,
are involved in the production and distribu-
tion of pirated and counterfeit goods at all
diferent levels. Of course, corruption of
public ofcials is by no means unique to in-
tellectual property issues. But in those places
where corruption is widespread, it’s going to
afect intellectual property enforcement.
SMITH: You asked, “What are the barriers
to efective enforcement?” I think it depends
on whether you are talking about civil, crimi-
nal, or border enforcement.
Criminal enforcement and border en-
forcement can be grouped together in that
they are actions taken by the government.
On the civil side, it’s a private litigant going in
and redressing harm in a civil courts system.
e problems on the civil side are similar
in many countries around the world. e
USPTO found that, although lots of coun-
tries have legislation and a civil procedure
code that provides for a rights holder to go
into court and get interim relief or a tem-
porary restraining order, those laws are not
applied in practice.
We’ve also found that the damage awards
that many courts give are so low that they
are not actually a deterrent to those who
engage in piracy or counterfeiting and do not
adequately compensate rights holders for the
harm they have sufered.
Finally, we’ve found that, in some coun-
tries, the infringing goods and the machin-
ery used to produce those goods are not
actually destroyed. ey can enter back into
the stream of commerce. at’s obviously not
in the best interest of the rights holders or
the public.
On the government side, one barrier to
border enforcement is that it’s labor-inten-
sive. You need customs ofcials at the border
who are good consumers, familiar with the
trademarks that have been recorded, and
who have an interest in enforcing the rights
of trademark holders. Without knowledge-
able customs inspectors, you’re going to have
a problem with efective enforcement at the
border.
On the criminal side, another problem
is that countries initially might prosecute
numerous cases of vendors selling pirated
or counterfeit goods on the street. Although
this might get the infringers of the street,
it’s not going to the source of the activ-
ity. In many countries, the infringement of
intellectual property rights has its base in
organized crime. erefore, a more efcient
use of a government’s time and money would
be to use their organized crime statutes to
prosecute these cases at the source of the
funding.
GULL: Yes, it’s more efective to go after “big
fsh” than small ones because you cut of the
supply. Generally, the biggest efect of going
after street vendors is that piracy gets pushed
a little of the street. at is, instead of a table
full of pirated optical discs, you’ll have one
guy with a sign saying CDs and DVDs, and
he’ll burn you a copy or get you a counterfeit
copy from a van or an apartment down the
street.
Michael touched on the critical impor-
tance of having efective civil remedies. In
the United States, the vast majority of en-
forcement is done by copyright holders or
trademark owners who initiate actions. e
United States has efective civil remedies:
injunctions, seizures of counterfeit goods,
and monetary damages. One has a realistic
chance of actually obtaining those types of
remedies here, and in many other countries
with more established civil law mechanisms.
In some places, there isn’t as mature a
civil enforcement system. In those areas, for
now at least, criminal and related border-en-
forcement mechanisms are the only realistic
chance of making a dent in intellectual prop-
erty infringement.
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69
In some countries, a criminal prosecution
or investigation cannot be initiated unless
there is a complaint from a rights holder.
is is a serious impediment because it’s
not practical for the rights holder to make
a complaint in every instance. It means that,
in some countries, police aren’t empowered
to seize ofending goods that they recognize
on the street or at a criminal enterprise. We
encourage countries to eliminate this kind of
requirement, whether it’s in their actual law
or merely a policy on the part of the police
and prosecutors.
Also, some countries erect or maintain
artifcial barriers that make it more dif-
fcult to show ownership of a trademark or
copyright. A court may require that there be
testimony from the actual copyright owner,
rather than simply allowing a certifcate from
a copyright of ce as “prima facie” (Ed. Note:
Latin for “on its face,” as it seems at frst sight)
evidence of copyright ownership. is sort of
excessive formality can impede an efective
enforcement regime. Often it’s little things
like this that persist even after the large steps
of signing on to TRIPS, for example, have
been accomplished.
MODERATOR: How important is partici-
pation on the part of the rights holder?
HOWARD: e U.S. Customs and Border
Protection Program relies heavily on the
rights holder who has recorded something
with us to bring information about potential
problems to us. Often the rights holder can
pinpoint the date when infringing goods are
going to arrive, the port or ship they’re going
to be on, or the mode of entry into the United
States. at helps us to focus our eforts and
not waste our limited resources.
Intellectual property rights holders also
might help themselves by educating the
consumer to understand that not all deci-
sions should be based merely on price alone.
A counterfeit product may be sold at a lower
price, but may not have the same features as
the actual product, or it may not be as safe or
last as long. Equally or perhaps more impor-
tant, you may not get the support that you
would get from a legitimate manufacturer if
the product is defective.
MODERATOR: Do health authorities have
a role in telling consumers that counterfeit
products may be unsafe or dangerous?
GULL: In the United States, a variety of
federal laws and agencies protect against the
kinds of counterfeit products that endanger
health and safety. Selling a counterfeit drug
on the Internet, like the fake Viagra adver-
tised by “spammers” through e-mail, would
likely be a violation of Food and Drug Ad-
ministration laws regarding drug safety, as
well as a federal trademark violation. It might
violate laws in the individual 50 U.S. states
as well.
When something is counterfeit, there’s no
way of tracing it to the true manufacturer.
For example, counterfeit liquor is prevalent
in a number of Eastern European countries.
When genuine liquor violates health and
safety standards, the origin of the product
can be traced. e factory where it was made
can be inspected and forced to improve. But
with counterfeit goods, that’s not possible be-
cause, by defnition, the origin of the product
is unknown.
SMITH: is ties in with public awareness.
e government can play a role in educat-
ing the population that intellectual property
protection is not only an economic issue, but
also a health and safety issue. Counterfeit
food products and counterfeit pharmaceuti-
cals have resulted in deaths. Either they don’t
contain the components that they’re sup-
posed to or they contain components that
are lethal to people, and people purchase
them unwittingly.
Or consider airplane parts, where a pi-
rated or counterfeit product is labeled as
meeting laboratory standards of safety, but
actually contains faulty components.
Health and safety issues can bring the
discussion to a more personal level than the
economic aspects of intellectual property
protection. is is about people’s lives. 
70
J
igital technology has turned into
reality the promise of innova-
tive ways of distributing creative works on
a global scale. With digital technology, a
film enthusiast anywhere in the world can
view movies from India, Mexico, or Egypt,
and music lovers can download the unique
sounds of Russian, Chinese, or Zairian music
at the click of a button.
ese same technological advances, how-
ever, have also given rise to serious forms of
piracy. Every industry that depends on copy-
right protection, including the movie, music,
and software industries, is facing tremen-
dous losses from optical disc piracy. Coun-
tries put their economic future in jeopardy
when they fail to adequately protect these
industries’ intellectual property rights (IPR)
from both optical disc and traditional forms
of piracy. Piracy hinders the development of
these industries in many countries and thus
discourages potential investors, innovators,
and the creation of valuable new jobs.
Optical discs include formats such as digi-
tal versatile discs (DVD), DVD-Recordables
(DVD-R), compact discs (CD), CD-ROM,
compact discs with recording cores of dye
instead of metal (CD-R), video compact discs
(VCD), and laser discs (LD). Optical discs are
inexpensive to manufacture and easy to dis-
tribute, two features that make them highly
vulnerable to piracy. Unlike traditional pira-
cy involving analog technologies, the quality
of a digital pirated disc is as high as the origi-
nal, and a production facility can churn out
a huge volume of illegal discs in a relatively
short time. In 2003, the U.S. motion picture
industry, working with law enforcement
agencies around the world, seized more than
52 million pirated optical discs.
In order to tackle this fast-growing cri-
sis efectively, it is essential to develop and
implement innovative tools for controlling
piracy at the source of production. One
useful way of doing so would be to adopt
optical disc regulations along the lines of the
“Efective Practices” adopted by government
leaders at the APEC (Asia-Pacifc Economic
Cooperation) conference in October 2003.
e “Efective Practices” are designed to
identify and control all facilities that repli-
cate optical discs by requiring that authori-
ties strictly license optical disc producers and
manufacturing equipment. A well-enforced
licensing scheme will provide legal grounds
for the immediate closure of unlicensed
facilities. e regulations also require that
licensed optical disc producers retain pro-
duction records and add source identifcation
codes (SID) to each disc produced, measures
that will help ensure that licensed facilities
are producing only legal optical discs.
New Tools for
By Laura Lee with Bonnie J. K. Richardson
Fighting
Piracy
Optical Disc
70
Steamrollers crush confscated pirated music
and movie CDs, VCDs, and DVDs in Manila, the
Philippines. In 2003, the U.S. motion picture
industry, working with law enforcement
agencies around the world, seized more than
52 million pirated optical discs.
An inventor in Israel, Amos Loewidt, believes he has found a solution
to the worldwide problem of CD piracy by placing a slender, plastic-
covered electronic card with an electronic chip, a unique serial number,
and two optical detectors onto a CD.
Fighting pirates: These DVD-Audio discs ofer a higher sound quality
than common music CDs, but also contain a digital watermark that
prevents the owner from making perfect copies of the content.
71
73
72
In Sofa, Bulgaria, workers prepare movie, music,
and software discs for destruction. The “Efective
Practices” discussed in this article endorse a
government’s authority to conduct surprise
inspections of optical disc producers’ facilities.
An of cial from Thailand’s Commerce Ministry
inspects a pirated DVD from a shelf showing pirated
movies during a raid at a shopping mall in Bangkok.
A foreign tourist browses the selection of pirated CDs in a
stall in Phnom Penh. Governments have to remain fexible
and develop new tools to deter pirates.
A peddler in Moscow, Russia, showing pirated and
authentic copies of CDs, videos, and computer software to
a prospective customer. The U.S. government is working
with Russia to adopt vital optical disc regulations.
72
73
e “Efective Practices” also make the
cross-border traf c in manufacturing equip-
ment and raw materials used to make optical
discs, such as optical-grade polycarbonate,
subject to reporting requirements that facili-
tate the tracking of these materials. Further-
more, the “Practices” endorse a government’s
authority to conduct surprise inspections
and to seize and destroy machinery used to
produce pirated materials.
We believe that every country whose opti-
cal disc production facilities are producing
signifcant quantities of pirated products
should create and enforce this type of spe-
cialized regulatory framework for control-
ling the production of optical discs. Pirate
syndicates are constantly migrating optical
disc production from jurisdictions with anti-
piracy regulatory regimes to countries still
lacking suf cient protection. To date, China,
Bulgaria, Malaysia, the Philippines, and Tai-
wan employ optical disc regulatory regimes,
and Singapore is in the process of complet-
ing a similar system. e U.S. government is
also working with the governments of Russia,
Pakistan, and ailand to adopt these vital
optical disc regulations.
An increasingly troublesome facet of opti-
cal disc piracy is its association with crimi-
nal organizations. Organized crime has been
quick to realize that piracy, with its potential
for high profts and minimal penalties in
many countries, is one of the most lucrative
and low-risk criminal businesses. Law-en-
forcement authorities, such as Interpol, have
identifed counterfeiting of optical discs as a
valuable source of funding to criminal syndi-
cates and terrorist groups.
An efective means to sever this tie be-
tween criminal syndicates and optical disc
piracy is the use of laws designed to combat
organized crime. e welfare of the copy-
right industries depends upon the coordi-
nated eforts of all countries to dedicate the
same kinds of legal tools to fghting piracy
that they bring to other kinds of organized
crime. Among others, these tools may in-
clude money laundering statutes, surveil-
lance techniques, and revamped organized
crime laws.
Pirates aim to be always one step ahead of
current regulatory regimes. In order to stem
the tide of piracy in an efective manner, it is
imperative that governments remain fexible
and develop new legal tools on a continuing
basis. It is only with a truly international ap-
proach — one that adopts and enforces tai-
lored optical disc regulations — that optical
disc piracy rates can be signifcantly dimin-
ished on a local and global scale. 
Bonnie J. K. Richardson is vice president for Trade
and Federal Afairs at the Motion Picture Association
of America (MPAA). Laura Lee is a student at the
University of Virginia School of Law and MPAA intern.
The MPAA is a nonproft trade association representing
seven of the largest producers and distributors of
television programs, feature flms, and home video
entertainment material.
74
75
J
ooks are everywhere around us.
Popular titles, such as the Harry
Potter® series or Nobel Prize winner V.S.
Naipaul’s A House for Mr. Biswas, can be
found in bookstores all over the world. Books
serve as tools for entertainment and educa-
tion, as well as professional, personal, and
societal development.
Unfortunately, legitimate authors, pub-
lishers, printers, distributors, and retailers
are often denied the opportunity to satisfy
the world’s appetite for books because ram-
pant print piracy, commercial photocopying,
illegal translations, and digital piracy work to
destroy the market for legitimate materials.
Symptoms of this phenomenon abound:
 In and around universities and schools,
copyshops that make it easy to illegally
photocopy works often have lines out the
door.
 English-learning programs and other
language courses advertise use of
high-quality materials and display
original products, but then use illegally
photocopied versions in their lessons.
 Medical book pirates conduct door-to-
door sales, without fear of reprisal.
 Pirates marketed ffth, sixth, seventh, and
eighth books, supposedly in J.K. Rowling’s
Harry Potter® series, at a time when the
author had written only four!
ese activities — often seen by many
book consumers as harmless — hurt legiti-
mate creators, foreign and domestic produc-
ers and — ultimately — every national econ-
omy. Every country has students who may
be primarily users of information now, but
who will be creators in the near future. Every
country has writers and scholars, and most
also have publishing or printing industries
that are sufering from the same type of pira-
cy encountered by U.S. publishers. Creators
will more likely stay in their home countries
if they are able to produce an income from
their talents there. Protecting their ability to
do that serves them and their countries as
well as their publishers.
e Association of American Publishers
(AAP), the principal trade association of
the U.S. book publishing industry, estimates
that its members lose over $600 million
dollars a year because of global piracy. is
number, unfortunately, is a gross underesti-
mate, based on calculations of losses in just
a few countries and territories. Nevertheless,
this fgure alone underscores the need for
improved enforcement in many places, and
adherence to international copyright stan-
dards by all countries, since copyright pirates
prey on authors, businesses, and consumers
around the globe. Proof of this is that AAP
raids abroad almost always uncover illegal
copies of local materials.
S
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:

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O
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A
Trade
Association
at Work
By Patricia L. Judd
74
75
Winners of the U.S. National Book Awards Kevin Boyle, Lily Tuck, and Jean Valentine read from and sign their
award-winning books at a New York City bookstore.
With today’s technologies, pirates fnd it easy to copy whole books, robbing authors of their intellectual
property and the right to make a living from their work.
77
76
A new device that works as a printer,
scanner, and copier. The Association of
American Publishers works within the
United States and with other countries
to spread the message about illegal
commercial photocopying.
Because of IPR protection, authors in the United States and in the rest of the world can enjoy an income from the
sale of their books and of subsidiary rights for translations, movies, and TV serials.
The millions of Harry Potter fans include
this nine-year-old in Denmark. Pirates,
however, marketed ffth, sixth, seventh, and
eighth books, supposedly in the series, even
though at the time J.K. Rowling had written
only four.
76
77
AAP supports the international fght
against copyright pirates by partnering with
local counsel, investigation frms, member
company of ces, and government of cials to
ensure that both the public and private sec-
tors are doing everything possible to stamp
out these crimes. AAP projects include legal
action, data collection, training, and media
eforts to educate governments and consum-
ers about the harms inficted by piracy.
AAP and its members also work, where
appropriate, with local publishers to identify
projects for possible collaboration. Currently,
AAP has active programs in Hong Kong,
Malaysia, the People’s Republic of China, the
Philippines, Singapore, South Korea, Taiwan,
and ailand. e association also works
closely with its international counterparts in
Pakistan, India, and several other countries.
On the policy side, AAP cooperates
with U.S. and foreign government agen-
cies to promote passage and enforcement
of stringent intellectual property laws. e
association also monitors developments in
legal or practical market access. AAP con-
tributes signifcantly to the annual “Special
301 Report on Global Copyright Protection
and Enforcement,” submitted to the Of ce of
the U.S. Trade Representative (USTR) by the
International Intellectual Property Alliance®
(IIPA) every February. IIPA, of which AAP
is a founding member, uses this report to
update the status of copyright protection in
50 to 60 countries and territories worldwide.
Finally, AAP regularly discusses intellec-
tual property rights (IPR) issues at book fairs,
seminars, and conferences in the United
States and overseas.
In all of this, AAP works to educate the
public about the ways in which copyright
protection promotes creativity, which in
turn is essential to the development of mar-
kets, not only for U.S. publishers, but for
each and every country’s creators and related
industries.
AAP members and staf are interested in
work that benefts creators and publishers in
all countries and territories, and would wel-
come your input. 
For more information, please contact:
Patricia L. Judd
Director, International Copyright
Enforcement
50 F Street, N.W., Suite 400
Washington, D.C. 20001
(202) 220-4541
pjudd@publishers.org
www.publishers.org
Patricia L. Judd is the director of international
copyright enforcement for the Association of
American Publishers.
78
¹
any claim that more people do
not have access to life-saving
drugs because of high prices and that pat-
ent rights both increase prices and stand in
the way of getting treatment to those who
need it.
Both of these claims are false.
Drugs that cure AIDS and many other dis-
eases are available precisely because of patent
protection. Patent protections encourage re-
search and development by offering the pos-
sibility that a pharmaceutical company’s in-
vestment will be repaid, a powerful incentive
to companies to invest millions and millions
of dollars into risky research and develop-
ment of these medications. Without patent
protection, other manufacturers could copy
new drugs immediately. Since their costs are
minimal, they can offer their versions at a
reduced price, seriously hurting the ability
of the company that developed the drug to
recoup its costs.
In addition, those years in which a compa-
ny’s patented products are protected can help
generate the funding that makes research
into the next generation of drugs possible.
Drug companies are not only doing the
research that has helped so many, they are
ensuring that drugs reach those most in
need through donations. In 2003 alone,
the U.S. pharmaceutical industry donated
more than $1.4 billion in medicines and
services to people in more than 40 least de-
veloped countries.
Drug companies also are helping poorer
countries through a variety of innovative
public-private partnerships. ese partner-
ships include the African Comprehensive
HIV/AIDS Partnership in Botswana, in
which the government of Botswana, the Bill
& Melinda Gates Foundation, and the Merck
Co. support prevention programs, health-
care access, and treatment of HIV/AIDS,
with Merck donating two antiretroviral drugs
for treatments. e Onchocerciasis Control
Program, in turn, has greatly reduced trans-
mission of “river blindness” throughout West
Africa by combining a spraying program
and the donation of the drug Mectizan by
Merck & Co.
ese are but some examples of the ways
in which the research-based drug industry
has regularly lowered its prices to the poorest
nations of the world and has increased drug
companies’ partnership with governments
and with nongovernmental organizations to
ensure that drugs reach those in need.
Generic medicines and copycat drugs are
not always the answer for those seeking an
alternative to a patent-protected drug. Ge-
nerics, independently developed drugs that
contain the same active substance as the
original brand-name drug, are marketed in
accordance with patent law and identifed
Intellectual
Pharmaceutical Industry
and the
By Judith Kaufmann
Property Rights
78
79
Employees of Aspen Pharmaceutical Research
Laboratories, producers of generic AIDS drugs, in Port
Elizabeth, South Africa. GlaxoSmithKline has licensed
three more South African companies, in addition to
Aspen, to manufacture generic versions of its AIDS
medicines.
Chinese Vice Health Minister Wang Longde (right) shakes
hands with the executive vice president of Merck & Co. Inc.,
Judy Lewent, after announcing a comprehensive HIV/AIDS
public-private partnership — with $30 million from the
Merck Foundation — on May 11, 2005.
A worker on the assembly line of Laboratorio Cristalia,
a maker of anti-retroviral generic drugs in Sao Paulo,
Brazil. Makers of generic drugs normally have not
invested the millions that research companies spend to
fnd new drugs.
Two bottles of a medicine for liver patients,
Epogen, one real (left) and one counterfeit.
either by their own brand name or by their
internationally approved nonproprietary sci-
entifc name. Copycat drugs usually simply
copy the original drug manufacturer in the
countries with weak intellectual property
protection.
Patented drugs often have passed much
more rigorous licensing requirements than
so-called generics. Why “so-called”? Because
not all drugs that claim to be so are identi-
cal and not all are subject to the stringent
inspection process that guarantees that they
contain the same amount of active ingredi-
ents and work in the same way. Manufac-
turers of some of these drugs have not had
to invest in the extensive testing required
of the research-based industry even before
their drug can be marketed. Of course, there
are many reliable manufacturers of generic
drugs. e United States, for instance, has a
thriving generic drug industry, fully regulat-
ed and inspected by the U.S. Food and Drug
Administration.
Building on the enormous investment
already made by the research-based phar-
maceutical industry, copycat drugs can lower
drug prices, but they do nothing to guarantee
that new drugs will be available when they are
needed. Copycat drugs do nothing to ensure
that scientifc innovation translates into new
treatments that may be less toxic and more
efective. Rather, they reduce incentives to
research and thus discourage new products.
And make no mistake: e manufacturers of
generic or copycat drugs are not in business
to be generous; they, too, are reaping profts.
eir profts, however, are not being used to
further scientifc knowledge and fnd new
cures.
Patents are not the problem that people
assume them to be, either. A recent study
published in Health Afairs found that “in
65 low- and middle-income countries, where
four billion people live, patenting is rare for
319 products on the World Health Organi-
zation’s Model List of Essential Medicines.
Only 17 essential medicines are patentable,
although usually not actually patented.” If
this large amount of life-saving drugs is ei-
ther of-patent (meaning that the company
that originally invented them no longer has
an exclusive claim because the patent has ex-
pired) or not patented, then patents cannot
be the problem in getting drugs to people.
Price is not always the issue, either. When
people cite prices as a problem, they often
are comparing apples and oranges. Prices in-
clude various factors: training of health care
personnel in the use of the drug, explanatory
materials to make it safer for the consumer,
80
A woman inquires about a drug at a
street-side shop in Lagos. Surveys
indicate that more than 60 percent
of medicines on sale in Nigeria are
counterfeit, substandard, or expired.
A technician in a pharmaceutical plant in
Ahmadabad, India. Patenting is rare for 319
products on the World Health Organization’s
Model List of Essential Medicines.
even shipping and handling can be included
or not. If one drug seems cheaper but ship-
ping costs are not included, the efective cost
may be identical to that of a patented drug.
Certainly, a government-sponsored drug
company can provide lower prices to the citi-
zens of that country, since the government is
paying a large percentage of the actual cost.
ere are issues that need to be addressed,
including how to encourage even more in-
novation, especially for drugs with limited
markets or which treat diseases mostly prev-
alent in low- and middle-income countries.
Developed countries can ofer tax incentives
to encourage innovation in such areas, much
as the Orphan Drug Bill in the United States
does. (is U.S. law, administered by the
Food and Drug Administration, deals with
medications used to treat diseases and con-
ditions that rarely occur. Since there is little
fnancial incentive for the pharmaceutical in-
dustry to develop such medications, “orphan
drug status” gives a manufacturer specifc
fnancial incentives to develop and provide
such medications.) Government research
dollars can be used to do basic research, as
the National Institutes of Health does in the
United States.
Public-private partnerships are showing
the way in innovation: e Medicines for
Malaria Venture (MMV — see p. 84) and the
International AIDS Vaccine Initiative (IAVI)
are two good examples of such partnerships.
MMV, for instance, has 21 drug development
projects to ensure that the next generation of
treatment is available when drug resistance
overtakes current malaria treatment options.
As an article in the Washington Post re-
cently suggested, “ese entities are in efect
nonproft virtual drug companies confgured
to discover and develop drugs and vaccines
for neglected diseases.”
Cheap drugs are no bargain, if they do
not cure the disease and if they contribute to
drug resistance that may make the drug use-
less for everyone. Violating or bypassing pat-
ent protections is a short-term solution that
threatens the long-term health of the world’s
citizens by removing the incentives and dis-
couraging the innovation we need. 
Judith Kaufmann is a retired foreign service of cer,
who served as the director of the U.S. State
Department’s Of ce of International Health Afairs.
81
A University of
Chicago feld station
foreman examines
a Rauvolfa
serpentina plant.
The university’s
feld station in
Downers Grove,
Illinois, is part of a
program to search
for new plant-based
medicines.
82
83
¹
any of us know a family mem-
ber or friend who has benefited
from a new medicine: Advances in treating
cancer, HIV/AIDS, cardiovascular disease,
and a broad host of other afflictions have been
nearly continuous in recent decades, thanks
to — in many instances — new drug discov-
eries. Economists estimate that almost half
of the increase in life expectancy achieved
over the past 15 years in the industrialized
world can be attributed to new drugs. In the
United States alone, the economic gains from
medical innovation are estimated at more
than $500 billion per year.
Finding new cures is an extremely ex-
pensive and risky proposition, however.
Estimates about the cost of developing a
new drug vary widely, from a low of $800
million to nearly $2 billion per drug. Even
the high end of those estimates may soon
be considered a bargain. Recently, the Pfzer
pharmaceutical company announced that
it is investing $800 million just for a set of
Phase III trials for a single drug.
Where does all the money go?
In the United States and most other coun-
tries with pharmaceutical industries, private
industry undertakes or funds virtually all
discovery and development of new medi-
cines, often building on basic medical hy-
potheses developed through university and
publicly funded research. Industry scientists
searching for a new drug typically must sort
through 5,000 to 10,000 new chemical inven-
tions that look promising, in order to identify
a pool of 250 compounds that then enter into
preclinical laboratory and animal testing. Of
those 250 unique compounds, fewer than 10,
on average, will show enough potential to
qualify for Phase I human testing to establish
basic safety.
Phase 1 trials usually include a very small
group of healthy volunteers who are tested
to determine whether the candidate drug is
both safe and efective. A compound or drug
candidate that makes it through Phase I then
enters small-scale Phase II trials in patients
with a specifc condition to test whether the
compound has the intended efect on the
disease. If it shows promise, it graduates to
Phase III trials, which are wide-scale tests
involving thousands of patients in carefully
controlled clinical testing. Some drug candi-
dates undergo several diferent types of Phase
III trials in order to test for diferent kinds of
efects. On average, for every fve compounds
that make it into human trials (of the original
5,000 to 10,000 studied), U.S. government
authorities will grant the pharmaceutical
company approval to market just one.
Overall, the discovery and development of
a new medicine takes about 12 to 15 years.
Patents are granted along the way, and it
usually takes at least a few years between the
granting of patents and marketing approval.
is means that, despite the standard 20-year
e Cost of
New Drug
Developing
a
By Neal Masia
82
83
patent life, the average efective patent life for
a new drug — the amount of time where
the product is sold under patent protection
— is roughly 10 to12 years. In addition to the
direct costs of development, frms must pay
returns on the capital they invest on behalf
of shareholders over the course of a decade
or more, a cost that increases as development
times increase.
At current levels of reimbursement,
economists estimate that only about 30 per-
cent of new medicines actually earn enough
revenue during their patented product life-
cycle to cover the average upfront cost of
development. If a frm incurred the average
cost of drug development and only invented
“average” drugs, it would quickly go out of
business.
e enthusiasm and support among in-
vestors for pharmaceutical companies to fnd
new cures depends on the expected returns
of a relative handful of products. A society
that guarantees strong patent protection
helps give investors confdence that their
high-risk investments might pay of down
the road. Conversely, without confdence
that discovery of a new cure can produce a
potentially large payout, investors in phar-
maceutical frms, as well as pharmaceutical
frms looking to expand in other countries,
will demand that their funds be returned or
invest them elsewhere.
If investors made the decision to pull out
today and pharmaceutical research invest-
ments stopped, consumers would not neces-
sarily notice the absence of new medicines
for a decade or more, given the decade-long
drug-development-cycle time. Smaller frms
and biotechnology companies would cer-
tainly notice, however, since they would have
more dif culty raising investment capital if
expected returns were lower. Capital-starved
companies would soon disappear, along with
the promise they hold for new treatments.
Continued investor confdence has en-
abled large-scale research and development
to continue in the pharmaceutical industry,
in the United States and in other countries.
Pfzer alone is investing over $8 billion
this year and employing more than 12,000
scientists in the search for new cures, with
signifcant investments in cardiovascular
disease, cancer, HIV/AIDS and other infec-
tious diseases, central nervous system (CNS)
af ictions, and a wide range of other chronic
and acute diseases. New discoveries in these
areas are dependent on both the ingenuity of
scientists and the confdence of the investors
who fund their investigations.
e support of the international commu-
nity for strong intellectual property rights
regimes is a key ingredient in bolstering that
confdence. 
Dr. Neal Masia is director of economic policy at
Pfzer, Inc.
Two researchers at the Oklahoma
Medical Research Foundation,
testing an Alzheimer’s drug for a new
pharmaceutical company.
A laboratory at the U.S. biotech company
Avigen, where they are investigating new
treatments for hemophilia B.
84
85
c
very year, 300 to 500 million people
around the world are infected with
malaria, and more than one million people
die of the disease. In Africa, the burden
of malaria is on the rise for the first time
in 20 years, fueled by the rapid spread of
resistance to widely used malaria drugs
like chloroquine. As a result, malaria is the
leading cause of death for children in Africa,
killing 3,000 every day. These statistics rep-
resent an international disaster and a public
health failure.
Despite the massive burden malaria rep-
resents for developing countries, only four
of almost 1,400 new medicines developed
worldwide between 1975 and 1999 were
antimalarials. is is not enough to tackle
the problem, since new drugs are needed to
ofset the malaria parasite’s pattern of devel-
oping resistance to the ones in use.
In 1999, talks between the World Health
Organization (WHO) and the International
Federation of Pharmaceutical Manufacturers
Associations (IFPMA), in collaboration with
a number of institutions, such as the World
Bank and the Rockefeller Foundation, led to
the creation of the Medicines for Malaria
Venture (MMV). MMV is a nonproft orga-
nization that brings public, private, and phil-
anthropic sector partners together to fund
and manage the discovery, development, and
registration of new medicines for the treat-
ment and prevention of malaria.
After just fve years of operation, MMV is
managing the largest-ever portfolio of malar-
ia drug research, with 21 projects in various
stages of development. Such a rapid advance
was made possible by MMV’s pioneering col-
laboration with nearly 40 public and private
institutions around the world. MMV, for ex-
ample, looked to pharmaceutical companies
doing anticancer therapy research that has
led to the development of compounds that
are highly active against the malaria parasite.
ese companies share their knowledge with
MMV project teams once they enter into
agreements with MMV.
An integral part of agreements negotiated
by MMV is its innovative management of the
intellectual property that its partners bring
to the table. MMV manages the ownership
and licensing of intellectual property so that
the partner’s interests — whether academic,
commercial, or purely in the public interest
— are refected in the terms of agreements.
Depending on the circumstances, MMV may
own the intellectual property outright, retain
licenses to the intellectual property, or have
conditions in its agreements that, if not met,
cause the intellectual property rights (IPR) to
be transferred back to MMV.
In many cases ownership of the intellec-
tual property rights is not necessary, since
MMV is working with a company to both
discover and develop a promising com-
pound as an antimalarial. In those cases, for
MALARIA:
Find a Cure
Partnering
to
By Richard Wilder and P. V. Venugopal
84
85
example, the company may retain ownership
of the intellectual property rights and use
them while performing their obligations to
MMV to develop and bring an antimalarial
to market. e agreement will specify cer-
tain conditions that have to be met, including
price specifcations and other conditions re-
lating to access to the antimalarial by people
in poorer countries. It is only in cases where
the partner company cannot — or will not
— fulfll its obligations that MMV needs the
rights to be returned to it, so as to go forward
with the project with a diferent partner.
Regardless of the nature of the intellec-
tual property rights held by MMV, the de-
termining factor is its ability to carry out its
mission. Consequently, the focus is not on
the intellectual property rights per se, but
on the path that MMV must take to ensure
that the new antimalarials being developed
under its supervision are brought to market
and made afordable and accessible to those
who need them in the developing world. e
intellectual property rights, then, are a tool
to bring the partners in a given project to-
gether for a common goal and to ensure that
the path that MMV must take to achieve its
goals is clear.
One of MMV’s most promising drug
candidates is a synthetic peroxide, frst
discovered by scientists from the Univer-
sity of Nebraska Medical Center, Monash
University in Australia, the Swiss Tropical
Institute, and Roche Pharmaceuticals. e
drug resembles plant-derived artemisinins,
today’s most efective antimalarials. rough
an agreement arranged by MMV, Roche
Pharmaceuticals has transferred more than
three years of research results on synthetic
peroxides to the Indian pharmaceutical frm
Ranbaxy, to speed the drug’s development at
the lowest possible cost.
Today, the drug is moving into clinical
development, and could become the most
important new weapon against malaria in a
generation. is illustrates the result of inno-
vative management of intellectual property
rights by MMV to accomplish its goal — and
that of its partners — of bringing modern
medicines to market to treat malaria. 
Richard Wilder is a partner in the Washington,
D.C., of ce of Sidley Austin Brown & Wood. Dr. P.V.
Venugopal is director of international operations for
the Medicines for Malaria Venture.
In Africa, malaria is on the rise for the frst time in
20 years. It is now the leading cause of death for
children in that continent.
Artemisia annua plants, used to produce
anti-malaria medications, on the
outskirts of Arusha, Tanzania.
A 19th century bottle containing
quinine. It was the primary drug
in the treatment of malaria until
supplanted by synthetic drugs,
such as chloroquine, which are
becoming less efective against
this disease.
86
·
ith the expansion of e-com-
merce through auction
1
and
stand-alone
2
Internet web sites that sell a
wide range of products, trademark holders
in every country face a daunting enforce-
ment challenge. While legitimate businesses
can prosper on the Internet, their survival
is threatened by unscrupulous rivals who
exploit loopholes to gain unfair advantages,
pass off counterfeit goods as legitimate, and
evade enforcement. Many of these rogue
sites, though they appear to be unrelated to
each other or to be small operations, easily
can achieve gross revenues in the millions of
dollars by exploiting weaknesses in current
laws and enforcement techniques.
An international legal framework to
protect legitimate trademark holders on
the Internet does not exist yet. As a result,
enforcement by the private sector and sup-
portive governments requires persistence
and vigilance. Governments and rights hold-
ers should be aware that they can take steps
to protect their marks in an Internet world
flled with round-the-clock sales by sellers
from many nations.
We can divide these enforcement strate-
gies into two general areas, one to address
auctions sites and another for stand-alone
sites. Auction sites present special challenges
to enforcement and raise site liability issues.
(Site liability refers to the legal responsibil-
ity and culpability of the web site.) Since the
laws and policies of each country and/or
auction site vary dramatically, the topic is
too complex for this short article. Currently,
however, the preferred approach is to notify
the ofending auction site and ofer an op-
portunity to cure the violation by removing
the ofending ofers. If the violation contin-
ues, responsible site operators close repeated
violators’ auction accounts.
is article will limit itself to a general
overview of the issues related to stand-alone
sites selling counterfeit products. Focusing
on current practices in the United States, we
will examine the scope of the problem, out-
line the steps that need to be taken, review
the pitfalls that each type of action brings,
and determine what methods may succeed.
Trademarks
Protecting
on the
Internet
By Angelo Mazza
1
Auction web sites allow users to bid for items
sold by independent sellers. The sites ofer a
variety of goods that range from the mundane
to the specialized. Examples of such sites include
eBay, Yahoo!, Sell.com, and iOfer, to name only
a few.
2
Stand-alone web sites are independent retail
sites that ofer goods for sale via the Internet.
While there are many legitimate merchants, there
are also many sites that ofer only counterfeit
goods for sale. The sites ofer clothing, medicines,
luxury goods, and anything else that can be
copied for sale.
86
Widespread use of the Internet has sparked a revolution for sellers and customers. With E-commerce sites,
buying almost any product is just a few clicks away.
The private sector must remain
committed to pursuing Internet
violators, in order to protect both
trademarks and unsuspecting
customers.
87
E-buyer beware: As of yet, there is no international
legal framework to protect customers or legitimate
trademark holders on the Internet.
89
e process of dealing with web sites
selling counterfeit goods can be very time-
consuming and, unfortunately, deprives the
rights holder of immediate relief. Success
requires persistence and expertise. e In-
ternet presents special challenges for rights
holders since, in many cases, the infringing
web sites provide false or incomplete “Regis-
trant” information. is lack of accurate in-
formation presents a major obstacle to rights
holders trying to locate the site and to police
the sale of goods on the Internet.
Many legitimate companies employ teams
of in-house personnel, specialized software,
and outside service providers to locate and
track sites selling counterfeit goods. Once a
rights holder identifes a site ofering coun-
terfeit goods for sale, the holder can begin
to collect data, review databases, and gather
Whois
3
information, so as to identify those
responsible for the site.
In almost every instance, the site infor-
mation gathered from the Whois database
is woefully inadequate or completely false.
Given the lack of any penalties in the United
States for providing false or misleading infor-
mation to a database, counterfeiters fll their
Whois information with periods, dashes,
names of dead personalities, and addresses
that have them living in Atlantis or other
improbable locations. Although there has
been talk of amending the applicable U.S.
laws to require more accurate information
when registering a domain name, those ef-
forts have yet to bear fruit.
Once a site selling counterfeit goods has
been identifed, however, the rights holder
prepares cease-and-desist letters and sends
them to the Internet Service Provider (ISP)
and to the site itself. In most instances, the
site will ignore the letter. However, the site is
now on notice of violation and can no longer
claim ignorance as to its illegal activities.
Typically, ISPs are cooperative when con-
tacted, although, under the current system,
they are not required to verify any of the
information they collect. Law-abiding ISPs
will remove infringing sites from their serv-
ers. However, this is not the case when the
site selling counterfeit products becomes its
own ISP and ignores all correspondence. In
addition, there are instances of rogue ISPs
that become safe harbors for infringing sites.
e unintentional side efect of cooperative
ISPs is that many infringing sites eventually
migrate to ISPs located outside the United
States, where laws difer and ISPs are often
less cooperative.
If contacting the site fails and the coun-
terfeiter engages in a game of moving to
alternative ISPs, the rights holder may take
additional action. e rights holder may do
more research and, in some instances, hire
outside investigators to make purchases that
may lead to the source of the items or of
the site. ese investigations often reveal a
variety of sources for the counterfeit goods.
88
Home pages of some major auction web sites.
88
Although many sites are in English and con-
duct business in U.S. currency, more often
than not they operate outside the borders
of the United States. In other instances, they
collect money in the United States, but ship
counterfeit items to the purchasers from
overseas locations. is creates additional
enforcement problems for the rights holder,
who must retain overseas counsel and inves-
tigators to advance the investigation. Now
the rights holder faces mounting costs and
the peculiarities of enforcement in a foreign
jurisdiction.
e rights holder may initiate legal action
once enough information is gathered. e
legal action allows the rights holder to sub-
poena ISP records related to the operation of
the site in question. Often, the ISP records
are outdated or no longer available. If the
site is part of a larger series of sites under
common ownership, it may merit a referral
to law enforcement for criminal prosecution.
However, given the lack of resources and spe-
cialized cybercrimes units, criminal actions
represent a small percentage of enforcement
actions. e owners of replica sites
4
are
acutely aware of this lack of criminal en-
forcement as well.
e enforcement problems outlined in
this article will be reduced only when gov-
ernments create laws that level and harmo-
nize the Internet playing feld and support
private enforcement eforts. e private sec-
tor, in the meantime, must remain commit-
ted to pursuing Internet violators. 
Angelo Mazza is a partner in the New York City
frm of Gibney, Anthony & Flaherty, LLP, where he
specializes in and oversees day-to-day operations
in the Internet area. He is also the president of the
International AntiCounterfeiting Coalition
(IACC) Foundation, the educational and training
arm of the IACC .
3
The Whois database provides contact and
registration information for domain names.
4
Replica sites openly sell copies of established or
widely coveted goods.
89
Left, auction sites present special enforcement challenges. Right, the
Whois database, which provides contact and registration information for
domain names.
90
91
A
APPELLATION OF ORIGIN [trademark-
unfair competition]. A term that refers to
both a product’s geographic origin and to its
distinctive product characteristics caused
by particular geographic conditions or
methods of production. Some distinguish
an appellation of origin from an “Indication
of Source,” which refers solely to the
geographic origin of production. Roquefort
cheese is an example of an appellation of
origin because it designates both geographic
origin and product characteristics. “Paris”
perfume is an indication of source, which
refers only to geographic origin. e term
“Geographic Denomination” encompasses
both categories.
ASSIGNMENT [patent-trademark-
copyright]. A transfer of rights in
intellectual property. An assignment of a
patent, for example, is a transfer of suf cient
rights so that the recipient has title to the
patent. e assignment can be a transfer of
all rights of exclusivity in the patent, of an
undivided portion (for example, a 50 percent
interest), or of all rights within a specifed
location (for example, a certain area of the
United States). Transfer of anything less is
considered to be a “license.”
AUDIOVISUAL WORK [copyright].
A copyrightable work consisting of
images that are related, presented in a
series, and intended to be shown by the
use of a machine, as well as any sound
accompanying the work. A common
example of an audiovisual work is a
slide show, such as that used in a sales
presentation, a lecture, or an introduction to
a museum.
AUTHOR [copyright]. Either the real
person who creates a copyrightable work
or the employer, corporate or individual, of
a person who creates a copyrightable work
within the scope of employment, or, in some
circumstances, the commissioning party of
certain specifed types of works. “Author”
in copyright law includes not only writers
of novels, plays, and treatises, but also those
who create computer programs, arrange
data in reference books, choreograph
dances, take photographs, sculpt stone,
paint murals, write songs, record sounds,
and translate books from one language to
another. (See WORK MADE FOR HIRE,
JOINT AUTHORS.)
B
BERNE CONVENTION [copyright-
international]. e major multilateral
copyright treaty, signed in Berne,
Switzerland, in 1886. e Berne Convention,
whose members form the Berne Union, is
adhered to by nearly 150 nations, including
the United States. e World Intellectual
Property Organization (WIPO) serves as the
administering agency for the activities of the
Berne Union.
BEST MODE [patent]. A condition for the
grant of a valid patent. An inventor must
describe the best method he or she knows
for carrying out the invention.
C
COMMUNITY TRADE MARK CTM
[trademark-international]. A trademark
registration granted by the European
Union’s Of ce for Harmonization in the
Internal Market and enforceable throughout
EU member nations.
S
O
U
R
C
E
S
S
O
U
R
C
E
S
Glossary of
Intellectual Property Terms
90
91
COMPILATION [copyright]. A
copyrightable work consisting of a collection
and assembly of preexisting material. e
assembly must exhibit at least minimal
originality in the selection, organization,
and arrangement of the material without
making any internal changes in it.
CONTRIBUTORY INFRINGEMENT
[patent-trademark-copyright]. Indirect
infringement of intellectual property
rights in which one person contributes to
the direct act of infringement of another.
Contributory infringement of a trademark,
for example, occurs when a manufacturer
of goods aids or encourages its distributors
to pass of its goods as those of another
manufacturer.
COPIES [copyright]. As a noun, “copies”
means the material objects that store or
fx copyrightable information other than
sounds; as a verb, the act of copying.
COPYING [copyright-patent-trademark].
In copyright law, “copying” denotes two
separate but interrelated concepts. To
constitute an infringement of copyright,
a work must be a “copy” in the sense that
it is substantially similar to a copyrighted
work, it must have been “copied” from
the copyrighted work as opposed to being
the result of coincidental, independent
production or from being taken from the
same source as the copyrighted work.
Legal standards for infringement of
copyright difer from those for patents and
trademarks, neither of which require proof
of copying.
COPYRIGHT [copyright]. An exclusive
right granted or conferred by the
government on the creator of a work
to exclude others from reproducing it,
adapting it, distributing it to the public,
performing it in public, or displaying it
in public. Copyright does not protect an
abstract idea; it protects only the concrete
form of expression in a work. To be valid, a
copyrighted work must have originality and
possess a modicum of creativity.
COUNTERFEITING [trademark]. e act
of producing or selling a product containing
a sham mark that is an intentional and
calculated reproduction of the genuine
mark. A “counterfeit mark” is identical to
or substantially indistinguishable from the
genuine mark. Often, counterfeit goods are
made to imitate a popular product in all
details of construction and appearance, so
as to deceive customers into thinking they
are purchasing the genuine merchandise.
CYBERSQUATTING [trademark].
“Cybersquatting” and “cyberpiracy” are
synonymous terms that refer to the same
type of unfair competition for web sites.
e typical “cybersquatter” is one who
knowingly reserves with a registrar a
domain name consisting of the trademark
or name of a company for the purpose of
selling the right to that domain name back
to the legitimate owner.
D
DEPENDENT claim [patent]. A claim in a
patent that refers back to a previous claim
and defnes an invention that is narrower
in scope than that in the previous claim. A
dependent claim must be written so as to be
more restricted than the technology defned
in the previous claim.
DERIVATIVE WORK [copyright].
A work based on a preexisting work that is
changed, condensed, recast, or embellished
in some way.
DESCRIPTIVE MARK [trademark].
A word, picture, or other symbol that
describes something about the goods or
services in connection with which it is
used, such as purpose, their size or color,
the class of users, or the end efect on users.
A descriptive term is not considered to be
inherently distinctive; to establish validity
for registration or protection in court, it
needs proof of acquired distinctiveness,
known as “secondary meaning.” (See
SECONDARY MEANING, SUGGESTIVE
MARK).
92
93
DESIGN PATENT [patent]. A government
grant of exclusive rights in a novel,
nonobvious, and ornamental industrial
design. A design patent confers the right
to exclude others from making, using,
or selling designs that closely resemble
the patented design. A design patent
covers ornamental aspects of a design; its
functional aspects are covered by a utility
patent. A design patent and a utility patent
can cover diferent aspects of the same
article, such as an automobile or a table
lamp.
DIGITAL MILLENNIUM COPYRIGHT
ACT [copyright]. A major piece of U.S.
legislation adopted in 1998 that extensively
amended the copyright laws, in part
to conform U.S. law to various treaty
obligations, and in part to modernize the
law to take into account various new digital
technologies.
DILUTION [trademark]. A type of
violation of a strong trademark in which the
defendant’s use, while not causing likelihood
of confusion, blurs the distinctiveness or
tarnishes the image of the plaintif’s mark.
To possess the selling power and recognition
protected by the antidilution statutes, the
mark must be relatively strong and famous.
DISTRIBUTION RIGHT [copyright]. One
of the six exclusive rights held by a copyright
owner, under which the copyright owner
has the exclusive right to distribute copies
or phonorecords of the work to the public
by sale, lease, or rental. Unlike the other
rights of copyright, the distribution right
is infringed merely by a transfer of copies
of the work, whether those copies were
unlawfully or lawfully made, except under
the “First Sale Doctrine.” (See FIRST SALE
DOCTRINE.)
DOMAIN NAME [trademark]. e names
and words that companies designate for
their registered Internet web site addresses,
also referred to as a “URL.” For example:
<www.coca-cola.com > is a domain name
identifying the site of e Coca-Cola
Company. Technologically, each domain
name is unique and cannot be shared.
Domain names are registered on a frst-
come, frst-served basis.
DURATION [patent-trademark-copyright-
trade secret-right of publicity]. e term or
length of time that an intellectual property
right lasts. As a result of the Uruguay Round
Agreements Act, U.S. law was changed,
efective June 8, 1995, to adopt a patent
term of 20 years from the date on which the
patent application was fled. A trademark
continues in duration as long as there is no
abandonment of rights by nonuse or by acts
that cause the term to lose its signifcance
as an indicator of origin and to become
a generic name. e basic duration of a
copyright is the life of the author plus 70
years. Protection of information as a trade
secret lasts as long as the information
remains secret.
E
ECONOMIC ESPIONAGE ACT (EEA)
[trade secret]. A U.S. statute, adopted in
1996, which provides criminal penalties for
the theft of trade secrets. e EEA makes
it illegal to steal or fraudulently obtain
trade secrets for the beneft of a foreign
government, instrumentality, or agent and
steal trade secrets that beneft “anyone other
than the owner.”
EQUIVALENTS, DOCTRINE OF [patent].
A rule of claim interpretation under which
a product or process, although not a literal
infringement, is still an infringement if it
performs substantially the same way as the
patented invention.
92
93
F
FAIR USE [copyright-trademark]. A defense
to a charge of copyright or trademark
infringement. For copyrights, U.S. courts
consider four factors in determining if a
fair use defense exists: the purpose and
character of the disputed use; the nature
of the copyrighted work; the importance
of the portion used in relation to the work
as a whole; and the efect of the use on
the potential market for or value of the
copyrighted work. For trademarks, the
secondary user must show that he or she
is not using a descriptive, geographically
descriptive, or personal name mark in a
trademark sense but only to describe his or
her goods or services or their geographic
origin, or to name the person running the
business.
FIELD OF USE RESTRICTION [general
intellectual property-antitrust]. A provision
in an intellectual property license restricting
the licensee to use of the licensed property
only in a defned product or service market.
FIRST SALE DOCTRINE [copyright].
An exception to the exclusive right of a
copyright owner to distribute copies or
phonorecords of the copyrighted work.
Under this principle, the copyright owner
has the right to sell a copy of a book but not
the right to control subsequent sales of that
copy. (See DISTRIBUTION RIGHT.)
FIRST TO FILE [patent-trademark].
For patents, a rule under which patent
priority, and thus entitlement to a patent, is
determined by which inventor was the frst
to fle a patent application, rather than who
was frst to actually invent. is is the rule
followed by almost every nation in the world
except the United States. For trademarks,
priority among conficting applications to
register trademarks is handled by publishing
the application with the earliest fling date
for possible opposition by the applicant with
the later fling date. In the United States,
ownership of a trademark is determined by
who was frst to use it, not by who was frst
to fle an application for registration. Under
the new intent-to-use system, an application
for registration can be fled prior to actual
use of mark. (See INTENT-TO-USE
APPLICATION.)
FIRST TO INVENT [patent]. A rule
under which patent priority is determined
by which inventor was the frst to actually
invent, rather than who was the frst to fle a
patent application. First to invent is the rule
followed in the United States.
FUNCTIONALITY [patent-trademark-
copyright]. at aspect of design that makes
a product work better for its intended
purpose, as opposed to making the product
look better or to identifying its commercial
source.
G
GENERIC NAME [trademark]. A word
used by most people to name a class or
category of product or service, such as
“cellular phone.” No one person may have
trademark rights to a generic name.
GOOD WILL [trademark]. e value of a
business or of a line of goods or services that
refects commercial reputation. A business
with a well-established good will could see
all of its tangible assets destroyed, yet still
own its reputation, its good will. Trademark
infringement is a form of theft of good
will, since a trademark or service mark is a
symbol of a business’ good will.
I
IDEA-EXPRESSION DICHOTOMY
[copyright]. e fundamental rule of law
that copyright does not protect an idea;
copyright protects only specifc expressions
of an idea.
94
95
INFRINGEMENT [general intellectual
property]. An invasion of one of the
exclusive rights of intellectual property.
Infringement of a utility patent involves
the making, using, selling, ofering to sell,
or importing of a patented product or
process without permission. Infringement
of a design patent involves fabrication of
a design that, to the ordinary person, is
substantially the same as an existing design,
where the resemblance is intended to
induce an individual to purchase one thing
supposing it to be another. Infringement of a
trademark consists of the unauthorized use
or imitation of a mark that is the property
of another in order to deceive, confuse, or
mislead others. Infringement of a copyright
involves reproducing, adapting, distributing,
performing in public, or displaying in public
the copyrighted work of someone else.
INTELLECTUAL PROPERTY [patent-
trademark-unfair competition-copyright-
trade secret-moral rights]. Certain creations
of the human mind that have commercial
value and are given the legal aspects of a
property right. “Intellectual property” is an
all-encompassing term now widely used
to designate as a group all of the following
felds of law: patent, trademark, unfair
competition, copyright, trade secret, moral
rights, and the right of publicity.
INTENT-TO-USE APPLICATION
[trademark]. Since 1989 in the United States,
an optional method of applying for federal
registration of a mark on the Principal
Register based upon a declared good-faith
intention to use a mark on defned goods
or services.
INVENTION [patent]. e human creation
of a new technical idea and the physical
means to accomplish or embody the idea.
J
JOINT AUTHORS [copyright]. e
collaborating creators of a single
copyrightable work who merge their
separate contributions to the work. Joint
authorship implies joint ownership of
copyright in the work created. Co-owners
of a copyright are treated as “tenants in
common,” with each co-owner having an
independent right to license the use of a
work, subject to a duty of accounting to the
co-owners for any profts.
JOINT INVENTORS [patent]. Two or
more inventors of a single invention who
collaborate in the inventive process.
K
KNOCK-OFF [patent-trademark-
copyright]. An identical copy of a work or
product protected by patent, trademark,
trade dress, or copyright. When used as a
verb, the act of producing such a copy.
KNOW-HOW [trade secret]. Information
that enables a person to accomplish a
particular task or to operate a particular
device or process.
L
LICENSE [patent-trademark-copyright]. A
permission to use an intellectual property
right, under defned conditions – as to
time, context, market line, or territory.
In intellectual property law, important
distinctions exist between “exclusive
licenses” and “nonexclusive licenses.” An
exclusive license does not necessarily mean
that this is the one and only license granted
by the licensor. In giving an exclusive
license, the licensor promises that he or
she will not grant other licenses of the
same rights within the same scope or feld
covered by the exclusive license. However,
the owner of rights may grant any number
of nonexclusive licenses of the same rights.
In a nonexclusive license, title remains
with the licensor. A patent license is a
transfer of rights that does not amount to
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an assignment of the patent. A trademark
or service mark can be validly licensed
only if the licensor controls the nature and
quality of the goods or services sold by the
licensee under the licensed mark. Under
copyright law, an exclusive licensee is the
owner of a particular right of copyright, and
he or she may sue for infringement of the
licensed right. ere is never more than a
single copyright in a work regardless of the
owner’s exclusive license of various rights to
diferent persons.
LOGO [trademark]. A graphic
representation or symbol of a company
name or trademark, usually designed for
ready recognition. e term has no legal
signifcance in the law of trademark.
M
MISAPPROPRIATION [unfair
competition]. A common-law form of unfair
competition where the defendant has copied
or appropriated some item or creation of
the plaintif that is not protected by either
patent law, copyright law, trademark law,
or any other traditional theory of exclusive
rights.
MORAL RIGHTS [copyright-author’s
rights]. Some European and other nations’
legal systems expressly recognize certain
rights of authors beyond those strictly
recognized in copyright law. Moral rights
generally fall into three categories: the right
of an author to receive credit as the author
of a work, to prevent others from falsely
being named author, and to prevent use
of the author’s name in connection with
works the author did not create; the right of
an author to prevent mutilation of a work;
and the right to withdraw a work from
distribution if it no longer represents the
views of the author.
MUSICAL WORK [copyright]. A category
of copyrightable work expressed in notation
or sounds. A musical work can be embodied
and fxed in physical objects that are
classifed as either “copies” (sheet music)
or “phonorecords” (e.g., compact discs or
tapes). A composer’s song is covered by a
musical work copyright, but a recording of
the song is covered by a sound recording
copyright.
N
NOTICE [patent-copyright-trademark].
A formal sign or notifcation attached to
physical objects that embody or reproduce
an intellectual property right — for
example, the use of the word “patent” or
its abbreviation, “pat.,” together with the
patent number, on a patented article made
by a patent holder or his/her licensees. e
formal statutory notice of U.S. trademark
registration is the letter R in a circle symbol
®
, “Reg. U.S. Pat. & Tm. Of.,” or “Registered
in U.S. Patent and Trademark Of ce.” Many
frms use informal trademark notices, such
as “Brand,” “TM,” “Trademark,” “SM,” or
“Service Mark,” adjacent to words or other
symbols considered to be protectable marks.
Notice of copyright consists of the letter C
in a circle symbol © or the word “Copr.” or
“Copyright,” the copyright owner’s name,
and the year of frst publication.
NOVELTY [patent]. One of the three
conditions that an invention must meet in
order to be patentable. Novelty is present if
every element of the claimed invention is
not disclosed in a single piece of prior art.
O
OBVIOUSNESS [patent]. A condition of
non-patentability in which an invention
cannot receive a valid patent because a
person with ordinary skill in that technology
can readily deduce it from publicly available
information (prior art).
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ON SALE [patent]. An inventor cannot
obtain a valid patent if he or she waits for
more than the one-year grace period to
fle a patent application after a product
embodying the invention has been placed
“on sale.”
ORDINARY SKILL IN THE ART
[patent]. at level of technical knowledge,
experience, and expertise possessed by
the run-of-the-mill or ordinary engineer,
scientist, or designer in the technology that
is relevant to the invention.
P
PASSING OFF [trademark]. (1) e
substitution of one brand of goods when
another brand is ordered. (2) Trademark
infringement where the infringer
intentionally meant to mislead or deceive
purchasers. (3) Trademark infringement
where there is no proof of intent to deceive
but likelihood of confusion is proven. (4)
In British-law countries, acts illegal under
the common law, apart from registered
“trademark” law, and consisting of the
misrepresentation of one’s goods or services
as those of a competitor, usually by using a
similar mark.
PATENT [patent]. In the United States,
a grant by the federal government to an
inventor of the right to exclude others from
making, using, or selling the invention.
ere are three very diferent kinds of
patents in the United States: a utility patent
on the functional aspects of products and
processes; a design patent on the ornamental
design of useful objects; and a plant patent
on a new variety of living plant. Patents
do not protect “ideas,” only structures and
methods that apply technological concepts.
In return for receiving the right to exclude
others from a precisely defned scope of
technology, industrial design, or plant
variety, which is the gist of a patent, the
inventor must fully disclose the details of
the invention to the public. is will enable
others to understand the invention and be
able to use it as a steppingstone to further
develop the technology. Once the patent
expires, the public is entitled to make and
use the invention and is entitled to a full and
complete disclosure of how to do so.
PERFORMANCE [copyright]. To recite,
render, play, dance, or act a copyrighted
work, including the broadcast by radio
or television of a performance and
the reception of such a broadcast. e
exclusive right to “perform the copyrighted
work publicly” is granted to all types of
copyrighted works, except for pictorial and
sculptural works and sound recordings.
PHONORECORDS [copyright].
e material objects that store or
fx copyrightable sounds, other than
soundtrack accompanying a motion picture.
Phonorecords can be audiotapes, compact
discs, computer chips that store sounds, and
the like.
PIRACY [copyright-trademark]. e
act of exact, unauthorized, and illegal
reproduction on a commercial scale of
a copyrighted work or of a trademarked
product.
PRIOR ART [patent]. e existing body of
technological information against which an
invention is judged to determine if it can be
patented as being a novel and nonobvious
invention.
PROCESS CLAIM [patent]. A claim of a
patent that covers the method by which an
invention is performed by defning a series
of steps to be followed. is is in contrast to
a product claim or apparatus claim, which
cover the structure of a product.
PRODUCT-BY-PROCESS CLAIM
[patent]. A patent claim in which a product
is claimed by defning the process by which
it is made. e product-by-process form
of claim is most often used to defne new
chemical compounds, since many new
chemicals, pharmaceuticals, and drugs can
only practicably be defned by the process of
making them.
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PRODUCT CLAIM [patent]. A claim of a
patent that covers a structure, apparatus, or
composition. is is in contrast to a “process
claim,” which covers a method or process.
PUBLICATION [copyright]. e
distribution of copies or phonorecords of a
work to the public.
PUBLIC DOMAIN [general intellectual
property]. e status of an invention,
creative work, and commercial symbol that
is not protected by any form of intellectual
property law. Items in the public domain
are available for free copying and use by
anyone. e copying of items that are in
the public domain is not only tolerated but
encouraged as a vital part of the competitive
process. (See COPYING, INTELLECTUAL
PROPERTY.)
R
REDUCTION TO PRACTICE [patent].
e physical part of the inventive process
that completes and ends the process of
invention. After a reduction to practice,
the invention is complete for patent law
purposes.
RENEWAL [trademark-copyright]. e
extension of a registration of a trademark or
the extension of a copyright.
REVERSE ENGINEERING [trade secret-
copyright]. A method of obtaining technical
information by starting with a publicly
available product and determining what it
is made of, what makes it work, or how it
was produced. e engineering efort goes
in the reverse direction of usual engineering
eforts, which start with technical data and
use it to produce a product. If the product
or other material that is the subject of the
reverse engineering was properly obtained,
the process of reverse engineering is not
infringement of any trade secrets in the data
embodied in a product and it is legitimate
and legal competitive behavior.
RIGHT OF PUBLICITY [general
intellectual property]. e inherent right
of every human being to control the
commercial use of his or her identity.
S
SECONDARY MEANING [trademark]. A
meaning for a trademark or service mark
that customers associate with a particular
brand of products or services. For trade
symbols that are not inherently distinctive,
distinctiveness must be acquired in order to
be protected by a trademark or service mark.
is acquired distinctiveness is known as
“secondary meaning” because it is acquired
second in time to the primary meaning of
a word. For example, a word such as “best”
for milk is regarded as descriptive and not
inherently distinctive. e primary meaning
is that milk thus described is purported to
be the best. To achieve exclusive trademark
rights for a product called “Best Milk,” a
seller using this word must use it so that it
achieves a secondary meaning denoting that
all milk marked “best” comes from a single
commercial source.
SERVICE MARK [trademark]. A word,
slogan, design, picture, or any other symbol
used to identify and distinguish services
(retail sales services, airlines services,
insurance, investment services, and the like)
as opposed to a product.
SKILL IN THE ART [patent]. An ordinary
level of profciency in the particular
technology in which an invention is made.
SOUND RECORDING [copyright]. A
category of copyrightable work consisting
of the sounds that are recorded in a
phonorecord.
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SPECIAL 301 [international trade]. U.S.
statutory provisions requiring annual review
of trade agreement rights and foreign trade
practices of U.S. trading partners that deny
benefts to the United States or unjustifably
restrict or burden U.S. commerce. e Trade
Act of 1974, as amended by the Special 301
provisions of the 1988 Omnibus Trade and
Competitiveness Act, authorizes the U. S.
Trade Representative (USTR) to identify
and investigate potential violating countries,
recommend the suspension of trade
agreement concessions and the imposition
of duties and import restrictions, and enter
into agreements to eliminate the burdens or
restrictions on U.S. trade.
SUBSTANTIAL SIMILARITY
[copyright]. e degree of resemblance
between a copyrighted work and a second
work that is sufcient to constitute
copyright infringement by the second work.
Exact word-for-word or line-for-line identity
does not defne the limits of copyright
infringement. U.S. courts have chosen
the fexible phrase “substantial similarity”
to defne that level of similarity that will,
together with proof of validity and copying,
constitute copyright infringement.
SUGGESTIVE MARK [trademark]. A
word, picture, or other symbol that suggests,
but does not directly describe, something
about the goods or services in connection
with which it is used as a mark. A suggestive
term is considered to be inherently
distinctive and needs no proof of secondary
meaning for registration or protection in
court. For example, a polar bear for parkas
and coats merely suggests the kind of
protection that a polar bear has from the
cold. (See DESCRIPTIVE MARK.)
T
TRADE DRESS [trademark]. e totality
of elements in which a product or service
is packaged or presented, such as the shape
and appearance of a product or container,
or the cover of a book or magazine. ese
elements combine to create a visual image
presented to customers and are capable of
acquiring exclusive legal rights as a type of
trademark or identifying symbol of origin.
TRADEMARK [trademark]. (1) A word,
slogan, design, picture, or any other symbol
used to identify and distinguish goods.
(2) Any identifying symbol, including a
word, design, or shape of a product or
container, that qualifes for legal status as a
trademark, service mark, collective mark,
certifcation mark, trade name, or trade
dress. Trademarks identify one seller’s goods
and distinguish them from goods sold by
others. ey signify that all goods bearing
the mark come from or are controlled by
a single source and are of an equal level of
quality. A trademark is infringed by another
if the second use causes confusion of source,
afliation, connection, or sponsorship.
TRADE NAME [trademark]. A symbol
used to identify and distinguish companies,
partnerships, and businesses, as opposed
to marks used to identify and distinguish
goods or services.
TRADE SECRET [trade secret]. Business
information that is the subject of reasonable
eforts to preserve confdentiality and has
value because it is not generally known in
the trade. Such confdential information
will be protected against those who obtain
access through improper methods or by
a breach of confdence. Infringement of a
trade secret is a type of unfair competition.
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U
UNFAIR COMPETITION [general
intellectual property]. Commercial conduct
that the law views as unjust. A person
injured by an act of unfair competition is
entitled to relief in a civil action against
the perpetrator of the act. Trademark
infringement has long been considered to be
unfair competition. Other legal categories
recognized as being types of unfair
competition are false advertising, product
disparagement/trade libel, infringement of
a trade secret, infringement of the right of
publicity, and misappropriation.
UTILITY [patent]. e usefulness of a
patented invention. To be patentable, an
invention must operate and be capable of
use, and it must perform some “useful”
function for society.
W
WORLD INTELLECTUAL PROPERTY
ORGANIZATION (WIPO) [international].
One of the 16 “specialized agencies” of the
United Nations system. WIPO, located
in Geneva, Switzerland, was created in
1967 and is responsible for the promotion
of the protection of intellectual property
throughout the world. WIPO fulflls this
responsibility by promoting cooperation
among nations in intellectual property
matters, administering various “unions”
and other treaty organizations founded on
multilateral treaties, and creating model
laws for adoption by developing nations.
WORK MADE FOR HIRE [copyright].
A work prepared by an employee within
the scope of his or her employment or a
commissioned work that the parties agree in
writing to treat as a work made for hire. e
real person, partnership, or corporation for
whom the work was prepared is considered
to be both the “author” and the owner of
copyright from the moment of creation of
the work.
WORLD TRADE ORGANIZATION
(WTO) [international]. WTO is the only
global international organization dealing
with the rules of trade between nations.
Located in Geneva, Switzerland, it was
created at the end of the Uruguay Round of
the General Agreement on Tarifs and Trade
(GATT) negotiations in December 1993 to
oversee the operation of GATT. e WTO
entered into force with respect to the United
States on January 1, 1995. e WTO often
plays much the same role in world fnancial
and economic afairs as the United Nations
does in political afairs. Activities of WTO
include: administering trade agreements;
acting as a forum for trade negotiations;
settling trade disputes; reviewing national
trade policies; assisting developing countries
in trade policy issues through technical
assistance and training programs; and
cooperating with other international
organizations. One hundred forty-eight
nations are members of the WTO (as of
June 2005), accounting for over 97 percent
of world trade.
e information that is presented here was
adapted and excerpted with permission
from McCarthy’s Desk Encyclopedia of
Intellectual Property, ird Edition, by
J. omas McCarthy, Roger E. Schechter,
and David J. Franklyn. Copyright © 2004
by e Bureau of National Afairs, Inc.,
Washington, D.C. 20037. To contact BNA
Books, call toll free 1-800-960-1220 or visit
www.bnabooks.com.
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U.S. Government
Of ce of the U.S. Trade Representative
600 17th Street, N.W.
Washington, D.C. 20506 U.S.A.
Tel: 1-888-473-8787
E-mail: contactustr@ustr.eop.gov
Internet: http://www.ustr.gov
Internet site includes reports, speeches,
press releases, and other documentation on
a range of trade-related subjects, including
intellectual property (IP).
U.S. Department of Commerce
International Trade Administration
14th Street and Constitution Avenue, N.W.
Washington, D.C. 20230 U.S.A.
Tel: 202-482-3809
E-mail: tic@ita.doc.gov
Internet: http://www.ita.doc.gov/
Internet site includes periodically updated
articles on U.S. intellectual property rights
laws, "Special 301" enforcement activities,
and the TRIPS Agreement.
U.S. Department of Commerce
Strategy Targeting Organized Piracy (STOP)
Internet: http://www.export.gov/stop_fakes_
gov/index.asp
is is the Internet site for a recent U.S.
initiative that helps U.S. businesses protect
their intellectual property at home
and abroad.
U.S. Department of Commerce
U.S. Patent and Trademark Of ce
P.O. Box 1450
Alexandria, Virginia 22313-1450 U.S.A.
Tel: 703-308-4357
Internet: http://www.uspto.gov
Internet site provides access to information
on intellectual property as related to patents
and trademarks, including rules, advice,
defnitions, submission forms, fees,
and more.
U.S. Department of Justice
Computer Crime and Intellectual Property
Section (CCIPS)
10th & Constitution Ave., N.W.
John C. Keeney Building, Suite 600
Washington, D.C. 20530
Tel: 202- 514-1026
Fax: 202- 514-6113
Internet: http://www.cybercrime.gov/
ip.html
Internet site ofers, among many topics,
an overview of IP policy and programs,
guidance to law enforcement on the
investigation and prosecution of violations
of federal intellectual property laws, and a
comprehensive listing of federal criminal
laws that pertain to the protection of IPR.
U.S. Department of State
Bureau of Economic and Business Afairs
Trade Policy and Programs
Of ce of International Intellectual Property
Enforcement
2201 C Street, N.W.
Washington, D.C. 20520 U.S.A.
Tel: 202-647-3251
Internet: http://www.state.gov/e/eb/tpp/
Internet site provides an overview of
economic and trade topics arranged by
current issues; press statements; remarks,
testimony, and briefngs; topics; and regional
information.
International Intellectual Property
Rights Training Database
http://www.training.ipr.gov/
is database, maintained by U.S.
government agencies and IP industry
associations and sponsored by the U.S.
Department of State, provides training
and technical assistance relating to
protecting IPR.
Sources of Information on
Intellectual Property
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U.S. Immigration and Customs
Enforcement
National Intellectual Property Rights
Coordination Center
1300 Pennsylvania Avenue, N.W., Rm. 3.5A
Washington, D.C. 20229 U.S.A.
Phone: 202-344-2410
Fax: 202-344-1920
Internet: http://www.ice.gov/graphics/
cornerstone/ipr
e National Intellectual Property Rights
Coordination Center (IPR Center) is
a multi-agency center responsible for
coordinating a unifed U.S. government
response regarding IPR enforcement
issues. Investigative personnel provide core
staf ng from Immigration and Customs
Enforcement (ICE) and the Federal Bureau
of Investigation (FBI). Particular emphasis
is given to investigating major criminal
organizations and those using the Internet
to facilitate IPR crime.
U.S. Customs and Border Protection
1300 Pennsylvania Avenue, N.W.
Washington, D.C. 20229 U.S.A.
Tel: 202-354-1000
Internet: http://www.cbp.gov/xp/cgov/
import/commercial_enforcement/ipr/
Internet site has information on all aspects
of IPR enforcement in the United States.
U.S. Library of Congress
U.S. Copyright Of ce
101 Independence Avenue, S.E.
Washington, D.C. 20559-6000
Tel: 202-707-3000
Internet: http://www.copyright.gov
Internet site presents a publication titled
Copyright Basics, as well as information
on copyright, including frequently asked
questions, and documents of the World
Intellectual Property Organization.
International Organizations
European Patent Of ce
Erhardtstrasse 27
D-80331 Munich
Germany
Tel: (+49 89) 23 99 -0
Fax: (+49 89) 23 99-44 65
Internet: http://www.european-patent-
of ce.org/index.en.php
Internet site includes general information
about the European Patent Of ce, of cial
communications, a patent information
center, a toolbox for applicants, and patent
information products.
World Intellectual Property
Organization
P.O. Box 18
CH-1211 Geneva 20, Switzerland
Tel: +41-22 338 9111
Fax: +41-22 733 54 28
Internet: http://www.wipo.int
Internet site provides the history and
objectives of this organization, as well as a
list of its members, the texts of treaties it
administers, and a list of contracting parties
or signatories to these treaties.
World Trade Organization
154 Rue de Lausanne
CH-1211 Geneva 21, Switzerland
Tel: 41-22-739-5111
Fax: 41-22-731-4206
E-mail: enquiries@wto.org
Internet: http://www.wto.org/english/
tratop_e/trips_e/trips_e.htm
Internet site, in addition to providing
general information about the WTO,
includes special sections on topics such as
goods, services, environment, development,
dispute settlement, and IP.
Associations and Trade Organizations
American Intellectual Property Law
Association
2001 Jeferson Davis Highway
Suite 203
Arlington, Virginia 22202 U.S.A.
Tel: 703-415-0780
Fax: 703-415-0786
E-mail: aipla@aipla.org
Internet: http://www.aipla.org
Internet site provides information aimed
at improving laws relating to patents,
trademarks, copyrights, unfair competition,
and other felds of IP.
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American Society of Composers,
Authors, and Publishers
One Lincoln Plaza
New York, New York 10023 U.S.A.
Tel: 212-621-6000
Fax: 212-724-9064
E-mail: info@ascap.com
Internet: http://www.ascap.com
Internet site for this membership association
of over 68,000 composers, songwriters,
lyricists, and music publishers provides
information aimed at protecting the rights
of its members by licensing and paying
royalties for the public performance of their
copyrighted works.
Association of American Publishers, Inc.
50 F Street, N.W.
Suite 400
Washington, D.C. 20001 U.S.A.
Tel: 202-347-3375
Fax: 202-347-3690
Internet: http://www.publishers.org
Internet site for the principal trade
association of the U.S. book publishing
industry contains information on copyright
and electronic publishing.
Business Software Alliance
1150 18th Street, N.W.
Suite 700
Washington, D.C. 20036 U.S.A.
Tel: 202-872-5500
Fax: 202-872-5501
Internet: http://www.bsa.org
Internet site reports on the activities of
software-industry organization with piracy
enforcement programs in 65 countries and
anti-piracy hotlines operating in nearly
all nations; includes a list of international
addresses of BSA ofces.
International Intellectual Property
Alliance
1747 Pennsylvania Avenue, N.W.
Suite 825
Washington, D.C. 20006 U.S.A.
Tel: 202-872-5500
Fax: 202-872-5501
Internet: http://www.iipa.com
Internet site includes general information
on the IIPA (a coalition that represents
U.S. copyright-based industries in bilateral
and multilateral eforts to improve the
international protection of copyrighted
works), as well as reports on worldwide
piracy by country and issue.
Motion Picture Association of America
1600 Eye Street, N.W.
Washington, D.C. 20006 U.S.A.
Tel: 202-293-1966
Internet: http://www.mpaa.org
Internet site for this organization and its in-
ternational counterpart, the Motion Picture
Association, which serve as a voice for the
motion picture, home video, and television
industries. It includes information on MPAA
anti-piracy eforts and its positions on laws
and regulations governing the industries.
Music Publishers Association
243 Fifth Avenue, Suite 236
New York, New York 10016 U.S.A.
Tel/Fax: 212-327-4044
Internet: http://www.mpa.org
rough its copyright resource centers,
this association disseminates copyright
information with the aim of increasing
copyright responsibility; also includes links
to music information resources on the
World Wide Web.
National Music Publishers Association
711 ird Avenue
New York, New York 10017 U.S.A.
Tel: 212-834-0100
Fax: 646- 487-6779
Internet: http://www.nmpa.org
Internet site for this association — which
is concerned with legislative, legal, and
educational matters related to copyright
and new technology — includes extensive
frequently asked questions about copyright
and licensing.
Software Publishers Association
1730 M Street, N.W.
Suite 700
Washington, D.C. 20036-4510 U.S.A.
Tel: 202-452-1600
Internet: http://www.siia.net
Internet site provides information related to
fghting software piracy.
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Educational Institutions
(Internet Sites)
Berkeley Digital Library SunSITE
http://sunsite.berkeley.edu/Copyright/
Sponsored by the Library at the University
of California at Berkeley and Sun
Microsystems, Inc., this Internet site ofers
articles; references; lists of initiatives and
projects; and links on copyright, IPR, and
licensing issues.
Cornell University
Legal Information Institute
http://www.law.cornell.edu/topics/topic2.ht
ml#intellectual%20property
Includes brief summaries of IPR law topics
with links to key primary source material,
other Internet resources, and useful ofnet
references.
Franklin Pierce Law Center
e IP Mall
http://www.ipmall.fplc.edu/
Provides information and links to IP
resources worldwide, including daily
news, the Congressional Research Service,
publications, and papers.
Stanford University
Copyright and Fair Use
http://fairuse.stanford.edu
Includes such primary materials as
statutes, judicial opinions, and treaties and
conventions; current legislation; and an
overview of copyright law.
Stanford University
Copyright and Intellectual Property
http://palimpsest.stanford.edu/bytopic/
intprop
Includes a menu of source materials on U.S.
copyright law.
University of California, Los Angeles
e UCLA Online Institute for Cyberspace
Law and Policy
http://www.gseis.ucla.edu/iclp/hp.html
is electronic archive ofers a cyperspace
law bibliography, as well as information
going back 10 years, including cases
involving cyberspace law.
University of Iowa
Copyright and Multimedia Law for Web
Builders and Multimedia Authors
http://bailiwick.lib.uiowa.edu/webbuilder/
copyright.html
Includes IP law articles, primers, and useful
links to other web sites, institutions, and
core documents.
University of Washington School of Law
Center for Advanced Study and Research
on Intellectual Property (CASRIP)
http://www.law.washington.edu/Casrip
Includes information on the CASRIP
program, as well as a newsletter issued
three times a year that reports on CASRIP
research and other IP-related activities and
highlights IP developments around the
world.
Other
Copyright Clearance Center
222 Rosewood Drive
Danvers, Massachusetts 01923 U.S.A.
Tel: 978-750-8400
Fax: 978-646-8600
E-mail: info@copyright.com
http://www.copyright.com/
Web site of an intermediary between
copyright holders and content users. It
facilitates the exchange of reuse rights and
royalties through a wide range of licensing
services that grant permission to reproduce
copyrighted materials.
Digital Future Coalition
1341 G Street, N.W.
Suite 200
Washington, D.C. 20005 U.S.A.
Tel: 202-628-9210
E-mail: dfc@dfc.org
http://www.dfc.org
e Digital Future Coalition (DFC) is
a collaboration among U.S. proft and
nonproft groups that deal with IPR. It
is committed to striking an appropriate
balance in law and public policy between
protecting IP and afording public access
to it.
104
105
Alikhan, Shahid and Raghunath Mashelkar
Intellectual Property and Competitive
Strategies in the 21st Century
e Hague; New York: Kluwer Law
International, 2004.
Anderson, Robert D. (ed)
Competition Policy and Intellectual Property
Rights in the Knowledge-Based Economy
Calgary, Alberta, Canada: University of
Calgary Press, 1998.
Callan, Bénédicte
Pirates on the High Seas: e United States
and Global Intellectual Property Rights
New York: Council on Foreign Relations,
Inc., 1998.
Cook, Curtis W.
Patents, Profts and Power: How Intellectual
Property Rules the Global Economy
London: Kogan Page, 2002.
e Digital Dilemma: Intellectual Property
in the Information Age
Committee on Intellectual Property
Rights and the Emerging Information
Infrastructure. Washington, D.C.: National
Academy, 2000.
Elias, Stephen and Richard Stim
Patent, Copyright, and Trademark
Berkeley, California: Nolo Press, 2003.
Field, omas G.
Introduction to Intellectual Property: Cases
and Materials
Durham, North Carolina: Carolina
Academic, 2003.
Glick, Mark A., Lara A. Reymann, and
Richard Hofmann
Intellectual Property Damages: Guidelines
and Analysis
Hoboken, New Jersey: John Wiley, 2003.
Goldstein, Paul
Copyright's Highway: From Gutenberg to
the Celestial Jukebox
Stanford, California: Stanford University,
2003.
Granstrand, Ove (ed)
Economics, Law, and Intellectual Property:
Seeking Strategies for Research and Teaching
in a Developing Field
Boston, Massachusetts : Kluwer Academic,
2003.
Halbert, Debora J.
Resisting Intellectual Property Law
New York: Routledge, 2005.
Harris, Lesley Ellen
Digital Property
Ontario, Canada: McGraw-Hill Ryerson
Ltd., 1998.
Hawke, Constance S.
Computer and Internet Use on Campus:
A Legal Guide to Issues of Intellectual
Property, Free Speech, and Privacy
San Francisco, California: Jossey-Bass, 2001.
Herrington, Wayne W. and George W.
ompson
Intellectual Property Rights and
United States International Trade Laws
Dobbs Ferry, New York: Oceana, 2002.
Additional Readings on
Intellectual Property
104
105
Hurley, Deborah and Hal Varian (eds)
Internet Publishing and Beyond: e
Economics of Digital Information and
Intellectual Property
(publication of the Harvard Information
Infrastructure Project)
Cambridge, Massachusetts: MIT Press,
1998.
Idris, Kamil
Intellectual Property: A Power Tool for
Economic Growth
Geneva, Switzerland: World Intellectual
Property Organization, 2002.
King, J. Ralph, Andrew D. Dorisio, and
Michael S. Hargis
Intellectual Property
3rd ed. Lexington, Kentucky: University
of Kentucky, College of Law, Of ce of
Continuing Legal Education, 2002.
Koepsell, David R.
e Ontology of Cyberspace: Philosophy,
Law, and the Future of Intellectual Property
Chicago, Illinois: One Court, 2000.
Landes, William M. and Richard A. Posner
e Economic Structure of Intellectual
Property Law
Cambridge, Massachusetts: Belknap Press of
Harvard University, 2003.
Lessig, Lawrence
Free Culture: How Big Media Uses
Technology and the Law to Lock Down
Culture and Control Creativity
New York: Penguin, 2004.
Letterman, G. Gregory
Basics of International Intellectual Property
Ardsley, New York: Transnational, 2001.
Lindsey, Marc
Copyright Law on Campus
Pullman, Washington: Washington State
University, 2003.
Marlin-Bennett, Renee
Knowledge Power: Intellectual Property,
Information, and Privacy
Boulder, Colorado: Lynne Rienner, 2004.
Matsuura, Jefrey H.
Managing Intellectual Assets in
the Digital Age
Boston, Massachusettts: Artech House,
2003.
Matthews, Duncan
Globalising Intellectual Property Rights:
e TRIPs Agreement
London and New York: Routledge, 2002.
McCarthy, J. omas, Roger E. Schechter,
and David J. Franklyn
McCarthy’s Desk Encyclopedia of
Intellectual Property
3rd ed. Washington, D.C.: e Bureau of
National Afairs, 2004.
McManis, Charles R.
Intellectual Property and Unfair
Competition in a Nutshell
5th ed. St. Paul, Minnesota: omson/West,
2004.
Merges, Robert P., Peter S. Menell,
and Mark A. Lemley
Intellectual Property in the New
Technological Age
3rd ed. New York: Aspen, 2003.
Moore, Adam D.
Intellectual Property and Information
Control: Philosophic Foundations and
Contemporary Issues
New Brunswick, New Jersey: Transaction,
2004.
Nimmer, Melville B. et al.
Cases and Materials on Copyright
5th ed. New York: Matthew Bender &
Company, 1998.
O'Connor, Edward F.
Intellectual Property Law and Litigation
2nd ed. Chicago, IL: Tort Trial and
Insurance Practice Section, American Bar
Association, 2003.
106
107
Peloso, Jennifer (ed)
Intellectual Property
New York: H.W. Wilson, 2003.
Perelman, Michael
Steal is Idea: Intellectual Property Rights
and the Corporate Confscation of Creativity
New York: Palgrave, 2002.
Poltorak, Alexander and Paul Lerner
Essentials of Intellectual Property
New York: John Wiley and Sons, 2002.
Poynder, Richard (ed)
Caught in a Web: Intellectual Property
in Cyberspace
London; Washington, D.C.: Denwent/
omson Scientifc, 2001.
Rahnasto, Ilkka
Intellectual Property Rights, External Efects,
and Anti-Trust Law: Leveraging IPRs in the
Communications Industry
Oxford; New York: Oxford University, 2003.
Razgaitis, Richard
Valuation and Pricing of Technology-Based
Intellectual Property
New York: John Wiley and Sons, 2003.
Ryan, Michael P.
Knowledge Diplomacy: Global Competition
and the Politics of Intellectual Property
Washington, D.C.: e Brookings
Institution, 1998.
Saint-Amour, Paul K.
e Copyrights: Intellectual Property and
the Literary Imagination
Ithaca, New York: Cornell, 2003.
Schechter, Roger E. and John R. omas
Intellectual Property: e Law of Copyrights,
Patents and Trademarks
St. Paul, Minnesota: omson/West, 2003.
Sell, Susan K.
Private Power, Public Law: e Globalization
of Intellectual Property Rights
Cambridge, United Kingdom; New York:
Cambridge University, 2003.
ierer, Adam and Wayne Crews (eds)
Copy Fights: e Future of Intellectual
Property in the Information Age
Washington, D.C.: Cato Institute, 2002.
United Nations Educational, Scientifc,
and Cultural Organization
Copyright Laws and Treaties of the World
Looseleaf volume with supplements.
Washington, D.C.: Bureau of National
Afairs, 1956- .
U.S. General Accounting Ofce
Intellectual Property: Deposits of Biological
Materials in Support of Certain Patent
Applications
Washington, D.C.: GAO, 2000.
Wilson, Lee
e Trademark Guide
New York: Allworth Press, 1998.
Winner, Ellen P. and Aaron W. Denberg
(eds)
International Trademark Treaties With
Commentary
Dobbs Ferry, New York: Oceana, 2004.
106
107
Cybercitizenship.org: Just for Kids
http://www.cybercitizenship.org/index.html
http://www.cybercitizenship.org/4kids/
4kids.html
The Cybercitizen Partnership Awareness
Campaign offers approaches for teaching
children about cyberethics, cybercrime
information, and links to adult and
youth resources.
Cyberethics for Kids
http://www.cybercrime.gov/rules/
kidinternet.htm
U.S. Department of Justice offers teachers a
lesson plan outline and exercises for K-8.
CyberPilot’s License
http://etec.hawaii.edu/cpl/home.html
The CyberPilot’s License is dedicated
to the study of web ethics and the
development of healthy on-line learning
environments. Students, teachers, parents,
and policymakers are welcome to join
the discussion forums, examine on-line
resources, and help create an archive of
educational materials.
CyberSpacers
http://www.cyberspacers.com/
This site provides activities for kids:
the CyberSpacers’ oath; join the Super
Cyber Team; and learn about cybercrime
through on-line quizzes, comics, games
and contests.
FA©E
http://www.copyrightkids.org
Friends of Active Copyright Education
(FA©E) is a new initiative of the Copyright
Society of the U.S.A. designed to provide
a broad range of resources to foster and
support copyright education.
A FA©E subcommittee developed the
copyrightkids.org web site to teach school-
age children the basics of copyright law.
Learn From the Past, Create the Future:
Inventions and Patents
http://wipo.int/freepublications/en/patents/
925/wipo_pub_925.pdf
is new on-line publication on intellectual
property is the frst of a new series of free
oferings by WIPO aimed at schoolchildren
(ages 8-14) as the creators of the future.
MENC/ASCAP Foundation
http://www.musicunited.org/10_
education.html
MENC: The National Association for
Music Education, with support from the
ASCAP Foundation, has developed a school
curriculum that teaches students at all
levels about the creative community and
copyright. The program is offered not only
by grade level but also by teacher’s class
subject specialty, i.e. History, Government
Affairs, English, etc.
Netmonkey
http://www.netmonkey.info/
Convicted copyright pirate Mike Nguyen
has created a site to educate young people
about the risks of on-line piracy. This site
contains a downloadable copy of “Net
Monkey Weekly,” an entertaining and
informative newsletter directed at children,
which addresses the ills of piracy.
KIDS’ CORNER:
Educational Materials for Children
and Young Adults
108
Parade Classroom
http://www.paradeclassroom.com/tg_
folders/2003/1026/1026_info.html
Parade Classroom, a web site for professional
educators, offers a Teacher’s Guide titled
“The Music Swapping Crackdown.” The
guide encourages students to research the
issue and decide what’s right and wrong.
Play It Cybersafe
http://www.playitcybersafe.com/
This web site provides children, parents,
and teachers the opportunity to prevent
cybercrime through knowledge of the law,
knowledge of their rights, and the ability to
avoid misuse on the Internet. The Business
Software Alliance and the Hamilton
Fish Institute at the George Washington
University created this site. It is a Cyber
Crime and Intellectual Property Theft
Prevention and Education Project funded by
the U.S. Department of Justice to educate
the public on cybercrime and intellectual
property theft.
Pro Music
http://www.pro-music.org/
Pro Music is an international web site that
supports legitimate on-line services.
It provides information about copyright
laws and presents artists speaking out
against piracy.
What’s e Download?
http://www.whatsthedownload.com/
A comprehensive public education
campaign created by the Recording
Academy that strives to empower
consumers to make informed ethical
and legal decisions when getting their
music through digital technology, while
understanding the part they play in the
future of music.
The U.S. Department of State assumes no responsibility for the content and availability of
the resources from other agencies and organizations listed above, in “Sources of Information
on Intellectual Property,” and in “Additional Readings on Intellectual Property.”
All Internet links were active as of Fall 2005.
108
Cover Montage: Counter clockwise from
top: National Museum of American History,
Transportation Archives, Smithsonian Institution –
AP/Wide World Photo; PhotoSpin – PictureQuest
(RF) – AP/Wide World Photo (2) – PhotoSpin
– AP/Wide World Photo (2).
Page 3: University of Missouri-Kansas City, Miller
Nichols Library, Special Collections, Popular
American Sheet Music; Geof Brightling/Getty
Images. 5: AP/Wide World Photo (4) except
bottom left Milos Bicanski/Getty Images.
6: AP/Wide World Photo (2). 7,8: AP/Wide World
Photo (3). 11: Library of Congress (2) – AP/Wide
World Photo. 13: © SSPL/The Image Works; AP/
Wide World Photo – © Science Museum/SSPL/
The Image Works; AP/Wide World Photo.
14: AP/Wide World Photo (3) – Creatas Images
(RF)/PictureQuest; © Peter Hvizdak/The Image
Works. 17: Courtesy WIPO.int. 19: NRM/SSPL/The
Image Works; © Science Museum, London/
Topham/The Image Works – © SSPL/The Image
Works. 21: © Topham/The Image Works – AP/
Wide World Photo. 22: AP/Wide World Photo
– Alessia Pierdomenico/Reuters – © 2002 Richard
Lord /The Image Works; AP/Wide World Photo.
24: AP/Wide World Photo (3). 27: AP/Wide World
Photo – Courtesy www.training.ipr.gov.
29: Reuters. 33: Reuben Sprich/Reuters – Finbarr
O’Reilly/Reuters; AP/Wide World Photo.
34: AP/Wide World Photo (3). 37: Reuters;
AP/Wide World Photo. 38: Kenny Wu/Reuters;
Simon Kwong/Reuters. 41: AP/Wide World Photo
– Getty Images (RF). 43-47: AP/Wide World
Photo (8). 51: © Monika Graf/The Image Works
– David McNew/Getty Images. 52- 61: AP/Wide
World Photo (8). 63: AP/Wide World Photo; David
McNew/Getty Images (2). 65: top left Frederic
J. Brown/AFP/Getty Images; AP/Wide World
Photo (4). 67: AP/Wide World Photo – Pornchai
Kittywongsakul/Getty Images. 71: AP/Wide
World Photo – AFP/AFP/Getty Images; David
Silverman/Getty Images. 72: AP/Wide World
Photo (3), bottom left Sergei Guneyev/Time Life
Pictures/Getty Images. 75: AP/Wide World Photo
(2). 76: AP/Wide World Photo (2); top right Francis
Dean/The Image Works. 79: Reuters – AP/Wide
World Photo (3). 80-83: AP/Wide World Photo (5).
85: Anna Wang/MMV.org; AP/Wide World Photo
– © SSPL/The Image Works. 87: Tannen Maurey/
The Image Works – AP/Wide World Photo; ©
Francis Dean/The Image Works. 88: Courtesies
ebay.com; yahoo.com; sell.com. 89: Courtesies
iofer.com; whois.com.
Executive Editor: George Clack
Managing Editor: Mildred Solá Neely
Art Director/Design: Min-Chih Yao
Photo Research: Maggie Johnson Sliker
CREDITS:
(Credits from left to right are separated by semicolons, from top to bottom by dashes.)
U. S. DEPARTMENT OF STATE
Bureau of International Information Programs
2006
http://usinfo.state.gov/
U. S. DEPARTMENT OF STATE
Bureau of International Information Programs
http://usinfo.state.gov/
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Intellectual Property Rights
T A B L E O F C O N T E N T S

FOCUS
ON
INTRODUC TION II. LAWS IN EVOLUTION

What Is Intellectual Property? ............................................................................................... 2 I. INTERNATIONAL PERSPEC TIVES Why Protecting Intellectual Property Rights Matters ................................................... 10 A Short Guide to International IPR Treaties ..................................................................... 16 Intellectual Property Training and Technical Assistance Programs .......................... 26 Jordan Benefits From Intellectual Property Reforms...................................................... 28 A Message From Jackie Chan: “Fakes Cost More”........................................................... 31 Taking Action: How Countries Are Fighting IPR Crime .............................................. 32 e U.S. Approach: Traditional Knowledge, Genetic Resources, and Folklore ........ 40

e Challenge of Copyright in the Digital Age ................................................................ 50 What Is “Fair Use”? ................................................................................................................ 59 e Importance of the Public Domain............................................................................... 60 Roundtable: Enforcement, a Priority for All Countries................................................. 62 New Tools for Fighting Optical Disc Piracy ..................................................................... 70 III. ISSUES BY INDUSTRY A Trade Association at Work ............................................................................................... 74 Intellectual Property Rights and the Pharmaceutical Industry.................................... 78 e Cost of Developing a New Drug .................................................................................. 82 Malaria: Partnering to Find a Cure.................................................................................... 84 Protecting Trademarks on the Internet ............................................................................. 86 IV. SOURCES Glossary of IP Terms.............................................................................................................. 90 Sources of Information on IP .............................................................................................. 100 Additional Readings on IP ................................................................................................... 104 Kids’ Corner: Educational Materials for Children and Young Adults........................ 107

images. which in turn translate into faster rates of economic growth. refrigerators. for example. What Is INTRODUC TION THE BOTTOM LINE  “ um and Coca-Cola. names. finding that “across the range of income levels. Artists. compared to less then 10 percent 50 years ago. court case brought to establish the authorship of Trinidad musician Lionel Belasco. literary and artistic works. compared to makers of chairs. became a big hit for the Andrews Sisters in the 1940s.S. Intellectually or artistically gifted people have the right to prevent the unauthorized use or sale of their creations. Yet.S. and stores. and designs used in commerce: the informa- tion and original expressions of creative individuals known as intellectual property (IP)? They do so because they know safeguarding these property rights fosters economic growth. Belasco’s search for recognition and compensation would not have had a happy ending.Intellectual Property ? By Thomas G. The World Bank’s Global Economic Prospects Report for 2002 confirmed the growing importance of intellectual property for today’s globalized economies. WHAT IS INTELLECTUAL PROPERTY?  2 hy do countries such as the United States. and symbols. buildings. people whose work is essentially intangible face more difficulties in earning a living if their claim to their creations is not respected. exports now depend on some form of intellectual property protection. inventors. authors. provides incentives for technological innovation. and others unable to rely on locks and fences . Japan. intellectual property rights (IPR) are associated with greater trade and foreign direct investment flows. Field Jr. and other tangible goods. just the same as owners of physical property. and The Netherlands protect inventions. and attracts investment that will create new jobs and opportunities for all their citizens. It also sparked a famous U.” e lawyer acting for the man who published Belasco’s original score proved to the court that “Rum and Coca-Cola” was the Creole musician’s work and no one else’s. such as cars.” In the United States alone. If his publisher had sued in a country with weak or non-existent protections. studies in the past decade have estimated that over 50 percent of U.” perhaps the best-known Calypso song of all time. who had written the song several decades earlier under the title “L’Année Passée. Belasco won recognition for his creation and also received compensation for the unauthorized use of his work because the United States has laws that protect the intellectual property of talented individuals like him and enforces those laws against those who would violate them.

e Indian Parliament finally passed a law in 1999 to protect the intellectual creations of its computer scientists. registered trademark ( ).® ™ Left. communications. and trademark ( ). Increased recognition and support of intellectual property also has much to do with the rapidly rising standards of living in countries like China and India. the cover for the original sheet music for “Rum and CocaCola. e result: a burgeoning high-tech industry producing some of the world’s 3 . and health care would not exist without strong IP support. India was losing the battle to retain the best and the brightest of its engineers and computer scientists. to protect their work turn to IP rights to keep others from harvesting the fruits of their labor. Just a few years ago. e lack of protection for their intellectual property was forcing those scientists and technicians to emigrate to countries where their hard work could be protected and kept safe from unfair exploitation by competitors seeking easy advantages. Below. Beyond making it possible for innovators and artists to be compensated fairly and for countries to attract foreign investment and technology. Most advances in transportation.” before Lionel Belasco’s publisher won his lawsuit. intellectual property protection is critical to consumers. agriculture. intellectual property symbols in the United States: copyright (©).

mandates that the period of copyright protection cover the life of the author plus 50 years. sold. and computer software.S. licensed. inventors. . the inventor is given the exclusive right to prevent others from making. recording. copyright does not protect new ideas and processes. artistic. strangers may reproduce a portion of works for purposes of scholarship. associated rights permit intellectual property to be treated as an asset that can be bought. Also. In the United States. for instance — can rightfully claim copyright.S. copyright industries accounted for 6 percent of the U. bookstores and newsstands were added to “core” industries. Patents One might say that a patent is a contract between society as a whole and an individual inventor. Copyrights offer essentially the only protection for music. literary. poems. criticism. upon a work having been created in fi xed form. periodicals. by patents. and creators to protect their property from unauthorized uses. However. and other works of cultural value. book publishing. too. novels. for up to 20 years — in return for the inventor’s disclosing the details of the invention to the public. KEY FORMS OF INTELLECTUAL PROPERTY  he key forms of intellectual property are patents. Gross Domestic Product.S. Economy. trademarks. but it does not cover newly collected facts as such. motion pictures. Copyrights also endure much longer than some other forms of IP. and selling a patented invention for a fi xed period of time — in most countries. they may be protected. copyrights. e U.S.S. registration confers important remedial advantages at little cost. or even given away at no cost. e scope of this exception is discussed in more detail in the article “What Is ‘Fair Use’?” on page 59. Ready access to those remedies has spawned enormous U. e Berne Convention. or $626. fi lms.S. entertainment industries. and trade secrets. the “core” U. rights are limited. by Stephen Siwek. however. many countries have national copyright centers to administer their copyright systems. Because intellectual property shares many of the characteristics of real and personal property. For all works. for example. architecture. Under the Berne Convention. in 2002. Copyright Office serves as a place where claims to copyright are registered and where documents relating to copyright may be recorded when the requirements of the U. radio and TV broadcasts. and this system is administered by the Library of Congress’ Copyright Office.2 billion. too. or teaching. IP laws enable owners. Copyright protects arrangements of facts. and to perform or display the work publicly. Computer programs and sound recordings are now protected. In the 2004 report. the 1886 international agreement under which signatory states recognize each other’s copyrighted works. Moreover. As artists and creators have developed new forms of expression.S. No formal registration is needed to protect them in the countries party to that convention. to make copies. these categories have expanded to include them. Similar “fair use” provisions exist in other countries. if at all.most advanced software and employing thousands of workers who might otherwise have left India for more lucrative parts of the world. copyright law are met. Regardless of who holds them. In the United States. and other qualifying works are protected by copyright as soon as they exist. news reporting. According to the 2004 edition of Copyright Industries in the U. however — even foreign ones — prompt U. Copyright Copyright is a legal term describing the economic rights given to creators of literary and artistic works. for example. Under the terms of this social contract. Only an author or those deriving their rights through the author — a publisher. e report defines “core” copyright industries as newspapers. including the right to reproduce the work. the Berne Convention permits copyright to be conditioned. using. music. as it is in the United States. the Constitution gives Congress the power to enact laws establish4 ing a system of copyright.

the renowned American dancer — are protected by copyright laws. Here. Nevada. King. Chairman of Open Port Technology. Serbia and Montenegro. writers. Randy Storch holds a patent granted to his company for least-cost routing (LCR) technology. her company performs one of her dances. A worker hangs a seven-story Spider-Man on the side of a hotel in Las Vegas. all of which are covered by the copyright laws of most countries. His recorded performances are copyrighted. 5 . Copyright laws protect this superhero character. His company says LCR reduces the cost of routing messages over the Internet. left.The works of composers. plays his guitar. This newspaper reader in Belgrade. Legendary blues master B. Night Journey. and choreographers — such as Martha Graham. can choose among a large number of newspapers and magazines. although the name Spider-Man™ now is also a trademark of Marvel Comics.. as is most of the music he plays. Inc.B.

Although secrecy is expensive to maintain.) is often takes two or more years and is expensive. firms must restrict access to premises and documents. Trade secrets. the more it needs legal protection for its commercial secrets. hat. are not easily obtained. those claims are examined by experts. especially those that require substantial investments but. technology is closely held. Companies that cannot rely on a country’s courts to help preserve important secrets must rely on self-help. compilations of information that provide a business with a competitive advantage. or within easy reach of ordinary artisans. however. can be easily duplicated by competitors. once sold. e larger the company. ey may. More likely. such as the formula for Coca-Cola. Unlike patents. If inventors had to rely on secrecy to protect their inventions. however. patent protection has encouraged the development and distribution of new technologies. Trade Secrets Any information that may be used in the operation of a business and that is sufficiently valuable to afford an actual or potential economic advantage is considered a trade secret. information needed for critical Above. and protection is not free. educate key employees and government inspectors.Many products would not exist without patent protection. and without any procedural formalities. and fleece. much important but undisclosed information often would die with them. When patents are not available. Patent rights are granted not for vague ideas but for carefully tailored claims. and closely monitor publications and trade show presentations. applicants must negotiate claims of appropriate defensible scope. Right. such as a database listing customers. trade secrets are protected for a theoretically unlimited period of time. (Defensible scope means that applicants must be careful in setting the boundaries of what their invention consists of and what can be protected from infringement in their invention. large companies rely heavily on it when patents are not available. the California Institute of Technology makes money out of patents for the rovers it created for NASA by licensing their image to toymaker Lego for commercial use. severely limit the number of people with access to competitively important information. At least since 1474. tend to escape. Patents. Arizona Cardinals football team’s running back Marcel Shipp displays his team’s trademark-protected new logo on a helmet. To avoid protecting technology already available. Examples of trade secrets can be formulas for products. when first granted by the Republic of Venice. for example. 6 . Under the best of circumstances. Because patent claims vary as much in value as the technologies they protect. and even advertising strategies and distribution processes.

In villages. but from merchandising rights protected by trademarks. roughout most of the world. but more can afford to buy Toyota or Honda brands. however. Some adults dream of Ferrari automobiles. have been popular with young girls for decades. Other Forms of Intellectual Property Within the basic forms of intellectual property. And consider. 7 . Trademarks are especially important when consumers and producers are far away from one another. if any. If trademark rights were to expire. Barbie™ is one of toymaker Mattel‘s most successful trademarks. names of companies that treat customers well become increasingly valuable over time.S. the dubious quality of counterfeit and fake drugs and their potential for causing great harm. Trademarks Trademarks are commercial source indicators. ese consumers need trademarks to seek or avoid the goods and services of particular firms. U.5 billion in goods. the baseball cap bearing the team’s symbol. purchasers of products bearing the names or logos of famous sports teams or events would probably have assumed no connection. while copyrights and patents eventually expire. many variations and special kinds of protection are possible. much less an endorsement of quality between the sports team and. which identify a good as originating in a locality where a given quality. Yet. say. for example. distinctive signs that identify certain goods or services produced or provided by a specific person or enterprise. for example. trademarks must be registered to be enforceable. few. and Hot Wheels toy cars. consumers assume both. baseball teams alone licensed uses of their trademarks on $2. Much support for the Olympics. the “recipes” for making Pepsi or Coke constitute trade secrets closely held by the Coca-Cola and Pepsi companies.5 percent of world trade. In Above. Geographical indications.operations will be shared only if adequate trade secret protection is available. cobblers’ names used to serve that function. or other characteristic of the good is essentially attributable to its geographic origin. Trademark protection is also widespread in sports. estimated to account for 2. Lego building blocks. At an earlier time. Left. If not. if not death. local employees will be trained beyond the level necessary to perform essentially unskilled assembly tasks. Increasingly. and registrations must be renewed. derives not from copyrighted broadcasts. reputation. although the ingredients in these soft drinks are public knowledge. As early as 1993. consumers would be collectively harmed as much as owners. Barbie dolls. here dressed as astronauts. are an example. Some countries separately protect geographical indications for goods such as French cognac or Scotch whiskey. Imagine the confusion if unaffi liated firms could sell products under another company’s trademark. to unsuspecting users. Children ask for Barbie dolls.

works having purely aesthetic appeal. ose ending with “edu” are controlled.456. renewal. few people regard them as merely addresses. a non-profit U. EMERGING IP ISSUES: DOMAIN NAMES  Bangalore Bio 2005. are protected by copy- right.123.com” domain names for sale at hefty premiums. still-developing rights of publicity. as well as protection unique to boat hulls and computer chips. a three-day biotechnology trade show featuring discoveries by Indian scientists and business opportunities.S. Japan. ey are treated as a subset of trademarks to prevent consumer confusion. under agreement with the U.” If that were the end of it.” Various entities control the registration. Also.the United States. Other countries — notably in Europe — offer copyright-like protection. also under agreement with the U. ey are governed by rules established by the Internet Corporation for Assigned Names and Numbers (ICANN). In the early days of the Internet. and the like are protected in a variety of ways. a tourist agency registered “Barcelona. Department of Commerce. Many industrial designs are protected in the United States. the United States offers two specific types of statutory protection for new plant varieties. Designs that serve no purpose other than to indicate commercial source may be protected under trademark law. in the United States. Because useful directories are so far unavailable.com” as its domain name. and the like. Based on trademarks or related. however. respectively. organization.com”. Because domain names often comprise celebrities’ or companies’ names. Moreover. as well as to protect business interests. there would be no problem. Similarly. geographical indications are protected with collective marks and certification marks. For example. Like telephone numbers. ose ending with “com” and a few other terms have a global reach. chairs. India’s increased support of IPR has helped lift the country’s living standards. trademarks. he need for new forms of IP sometimes arises. In the United States. and the assignment of Internet addresses has posed particularly difficult issues. and transfer of domain names depending on the final portion of any alphanumeric address.S.edu”. “BBC.uk”. or “yale. individuals quick to understand this registered many “. by Educause. which went on to 8 . Internet addresses have the basic form “123. Department of Commerce. most addresses also have an alphanumeric form such as “BBC. famous athletes and performers are able to license or to forbid fraudulent or misleading commercial uses of their names and images. such as jewelry or patterns that may be applied to fabrics. e unique part of each (“BBC” or “Yale”) is registered as a “domain name. Addresses ending with country codes “fr” or “uk” are subject to the laws of France and the United Kingdom.” Just as postal addresses indicate unique physical locations.S. a move denounced by the Spanish city of Barcelona. domain names indicate unique locations in “cyberspace. and South Korea as design patents. the ornamental or aesthetic aspects of electrical appliances. well-known figures often earn more from endorsements than from activities underlying their fame.

movies. Under the most favorable circumstances. 1986-1993. Besides encouraging the creation of new technologies. Introduction to Intellectual Property. cost-effective means to secure. Holders of domain names intending to suggest unauthorized affi liations were condemned as “cybersquatters. is among his more recent publications. For example. He credits much of his general understanding of intellectual property to students who attend from abroad.edu/ tfield/tgf. well-documented harm posed by counterfeit goods. as well as improved health and economic wellbeing. even when that is true. Experience has shown that cancelling them is insufficient if others can then re-register. coordination across countries for IPR protection remained inadequate until recently. should understand how IP protection serves those ends. IP MATTERS.” Procedures were soon established to prevent misleading registrations or have ownership transferred to others with superior claims of legitimacy. those who consciously palm off medical products under false labels are apt to be unconcerned about whether their goods are worthless or toxic to unsuspecting users. Local cultures are also at stake. works that would cost far more if copyrights in such works were locally enforced. enforcement of IP rights can help eliminate serious health risks. transfer. as well as promote public health and safety. For more information. they generate little besides cynicism.htm. but in practice do not. some remain beyond reach. patent and trademark laws are useful as well to prevent serious. time and money must be spent to have a domain name transferred. to support innovation and protect IP. see: http://www. however. Such problems have been alleviated by imposing significant civil and criminal penalties on cybersquatters. authors. Although effective IP enforcement serves important economic ends. they are often displaced by the illegal sale of cheap or free music. it also promotes a variety of other common social goals. Intellectual property rights were first included in the Uruguay Round negotiations of the General Agreement on Tariffs and Trade (GATT). and books originating abroad. on paper. 9 . TRIPS member countries should be aware that if their IP laws seem. By providing the opportunity for pharmaceutical companies to recoup investments in research. TRIPS requires signatories to make it easier for their citizens and others to obtain and enforce IP rights. and others are often supported in ways that are relatively independent of the need for private risk capital. although it does not deal with domain names as such.  Professor Thomas G. with the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS). The casebook. Also. Yet. many addresses may falsely suggest sponsorship by the same person or firm. Still. Field Jr. People everywhere who are concerned about cultural growth and preservation. Conversely. But maintaining registrations of possibly hundreds of spurious addresses is a major waste of money. musicians. VERY MUCH  lthough the first international treaties protecting intellectual property rights — the Paris Convention for the Protection of Industrial Property and the Berne Convention for the Protection of Literary and Artistic Works — were reached in the 1880s.establish its superior claim to that domain name. helped launch the Franklin Pierce Law Center in New Hampshire in 1973. and enforce IP rights boost cultural development and standards of living. Works by local artists.piercelaw. and further measures will be needed to halt activities that often mislead computer users throughout the world.

Society benefits because this incentive to create will yield a rich and varied cultural menu for its citizens. .SECTION I: INTERNATIONAL PERSPECTIVES Intellectual Property Rights Matters By E. such as the World Bank. Clause 8 reads. cultural. there is much about intellectual property protection on which everyone can agree. Scientific. artists. Many international institutions. In fact. Anthony Wayne Why Protecting  ntellectual property issues are getting more and more attention these days. This concept even has been enshrined in the U. to reflect developments since the 1600s. after which the material becomes available for public use.org).S. and Cultural Organization (UNESCO). What comes out of such an examination is the conclusion that intellectual property protection is a vital part of social. But if copyright protection is important for reaching cultural objectives.” a law that protects the creative products of authors. COPYRIGHTS AND CULTURE  10 e can credit 17th century England with the concept of a “copy right. far too often the issues are framed in such a way as to highlight controversy and polarize debate. filmmakers and software developers. the World Intellectual Property Organization (WIPO). to promote the progress of science and useful arts. then it is equally true that the theft of these copyrighted goods — that is. “the Congress shall have power . the pirating of cultural works — is a threat to the creative sectors in our societies. In fact. one can say that copyright protection is a necessary ingredient for ensuring cultural wealth in our societies. if you visit UNESCO’s web site (http://www. whose Article I. Unfortunately. Protection of intellectual property rights alone will not necessarily bring about this development. it is worth spending some time considering how intellectual property rights (IPR) developed and what role they play in achieving widely shared objectives. But it is hard to imagine that a country could ever reach these goals in the absence of such protection. . recognize this link. To arrive at a fuller understanding of the issue. and economic development. and even the United Nations Educational. by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries.” e essential idea behind a copyright is simple: Artists and creators should be able to enjoy the fruits of their labor for a specified time period. Section 8.unesco. and cultural policies and provide help in finding ways to fight piracy. Indeed. Constitution. scientific. and. singers. you will find an entire section devoted to the issue and a list of programs and publications that explain the benefits of copyright to educational. .

An illustration by Theodore R. the industry is in better shape and moviegoers around the world enjoy new and exciting releases primarily because Hong Kong authorities took decisive action to combat the piracy problem.C. new authors. ey have known that whatever they produce will be immediately pirated — stolen — and they will not be provided the means to develop their talent. Today’s bicycle manufacturers build on the patented work of several 19th century inventors. Ethiopian musicians went on a seven-month strike in 2003 to press for better anti-piracy measures from the government. Today. 11 . and new stories on fi lm around the world have never been made available. is is not an abstract argument: It has happened on all continents. where a thriving movie industry was so hurt by rampant piracy that. including counterfeit paintings of renowned Italian artists. ese artists all understood the importance of protecting their works from pirates. D. Davis in Harper’s Weekly magazine (July 10. Many new musical voices. Similar developments have taken place in the world of music. Policemen display some of the hundreds of fake works of art they seized in Milan in 2005. 1869) shows examiners at work at the U. just a few years ago. observers were predicting it would disappear from the fi lmmaking map. Patent Office in Washington. simply because the incentives were not there for these artists to take a risk. Governments support artists by conducting raids of counterfeiters’ facilities and destroying their fake products. While there has been much press play recently regarding on-line downloading of music and movies in developed countries like the United States. A good example is Hong Kong. a tobacco label showing a man riding a “velocipede.S.” the French term for a precursor of the bicycle in the late 18th century. in fact it is in the developing world that much of the serious damage is being done. Here. Studios in Bangladesh’s “Dhaliwood” movie industry went on strike in March 2004 to protest the problem of piracy and demand action by the government.

A good example of this today can be found in Jordan. phrase. e report also found that “the pharmaceutical industry represents Jordan’s second leading sector. symbols. anyone can make. Employment in the health-services sector has increased 52 percent since 1997. it will provide the level of confidence in an economy needed to attract foreign investment and spur technology transfer. manufacturing processes. did indicate that stronger patent regimes could: 1) lead to increased global trade. 2) attract more foreign direct investment. especially patents.S. In exchange. Constitution.” e concept of a patent is based on a trade-off. 3) lead to increased licensing of technologies to. or designs. or a combination of words. They thus identify the producer of a product and serve as an indicator of quality. or design. use. a machine that was to have a critical influence on America’s subsequent development. and possibly more local production. symbol. many of them do know from their studies that one of the first patents issued was for Eli Whitney’s cotton gin. including developing ones. For example. e report noted that the strengthened intellectual property regime. e International Intellectual Property Institute (IIPI) released a comprehensive report in August 2004 that looked at the establishment of globally competitive pharmaceutical and biomedical technology industries in Jordan. “spurred a new focus on research-based innovation for Jordanian pharmaceutical companies.PATENTS AND INNOVATION  atents protect diverse inventions such as industrial designs. and from 1999 to 2002. is has been shown in a number of studies looking at the relationship between intellectual property. patents were recognized in the U.” Another 2002 World Bank publication. After the exclusive period of time elapses. Development. phrases. or sell the invention. and the WTO: A Handbook.5 percent in 2001. whether in industry or politics.” according to an IIPI release. which in turn translate into faster rates of economic growth. that identifies and distinguishes the source of the goods of one party from those of others. the public receives the benefit of the invention. willing to try something new. As a result.S.8 percent in 1997 to 3. drug exports from local firms grew by 30 percent. and development. a study highlighted in the World Bank’s Global Economic Prospects Report 2002 found that “across the range of income levels. Some forms of trademarks . and 4) contribute to higher growth rates. While most American schoolchildren probably do not know that patents are mentioned in the U. But if this is true for America’s experience. e inventor is granted an economic incentive to take risks and create. particularly for patents. high-tech products.” TRADEMARKS AND CONSUMER PROTECTION  trademark is a word. Strong intellectual protection will not only encourage innovation. e inventor or innovator is given the exclusive right to make or use the invention for a limited period of time. noted a number of studies which. Like copyrights. as well as the inventor’s knowledge for application in other uses. intellectual property rights 12 are associated with greater trade and foreign direct investment flows. despite the lack of clear-cut results. 28).” is was reflected in a jump in the healthservice contributions to the Jordanian GDP from 2. and molecular compounds. then it is just as true for other countries. Americans have always prided themselves in being a nation of innovators and inventors. e report found that “Jordan’s economy has benefited greatly from the recent adoption of better intellectual property protections. where strengthened patent protection has been linked to tangible economic benefits (see story on p. Trade. The Constitution granted Congress the powers to promote “the progress of science and useful arts” by providing inventors the limited but exclusive right to their “discoveries. They also inform consumers where to seek recourse if the product fails. Constitution. patents are an important part of America’s history. most countries’ rules require the inventor to reveal the method behind the invention so that others may understand and learn from it.

Howe patented the machine in the United States in 1846. invented in 1845. 13 . A sketch of Eli Whitney. A phony Pokemon card. held up next to a real one at Nintendo’s Redmond. A patented device that has brightened our world: American inventor Thomas Edison’s filament lamp (1879). To fight counterfeiters. who invented the cotton gin and patented it in 1793. left. Washington. with the first practical lightbulb. and was able to sue other companies for infringement of his patent rights. offices.A plate from the catalogue of the 1871 London International Exhibition shows an Elias Howe sewing machine. Nintendo is training customs officials and police in the United States how to tell the difference between real and fake cards.

came from Crayola®. now a registered trademark of Binney & Smith. copyright protection lasts for the life of the author plus an additional 70 years for works such as books and movies created after January 1. pirated music compact discs (CDs) and movie digital video discs (DVDs) — they lose the authentic manufacturers’ assurance of quality and accountability. The first children’s crayons ever made. Aspirin® is a Bayer AG Company registered trademark. in 1903. When consumers buy counterfeit and pirated goods — in this case.Enduring quality: Visitors to the Great Wall in China can still see the original brick maker’s mark on some of its bricks. 1978. These marks were assurances of quality and accountability to the emperors who ordered the building of this cultural wonder. a well-known brand for this pain reliever. Some old packages and containers of Bayer Aspirin. In the United States. 14 . The German company Bayer was granted a patent for this wonder drug and launched it on the market in 1899.

15 . and protecting public health and safety are all commonly held goals. We all want to live in societies where these values are cherished and fostered. It can threaten the health and safety of the public.S. they might bring to mind items such as fake Rolex watches. the Associated Press reported from Beijing that 47 people had been accused of selling fake infant formula. He sold mislabeled and adulterated pesticides needed to control mosquitoes and. e United States believes strongly in the value of protecting intellectual property rights. spurred on in part by the personal experience of losing her sister. has understood the dangers and threats posed by counterfeiting. Promoting cultural development. not fiction. and trademarks. U. In testimony before the U. Counterfeiting is a serious public health and safety threat in the developing world as well. an act that authorities said led to the deaths of dozens of children. a man from the state of Alabama pled guilty to 28 counts of counterfeiting and pesticide misbranding charges. especially in the developing world. indirectly. He was arrested there in 2001 and in 2002 was brought to the United States to stand trial. Assistant Attorney General Christopher Wray provided examples of trademark violations.S. IP AND SOCIETY  here is a common thread that runs through the above discussion of copyrights.  E. Assistant Secretary of State for Economic and Business Affairs. No one knows this better than the head of Nigeria’s National Agency for Food and Drug Administration and Control. Dorothy Akunyili. who died because of a counterfeit insulin injection. Unfortunately.S. Zippo lighters. accountability. it is worth remembering the role of intellectual property protection in our daily lives. it is fact. Senate Judiciary Committee in March 2004. fostering innovation and growth. In May 2004. But she has bravely continued her work. But counterfeiting of trademarks has another serious consequence. In the current debate surrounding intellectual property.S. Visitors to the Great Wall in China can still see the original producer’s mark on some of its bricks. Anthony Wayne is U. the U.S. or Louis Vuitton handbags. According to the report. This mark allowed the emperors of that time to be assured of quality and. She. e counterfeiting of these goods does inflict serious harm on legitimate companies. is assurance of quality and accountability is completely lost when counterfeiters illegally use a trademark and deceive consumers with their goods. and it deprives governments of lost revenues. which was detailed in a May 2004 front-page article in the Wall Street Journal. like many others. In another case in 2002. states. and stands ready to work with others to promote such protection. After exposing thousands in our most vulnerable population to counterfeit baby formula. subsequent police raids uncovered thousands of bags of counterfeit milk powder with the labels of 45 different brands. if needed. the manufacturer. patents. Her story. Counterfeit pharmaceuticals also have become a serious and deadly problem around the globe. seems to come straight from an action novel. for the reasons outlined above and more.have been around for thousands of years. One of the more tragic stories comes from China. West Nile virus. Department of Justice convicted a California man on federal charges involving a conspiracy to sell counterfeit baby formula. in early 2004. e United States is not immune to this aspect of the counterfeiting epidemic. He noted that. and the active ingredients. to municipalities and private businesses in a number of U. Her work to expose and combat counterfeit pharmaceuticals has led to assassination attempts against her life and arson attacks against her facilities. e defendant falsely identified the brand name of the pesticide. When many people think of counterfeit goods. the defendant fled to Canada in 1995.

enforceable dispute settlement. 2) It is the first international intellectual property agreement that mandates detailed civil. TRIPS incorporates and builds upon the latest versions of the primary intellectual property agreements administered by the World Intellectual Property Organization (WIPO). trade- . e significance of the TRIPS Agreement is three-fold: 1) It is the first single.International IPR Treaties By Paul E. in effect. and border enforcement provisions. TRIPS applies basic international trade principles to member states regarding intellectual property. e international community. truly international agreement that establishes minimum standards of protection for several forms of intellectual property. 16 As a strong adherent of the TRIPS Agreement and all other international IPR treaties discussed below. the Paris Convention for the Protection of Industrial Property. TRIPS.” meaning that WTO members are not free to pick and choose among agreements. the U. TRIPS  he TRIPS Agreement came into force in 1995. including national treatment and most-favored-nation treatment. however. and use of seven forms of intellectual property: copyrights.S. scope. and the Berne Convention for the Protection of Literary and Artistic Works. ey are subject to all the WTO’s multilateral agreements. agreements that go back to the 1880s. did not have a single source for intellectual property obligations and norms until the 1994 Uruguay Round of the General Agreement on Tariffs and Trade created the World Trade Organization (WTO) and included the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS). criminal. in turn. are essential to achieving the robust intellectual property protection that spurs global economic expansion and the growth of new technologies. lays the groundwork for a strong and modern IPR infrastructure for the world community. Because they create common rules and regulations. government encourages other countries to join and implement them. TRIPS establishes minimum standards for the availability. Salmon A Short Guide to  trong protection for intellectual property rights (IPR) worldwide is vital to the future economic growth and development of all countries. TRIPS is unique among these IPR accords because membership in the WTO is a “package deal. and 3) It is the first international intellectual property agreement that is subject to binding. international IPR treaties. as part of the Agreement Establishing the World Trade Organization. including TRIPS.

namely the WIPO Copyright Treaty (WCT) and the WIPO Performances and Phonograms Treaty (WPPT). Since the conclusion of the TRIPS Agreement. 17 . and undisclosed information (trade secrets). see the WTO web site at http://www.org. advanced biotechnology. as well as an explanation of its provisions.The home web page for the World Intellectual Property Organization (WIPO). least-developed countries were given an additional 10 years to implement TRIPS patent and “undisclosed information” provisions as they relate to pharmaceuticals. to implement their obligations. geographical indications. such as public health and economic development. to provide such protection. Developing countries that did not provide patent protection for particular areas of technology on their date of application were given an additional five years. however. developed countries were to have implemented the agreement fully by January 1. For texts of the WIPO treaties discussed below.wto. particularly in addressing new technological developments. 2005. with the possibility of further transition upon request. the World Intellectual Property Organization has addressed digital copyright issues in the so-called Internet Treaties. It sets the floor for minimum IPR protection.) According to TRIPS. the international body for the protection of IPR and the administering agency for most international IP agreements. the process of creating uniform global standards of laws or practice. it does not address several new developments. Least-developed members were given until January 1. patents. (For the complete text of the TRIPS Agreement. Developing-country members and members in transition to a market economy were entitled to delay full implementation of TRIPS obligations until January 1. industrial designs. not the ceiling. What follows are summaries of other WIPO treaties that complement the TRIPS Agreement. such as the Internet and digital copyright issues. see: http: //www. Because the TRIPS Agreement is a decade old. marks. layout designs for integrated circuits.wipo. until January 1.int/. 2006. 1996. and international harmonization. It spells out permissible limitations and exceptions in order to balance the interests of intellectual property with interests in other areas. 2000. At the 2001 WTO Ministerial Conference in Doha.

adopted on October 27. to a large degree. 18 . minimization of the elements to obtain an application fi ling date. that is. Other key features of the TLT include the introduction of an intent-to-use application system (with proof of use prior to registration). PATENT LAW TREATY  he Patent Law Treaty (PLT). The PLT harmonizes certain patent application procedures in order to reduce or eliminate formalities and the potential for loss of rights. entered into force on April 28. including the United States. Under the TLT. 1996. with 10-year renewals. at less cost. e TLT gives service marks — the distinctive identifiers of businesses that offer a service. is standing committee recommended that the WIPO General Assembly hold a diplomatic conference March 13-31. however. entered into force on August 1. merging national and international formal requirements associated with patent applications and patents. changes of name and address. Many countries had required that any signatures submitted in support of registration of a mark be notarized or otherwise legalized in accordance with the laws of that nation. 2005. is holding discussions regarding harmonization of substantive patent law. and simplified procedures for recording changes in name and ownership of trademark applications and registrations. e TLT requires member nations to register service marks and treat them as they would trademarks. the TLT saves time and money in the preparation and fi ling of documents for the application. The PLT does not harmonize substantive patent law. the laws of each country that set forth the conditions that must be met in order to receive a patent for an invention in that country. and Geographical Indications (SCT) is conducting negotiations on proposed revisions to the TLT. streamlined renewal procedures. WIPO. is feature enables trademark owners to complete and fi le trademark documents more quickly. Industrial Designs. From the trademark owner’s perspective. It streamlines the process for post-registration renewals. recording assignments. The TLT was enacted to simplify procedures in the application and registration process and to harmonize trademark procedures in different countries. many foreign countries treated trademarks and service marks differently. as opposed to goods — “equal” status with trademarks. WIPO’s Standing Committee on Trademarks. are party to the TLT as of July 1. adopted by WIPO in June of 2000. Member countries to the TLT are now required to permit the use of multi-class applications. An additional advantage of the TLT is the harmonization of the initial and renewal terms of trademark registration among signatory countries: e TLT provides for an initial 10-year term. Thirty-three states. 2005. Overall. enabling trademark owners to fi le a single application covering multiple classes of goods and services. to consider adoption of the revised TLT.TRADEMARK LAW TREATY  he Trademark Law Treaty (TLT). 2006. the TLT is intended to facilitate international trade: It is of particular importance to individuals and small businesses looking for markets in other countries. The PLT is the product of several years of multilateral negotiations on harmonizing global patent systems. and powers of attorney. Previously. Currently. it is no longer necessary in most instances to go through these procedures. e PLT will make it easier for patent applicants and patent owners to obtain and maintain patents throughout the world by simplifying and. 1994. Another significant feature of the TLT that benefits trademark owners is its prohibition of requirements by national offices for authentication or certification of documents as well as signatures on trademark applications and correspondence. The TLT harmonizes procedures of national trademark offices by establishing the maximum requirements a contracting party can impose.

the PCT.  imposes a limit on the formal requirements that Contracting Parties may impose. The resulting WIPO treaty. It also encourages small businesses and individuals to seek patent protection abroad. with their national patent office or with WIPO as a receiving office. 2005. before applicants must commit themselves to undertake the expenses of translation. “Puffing Billy. is automatically lodges the application for patent protection in all 128 Contracting Parties of the PCT. when the Executive Committee of the Paris Convention for the Protection of Intellectual Property called for a study of how to reduce.. Eventually. was signed in Washington. the PCT assists innovators in obtaining patent protection throughout the world.  eases representation requirements for formal matters. By simplifying patent application fi ling. and  provides for correction or addition of priority claims and restoration of priority rights. 1984. 30 months. Berliner gramophone. for applicants and patent offices.  provides a basis for the electronic fi ling of applications. 1888. 2001. e treaty provides a longer period of time. there are 128 Contracting Parties to the PCT. and 2004.  provides relief with respect to time limits that may be imposed by the Office of a Contracting Party and reinstatement of rights where an applicant or owner has failed to comply with a time limit and that failure has the direct consequence of causing a loss of rights.” e PLT:  simplifies and minimizes patent application requirements to obtain a fi ling date. PATENT COOPERATION TREATY SYSTEM  he roots of the Patent Cooperation Treaty (PCT) go back to 1966. his invention became the basis for the record industry. national fi ling fees.” here seen outside of London’s Patent Museum (today’s Science Museum). The German imperial patent 5789 was granted to Karl Benz in 1886 for the design of an “oil spirit motor tricycle. Emile Berliner patented a form of recording in which sound waves were photoengraved on a zinc disc in 1887. the duplication of effort involved in filing and obtaining patent applications for the same invention in different countries. He patented this in 1813. The treaty was amended in 1979. in 1970 and entered into force in 1978. called an “international” application. Under this WIPO-administered treaty. As of September 15. nationals or residents of a contracting state fi le a single patent application. The first Benz motor car. D. 1890.C.William Hedley developed the system that gave locomotives with smooth wheels sufficient traction. and prosecution in every country in which they 19 . the same year he unveiled his famous steam locomotive.

Trademark owners may designate additional countries if they decide to seek protection in more member countries or if new countries accede to the protocol. e Madrid Protocol. The first treaty. the 30-month period allows applicants to be more selective as to the countries in which they will fi le. Applications may be fi led in English. is is a major improvement over the 12-month priority period provided under the Paris Convention for patent applicants. MADRID SYSTEM FOR THE INTERNATIONAL REGISTRATION OF MARKS  he Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks — the Madrid Protocol — was adopted in Spain’s capital on June 27. WIPO publishes the “international application. burdensome administrative requirements for the normal transfer of business assets often made it difficult for trademark owners to carry out valid assignments of their marks internationally. since a simple. It provides a cost-effective and efficient way for trademark holders — individuals and businesses — to ensure protection for their marks in multiple countries through the fi ling of one application with a single office. or Spanish. single procedural step serves to record subsequent changes in ownership or in the name or address of the holder with WIPO’s International Bureau. Before the protocol was enacted. the mark is protected just as if that office had registered it. The protocol is one of two treaties comprising the Madrid System for international registration of trademarks. 1995. e nonbinding indication helps applicants decide whether to proceed with their patent applications in national or regional offices. no local agent is needed to fi le the application. and entered into force on December 1. e Madrid Protocol is a fi ling treaty and not a substantive harmonization treaty. Registration renewal also involves a simple. . e Madrid Protocol also simplifies the subsequent management of the mark. An application for international registration has the same effect as a national application for registration of the mark in each of the countries designated by the applicant. e protocol allows the holder of an international registration to fi le a single request with a single payment. single procedural step. Once the trademark office in a designated country grants protection.want protection. Moreover. 1989.” one of 11 patent offices designated by WIPO that currently meet the treaty’s minimum staffing and documentation requirements. As of September 15. Patent offices also benefit from these nonbinding indications of patentability when deciding whether to grant national or regional patents based upon PCT applications. with 10-year renewal periods. more 20 and more trademark owners are using the Madrid Protocol every year to protect their trademarks in foreign countries. developed because some countries had problems with the operation of the Madrid Agreement. the 1891 Madrid Agreement. As a result. in order to record the assignment of a trademark with all the member countries. is nonbinding indication is a preliminary search and/or examination by an “International Authority. French.” together with a nonbinding indication as to the potential patentability of the invention. By providing applicants with more time and information to evaluate the strength of their potential patent and to determine marketing plans. provides for the registration of trademarks in several countries through the filing of one international trademark registration with WIPO in Geneva. Under the PCT. 2005. there were 66 contracting parties to the Madrid Protocol. with one set of fees. Foreign search reports identify relevant documents that help patent offices to conserve resources in the examination process and to improve the quality of examination. International registration lasts 10 years. is seen as an improvement to the system for international registration of trademarks. in one currency. in one language.

William Shockley (seated). Brattain at the Bell Telephone Laboratories in 1948. Thanks to the Madrid Protocol’s improvements to the system for international registration of trademarks. ultimately. A woman looks at Microsoft® products at a shop in Brussels. it is easier for companies like Microsoft to protect their marks in foreign countries. 21 .Nobel Prize winners Drs. the need for new or revised IP treaties to deal with issues such as domain names. and Walter H. Their invention of the transistor spawned the Information Age and. John Bardeen (left).

is typical of the products that the TRIPS Agreement protects under the rubric of geographical indications.” One of Italy’s culinary delights. 22 . Only about 130 bakeries and cake shops in that city are allowed to produce these cakes with a seal of quality under a registered trademark. Parmesan cheese. IPR protections reward the ingenuity of breeders of new plant varieties. have kept the trade secret of the exact components of their Christmas cake for more than 100 years.Bakers from Dresden. Germany. “Echter Dresdner Christstollen. The so-called Internet Treaties — the WIPO Copyright Treaty and the WIPO Performances and Phonograms Treaty — address digital copyright issues that cropped up with the development of the Internet.

was amended on September 26.If the basic application — or registration upon which the international registration is based — is cancelled for any reason in the first five years. even if international registration fails. The Budapest Treaty eliminates the need to deposit microorganisms in each country where patent protection is sought. Contracting states benefit because they can rely on the treaty’s uniform standards to assure effective deposit and public availability. e holder also preserves the rights acquired in each member country. cold tolerant. and provides a mechanism of distribution of the deposit. is series of applications keeps the priority date of the original international registration in each country. or simply aesthetically more pleas23 . INTERNATIONAL CONVENTION FOR THE PROTECTION OF NEW VARIETIES OF PLANTS  he Budapest Treaty on the International Recognition of the Deposit of Microorganisms for the Purpose of Patent Procedure. one single step is all that is needed to record a change in the name or address of the holder. Since a single deposit in any “international depositary authority” will satisfy the national disclosure requirements of any member state. signed on April 28. e Hague System had 42 contracting parties as of April 26. 1980. e establishment of “international depositary authorities” offers several advantages to both patent applicants and contracting states. The subsequent management of the international registration is considerably easier under this system. drought resistant.  he International Convention for the Protection of New Varieties of Plants (UPOV) established an internationally recognized intellectual property system for the protection of new plant varieties. ey no longer need to independently establish a ‘recognized’ depositary to meet national patentability disclosure requirements. there are 60 Patent Offices that abide by the terms of the Budapest Treaty and 35 “international depositary authorities” in 22 different countries. the deposit of a microorganism with an “international depositary authority” satisfies the deposit requirements of treaty members’ national patent laws. BUDAPEST TREATY ON THE INTERNATIONAL RECOGNITION OF THE DEPOSIT OF MICROORGANISMS FOR THE PURPOSE OF PATENT PROCEDURE Under the treaty. Patent applicants benefit because the need to deposit in many countries in which they seek patent protection is dramatically reduced. An “international depositary authority” is capable of storing biological material and has established procedures that assure compliance with the Budapest Treaty. The UPOV Convention encourages and rewards the ingenuity and creativeness of breeders developing new varieties of plants. the Madrid Protocol gives the holder of the international registration the opportunity to turn the international registration into a series of national applications in each designated country. For example. patent applicants’ costs are much lower. Such procedures include requirements that the deposit will remain available for the life of the patent and that samples will be furnished only to those persons or entities entitled to receive them. As of May 2005. Using a single authority as a deposit increases the deposit’s security. A single international application filed with WIPO’s International Bureau replaces a whole series of applications previously required in a number of states and/or intergovernmental organizations party to the Hague System. 1977. or a change in ownership for some or for all of the designated contracting parties. 2005. THE HAGUE SYSTEM FOR THE INTERNATIONAL DEPOSIT OF INDUSTRIAL DESIGNS  he Hague System is an international registration system that enables owners to obtain protection for their industrial designs with a minimum of formality and expense. Anyone who develops a new variety of plant that may be disease resistant.

TRIPS covers seven forms of IP. us. a patented device from Sandia National Laboratories in Albuquerque. however. e process of creating a new plant variety is often long and expensive. SnifferSTAR.In 2001. the recently updated logo for the Zenith Electronics Corporation. . intended to detect airborne blister agents and nerve gases. rather than inanimate matter. Right. New Mexico. 24 at the same time. ing is no less an inventor than someone who improves an automobile engine or develops a new medicinal drug. including trademarks and patents. while encouraging the development of new plant varieties. Reproducing an existing plant variety. Below. e UPOV system establishes basic legal principles of protection that reward breeders for their inventiveness by providing exclusive rights to their plant invention. The only difference is that the plant breeder works with living material. a scientist in a lab conducts quantitative analysis of medicine tablets. WTO gave least-developed countries another 10 years to implement TRIPS patent and “undisclosed information” provisions on pharmaceuticals. can be quick and relatively easy. Here. an effective system of intellectual property protection needs to reward innovation by permitting inventors to recover their investment and. disseminate the knowledge of that innovation for others to improve upon.

however. a breeder must invent a plant variety that is new. 2005. biotechnology. CONCLUSION  n the information age. While it was the first comprehensive IPR agreement of its time. Countries should look to both the WTO and to WIPO when crafting their IPR systems.Under the 1991 UPOV system. Mr. and the Technical Committee. distinct. To receive a breeder’s right. import. UPOV member states hold biannual meetings of the Council. and reflects a “snapshot” in time. a plant breeder generally does not need breeder authorization to use protected plant varieties for noncommercial or experimental acts or acts done for the purposes of breeding new plant varieties. it saves creators and national IP offices a great deal of time and effort. must be within reasonable limits and subject to the safeguarding of the legitimate interests of the breeder. the Administrative and Legal Committee. with technology advancing at an accelerating rate. uniform. e TWPs meet periodically to share and discuss observations and advancements in agricultural sectors.int. WIPO has led the way in developing new international norms to meet these challenges. Switzerland. Technological advances in information technology. Patent and Trademark Office’s Office of International Relations. where he represented the U. WIPO also has led the way in simplifying and streamlining the procedures for seeking. see: http://www. the exclusive rights granted to the inventor (commonly referred to as “breeder’s rights”) require that another party other than the owner of the breeder’s rights receive the breeder’s authorization to:  produce or reproduce the protected variety. made up of several Technical Working Parties (TWPs) across several agricultural sectors. export. and  offer to sell or market. it is a decade old. however.  condition the variety for propagation purposes. and other fields require the updating of national and international laws that protect IP. 25 . and maintaining rights in multiple countries. UPOV membership is expected to continue to increase in the next several years. As of June 29. Fortunately.S. WIPO also makes available its excellent technical assistance for establishing and improving IPR systems worldwide.S. obtaining. since more uniform standards lead to greater consistency of application fi lings in different territories. which helps to standardize examination standards among member states. He lectures frequently on the subject of international patent law. rough its “Global Protection Services” and its harmonization treaties. Salmon also served as the Intellectual Property Attaché in Geneva. For more information on UPOV. or to stock the protected variety. ese TWP meetings benefit breeders as well. and stable. a permanent body of the convention. there were 59 member States to the UPOV Convention. ese restrictions.upov. the most recently concluded of these. e UPOV Convention also allows each member nation to restrict the breeder’s right in relation to any variety to allow farmers to use part of their harvest for subsequent plantings in their own land. Salmon is a patent attorney in the U.  Paul E. simply implementing the TRIPS Agreement is not enough to establish a robust intellectual property system. government in meetings of WIPO and the WTO. Under the UPOV Convention. Other UPOV bodies include the Consultative Committee.

U.S. led by the Justice 26 . e Recording Industry Association of America. and Burundi.S. and ineffective enforcement mechanisms. the Department of Justice. as well as creating a positive foreign investment environment. private sector is also very active. embassies abroad also provide and coordinate IP training programs. and business people from Nigeria.S. U.S. Senegal. in December 2004. But many countries face serious obstacles to IP protection. trainers sponsored 295 programs. and their member companies and contributors all provide training worldwide. inadequate laws. ese programs include. and the Library of Congress’ Copyright Office. the International Intellectual Property Institute. e State Department invests significant resources to develop the necessary IP expertise in its officer corps overseas. the Department of Commerce Commercial Law Development Program. as well as public awareness and outreach activities.Intellectual Property By Allison Areias Training and Technical Assistance Programs Department. the Pharmaceutical Research and Manufacturers of America. the Bureau of International Narcotics and Law Enforcement. such as a lack of IP awareness. Ghana. including judges.S. ranging from optical disc forensic training in the Philippines to prosecution and investigation techniques in Egypt. attorneys. During 2003 and early 2004. e U. prosecutorial training. the Motion Picture Association of America. with hands-on instruction on how to try an IPR case and operational training by the Department of Homeland Security to help customs officers to better identify and seize counterfeit goods at ports and border crossings. for example. e U. the Business Software Alliance. so as to enable them to support our overall training efforts in addition to recognizing IP issues and addressing them through diplomatic channels.-based IP private industries provide extensive training for foreign officials and nationals. or the Bureau of Educational and Cultural Affairs.S. U. government IP training providers include the Patent and Trademark Office. public health experts. State Department funds many training programs. e participants learned about  ountries with effective intellectual property (IP) protection reap the benefit of protecting their own intellectual property. the International Intellectual Property Institute paired with the U. For instance. either through the Agency for International Development (USAID). e Gambia. government and U. the Department of Homeland Security divisions of Customs and Border Protection and of Immigration and Customs Enforcement. the International Anti-Counterfeiting Coalition. e U.S.S. and many do not have the resources to address these issues. Patent and Trademark Office to hold a three-day seminar in West Africa for over 70 participants.

Filipino officials from the Videogram Regulatory Board and security forces confiscate boxes of pirated video compact discs from stalls during a raid in Manila.S. the role IP plays in economic development for West Africa.  Allison Areias is a U. as well as intragovernmental coordination and the importance of strong relationships between the police.S.. the problems of counterfeit medicines in their region. trainers also help countries develop the legislative and enforcement framework necessary to address this growing problem.ipr. Room 3638. some are open to the public and offered free of charge. at (202) 647-3251. 2201 C Street. Foreign Service officer who served in the State Department Economic Bureau’s Office of International Intellectual Property Enforcement.U.S. Washington. For more information about IP training. 27 .S. IP officials. especially for areas where porous borders facilitate international trafficking in counterfeit and pirated products. U. Training programs focus on all aspects of IP enforcement. or at EB/TPP/IPE. Here. and rights holders.gov. 20520. Focusing IP enforcement training efforts on smuggling trends and routes is also critical. judicial authorities. e site includes brief descriptions of the training programs and contact information for the training providers.training. Web site for the U. government and industry training is catalogued at http://www. Although many of these programs are for foreign government officials. U.S. D. please contact the Office of International Intellectual Property Enforcement. trainers recently sponsored an optical disc forensic training program in the Philippines. With the commercialization of the Internet and the rise of Internet piracy. government IPR Training Programs Database. Department of State. and how IP acts as a catalyst for the fi lm and music industries in their countries. U.S.C.

In Jordan. “e government of Jordan has embarked on an aggressive program to transform the country from a dependence on foreign aid to success in the era of globalized trade. for example. recent intellectual property reforms have greatly benefited that country’s economy in general and its pharmaceutical sector in particular. becoming its 136th member. Registration of copyrights.S.-Jordan FTA. Jordan’s enforcement action . legal reforms. Although significant challenges remain. Jordan joined the World Trade Organization (WTO) in 2000. According to Economic and Trade Officer Greg Lawless at the U.-Jordan Free Trade Agreement (FTA).S.” according to U. Embassy in Amman. the first such agreement between the United States and an Arab trading partner.S.S. Jordan’s pharmaceutical sector has gained new export markets and has started to engage in innovative research.” he said. Trade agreements. In addition. and trademarks is required. are undergoing further refinement.Intellectual Property Reforms By Jeanne Holden Jordan Benefits from  ntellectual property rights (IPR) protection can be a powerful tool for economic growth. and semiconductor chip designs in Jordan. In 2001. but ratification was still pending in early 2005. Jordan has signed the Patent Cooperation Treaty and the protocol relating to the Madrid Agreement Concerning the Registration of Marks. Jordan passed several new laws to improve protection of intellectual property rights prior to its accession to the WTO. Jordan. Jordan has also acceded to the World Intellectual Property Organization (WIPO) treaties on copyrights (WCT) and performances and phonographs (WPPT). particularly in the pharmaceutical sector. intellectual property rights enforcement has improved in Jordan. Embassy Chargé d’Affaires David Hale in Amman. with the signing of the U. rough these agreements. the government of the Hashemite Kingdom of Jordan continued a process of comprehensive economic reforms that had been underway for about a decade. In fact. Copyrights are registered at the National Library and patents are registered with the Registrar of Patents and Trademarks. Jordan committed to even stronger enforcement of intellectual property rights. patents. 28 Laws consistent with the WTO Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) now protect trade secrets. have emerged. and a strong IPR protection regime are all a part of that strategy. it entered the U. both part of Jordan’s Ministry of Industry and Trade. “Effective enforcement mechanisms and legal procedures. still not completed. such as contract clinical research. and health-sector employment has grown. New health sectors. Jordan’s pharmaceutical industry abides by the new TRIPS-consistent patent law. plant varieties.

as well as for sales and licensing agreements. Rapid introduction of new products would also benefit Jordan’s medical tourism sector (a term referring to people who travel to other regions or countries in search of health-care options).-Jordan FTA has made Jordan’s market more appealing for pharmaceutical research and development. elimination of exclusions from patentability for biotechnology inventions. 29 . the U.” she said. D. he added. medical tourism represents two-thirds of total tourism revenues in Jordan. Novartis.S. PhRMA established an office in Amman to serve the Middle East and North Africa region. and have all of the infrastructure and the legal permits that we needed for business. e October 2004 report. diabetes. According to a recent IIPI report. It said that a recent survey of patients identified medical expertise of physicians as the main reason medical tourists come to Jordan. osteoporosis. PhRMA reports that. In October 2001. Janssen-Cilag.S. Roche. 5. rough clinical trials. get credentials. According to the Pharmaceutical Manufacturers Association of America (PhRMA).C. Establishing Globally Competitive Pharmaceutical and Biotechnology Industries in Jordan. Sanofi-Aventis. in the process. according to Susan Finston. a nonprofit economic development organization and think tank based in Washington. Many PhRMA members have established or expanded their commercial activities in Amman. citizens. Organon. It was PhRMA’s first presence in the region. in 2004 alone.000-patient cardiovascular risk factor study in Jordan in 2001. including American Home Products. Jordan’s commitment to free trade and high-standard business practices were decisive factors in the decision. Several PhRMA members are conducting clinical trials and entering into co-marketing and/or licensing agreements with Jordanian companies. Moreover. PhRMA’s associate vice president. stressed that clinical trials are enhancing physician and hospital skills and. “Jordan was the place where in less than 45 business days we could open an office. it is hoped that more innovative pharmaceutical products will eventually be made available to Jordan’s Jordan’s leading Hikma pharmaceutical company was the first Arab pharmaceutical company to export one of its products — a non-steroidal antiinflammatory drug — to the U. GlaxoSmithKline. Merck Sharp & Dohme. Eli Lilly. and cardiovascular disease.. and limitations on compulsory licensing.-Jordan FTA for industry include expanded data protection. market. Pfizer. and Schering-Plough. AstraZeneca. BristolMyers Squibb. Bristol-Myers Squibb initiated a three-year. According to the International Intellectual Property Institute (IIPI).S. further enhancing economic growth in medical tourism. its member companies carried out 19 clinical trials in Jordan for conditions such as cancer.against audio/video and software piracy is growing in quantity and improving its capability to target problem areas. e benefits of the U.

“Market size.S. according to estimates provided by the U. “is represents a significant improvement over 2003. Agency for International Development (USAID). total production by pharmaceutical firms easily will be over U. and educating healthcare professionals and the public. Information Agency for 17 years. According to the U. USAID also is providing technical assistance to improve the regulatory environment for patents and trademarks. Jordan’s experience suggests that intellectual property rights protection can be a powerful tool for economic growth.5 percent in 2001.” declared Susan Finston. held some 75 educational programs and academic meetings in Jordan in 2004. Jordan’s exports in pharmaceuticals in 2004 will top U. Pfizer said it doubled the number of its local employees. the report said. She worked as a writer-editor in the U. a year in which economic growth was affected by regional conflicts. Sanofi-Aventis and Novartis tripled their local labor forces. $300 million. and health-services employment has grown 52 percent since 1997. “e adoption of stronger intellectual property protection is helping to transform Jordan into the leading knowledge economy in the region. USAID continues to support Jordan’s implementation and enforcement of the new intellectual property laws by working with the Jordan Intellectual Property Association (JIPA).IIPI produced the report in partnership with the Achievement of Market Friendly Initiatives and Results (AMIR) Program. Embassy in Amman. $200 million.”  Jeanne Holden is a free-lance writer with expertise in economics and IP issues. population. and the private sector. When combined with domestic output. and Merck increased its employment in Jordan by 500 percent.” the IIPI report concluded. geography: None of these is destiny. e IIPI report found that Jordan’s generic pharmaceutical companies also benefited from stronger intellectual property laws.S. At the request of the government of Jordan. Healthservice contributions to the Jordanian gross domestic product (GDP) grew from 2. Embassy in Amman. Merck. with drug exports from local Jordanian firms growing 30 percent from 1999 to 2002. “Destiny resides in the political will of governments to take up the important challenge of economic reform. it says. according to the IIPI report. JIPA is hosting training programs for the National Library. e IIPI report said this growing multinational presence contributes added value to Jordan’s society through activities such as marketing and distribution. Growth in Jordan’s pharmaceutical and biomedical technology industries has been strong since the implementation of a stronger intellectual property regime. a project funded by the U. USAID has provided significant amounts of technical assistance to the Jordanian public and private sectors in support of intellectual property rights improvements during the past five years.” Lawless said. customs authorities. for example.S.S. including assistance in crafting laws and regulations.S. 30 . sales-force training.8 percent in 1997 to 3.S. e international research-based pharmaceutical industry has greatly increased direct employment in Jordan since 2000.

toys. But the most surprising aspect of this growth is not in the numbers themselves. The next stops in the campaign will be Europe and the United States. even cars and planes. gain: Selling fake milk powder whilst buying the real milk powder at home. When these people are caught they really need to be punished heavily and made an example of for such terrible crimes. At the launch of the “Fakes Cost More” campaign in Hong Kong on June 2. in his newest role: the scourge of counterfeiters everywhere. Chan showed his disdain for counterfeit goods by chain sawing a fake goods store and stripping a mock consumer of all his copied clothes and shoes.700 percent over the last 10 years. ese days. by refusing to buy fakes — because they do cost more. ese criminals even use fake milk powder to exploit the public to boost their own Jackie Chan. Industry sources estimate the worldwide production of counterfeit products to have soared 1.A Message from JACKIE CHAN: “Fakes Cost More”  ounterfeiting is a major growth industry. with a global market valued at U. $500 billion. counterfeiting has moved well beyond DVDs — including those of movies I’ve made — and handbags. is is enough to cause a threat to our safety.” a global campaign organized by the International Trademark Association (INTA). Fake products are becoming popular in industries such as food. and really quite terrifying to think about it! I was horrified to discover the existence of fake milk powder. 2005. one of the most famous names in martial arts and action movies worldwide. You can do your part. and they need to be protected. medicine. too. is is why I am taking part in “Fakes Cost More. 31 . for all of us. in hopes of raising awareness around the world in regards to the level of counterfeit goods infi ltration and the danger this poses to all societies.S. but the wide variety of industries that have become hotbeds for fakes. Everyone knows just how fragile babies are.

supported by the Motion Picture Association of America. and tourism. minister of culture. Arts. and that ISP companies could fi lter transmissions made over their systems. movies. The November 30. one company that has suffered heavily from Internet piracy. e Belgian AntiPiracy Federation. estimates that 250. 80 percent of them from neighboring countries. SABAM says its goal is to turn off the peer-to-peer trading of data from users’ hard drives when on line. videos. . assert that the screening technology does exist. arts. The meeting ended with the incineration of 17. be it music. ruling requires that Tiscali. and Tourism and the Copyrights Office kicked off a three-day meeting to discuss anti-piracy strategies against the more than 10 million pirated cassettes that enter the country each year. a system used by popular sites to facilitate music downloads. a Belgian group responsible for collecting royalties due performing artists. is fighting back. Mahamoudou Ouedraogo. 2004. the Ministry of Culture. 32 Universal Music estimates that up to 85 percent of the blank recordable digital media sold in Belgium is used for downloads of protected intellectual property.000 pirated cassettes and CDs seized by the Copyrights Office and the Gendarmerie in Ouagadougou and Bobo-Dioulasso. In the fall of 2004. but did find that Tiscali had an obligation to halt such infractions of copyright.000 protected movies or videos are downloaded daily in Belgium. The judge did not fault Tiscali management for the activity of its site users. Sources at Universal Music in Brussels. block certain net services that permit Internet web surfers to download music protected by copyright. ey liken it to asking for an interdiction of CD writer technology because it could be misused for pirating copies of music. called piracy “a cancer” for Burkina Faso and insisted that pirates should be prosecuted for their crimes. which has a vibrant and significant local music industry under assault by cut-rate imported pirated music products.Fighting IPR Crime PERFORMING ARTISTS GROUP WINS IN BELGIAN COURT How Countries Are  :  Brussels court ruled against an Internet service provider (ISP) in a lawsuit brought by SABAM. Defenders of the Internet users and music traders claim that compliance with the judgment is technically impossible. Before reporters covering the meeting. a small but popular ISP. or software. BURKINA FASO TARGETS COPYRIGHT PIRACY  urkina Faso. SABAM claims that this is the first such successful judgment of its kind in Europe.

Seoul amended its Copyright Act so as to stem a drastic slide in its music industry’s revenues. These are confiscated CDs at Pakistan’s Federal Investigation Agency in Karachi. Burkina Faso’s vibrant music industry is suffering from an onslaught of cut-rate imported pirated music products. hurting local and international artists. A percussionist from Burkina Faso performs at the Saint Louis Jazz Festival in northern Senegal. Shinhwa. 33 . performing in Japan. Pirated compact discs are flooding many countries’ markets.South Korea’s pop band.

movies. More than one million pirated CDs and DVDs were confiscated and then destroyed in this September 15. 2005. anti-piracy crackdown in Jakarta. Tallinn. Estonia: The Estonian Organization for Copyright Protection is partnering with other groups to teach the younger generation about the importance of IPR. and other goods at a bazaar in New Delhi.People shop for music. A New Delhi court issued a warrant in August 2005 that gives police broad powers to search for and seize pirated movies in any part of the city. Indonesia. 34 .

police. outlined Burkina Faso’s anti-piracy strategy. the Estonian Police will step up its investigations and prosecutions of Internet piracy. Violating the court injunction is punishable by a minimum of six months to a maximum of three years’ imprisonment. their strategy combats violations in the pharmaceutical. setting up a subregional court in charge of copyrights. with an average of 50 web sites closed each month because of pirated content. is will prevent additional manufacturing and/or trading of the counterfeit products. and pressing criminal charges against pirates and sellers of pirated goods. issuing a common policy with the neighboring countries to secure the borders against pirated goods. Ilmar Harg. the NGO organized a media campaign in Estonia’s leading newspapers explaining the criminal nature of IPR infringement on the Internet. According to Sunil Krishna of Krishna & Saurastri. in gathering information and securing evidence on specific cases of IPR infringement. another local NGO that boasts about 4. Krishna said this process is time-consuming.000 in Burkina Faso. is using a U. and procedures. and noted that the Estonian penal code calls for up to three years of imprisonment for those found guilty of Internet piracy. he can obtain an injunction against the alleged perpetrator. audio. 2004. e strategy will include setting up an independent anti-piracy organization.S. and involves fi ling hundreds of cases against the manufacturers of 35   stonia’s Police Board and its Customs and Tax Board signed a cooperative agreement on December 27. the Estonian Organization for Copyright Protection (EOCP). of which there are an estimated 100. beginning in 2005. e seminars will be held in cooperation with EOCP and the Business Software Alliance. gendarmes. Internet piracy is a more worrisome problem than pirated CDs in Estonia. Krishna claims that this method has proved extremely successful with pirated software. Krishna argues that this sentence serves as a deterrent against future counterfeiting operations. According to EOCP’s managing director. e campaign materials reported that. e majority of these sellers are street hawkers. .500 members. Krishna says. Both boards also are working more closely with the country’s leading IPR nongovernmental organization (NGO). e court also orders the police to provide protection to the receiver of the goods. e “Anton Pillar” order allows for the appointment of court receivers to search and seize suspected counterfeit property for custodial purposes without any prior notification to the alleged perpetrator. Embassy grant to organize several IPR-related seminars and Local Area Network (LAN) parties for young computer users. his firm now has turned to the “Anton Pillar” order along with other means to fight piracy. After the seizure.e director general of the government’s Office for the Rights of Authors. and music industries. providing intellectual property rights (IPR) training to judges. in turn. investigations. software. e attorney cites two cases where both civil and criminal statutes were used in successfully eradicating a spurious pharmaceutical product. and customs agents. SUPPORTING IPR THROUGH IMPROVED GOVERNMENTNGO COOPERATION IN ESTONIA e Estonian Computer Club. A LAW FIRM COMBATS PIRACY WITH NEW STRATEGY he Mumbai-based law firm of Krishna & Saurastri’s new strategy for combating copyright infringement in India is to use the legal system to inconvenience the pirated material manufacturer through persistent search-and-seizure tactics and with recurrent civil and criminal litigation. In November of 2004. IN INDIA. Owing to what Krishna describes as “the reluctance of local police to pursue” complaints about counterfeited goods. that allows them to improve Estonia’s IPR regime through the exchange of information on operations. EOCP and other Estonian NGOs also work independently to teach the younger generation about the importance of IPR.

He recommends that Indian Customs be empowered to destroy counterfeit goods. e act allows for a one-year imprisonment without bail for the illegal import or export of any good. He favors the continual education of law enforcement officers about piracy.  Use and have in their possession only those production molds that are engraved with government-approved source identification codes (SID). PARAGUAY: USE OF LAWS. e regulations provide for the possibility of administrative sanctions. who worked with Indonesian officials in drafting the new regulations. the government worked with the private sector and supported the introduction of two draft laws that increase penalties in criminal cases of IPR violations. and copyright agreements.the fake goods. her last day in office. samples of each batch of discs produced. designed to act as an intelligence and interagency coordination unit for IPR enforcement. Paraguay’s Specialized Technical Unit. such as the International Federation of the Phonographic Industry (IFPI).  Register with an internationally accredited organization that issues SID codes. Krishna says that the cost for this approach is less than 5 percent of the legitimate turnover of the company whose goods are being copied. The long-awaited regulations require producers to register their production facilities. Then Minister of Industry and Trade Rini Soewandi signed the accompanying implementing ministerial regulations on October 19. avoiding provisions for crimes with lower penalties that provide the option of paying a fine in lieu of jail time.  Keep records of orders. Since the optical disc regulations fall under Indonesia’s copyright law. became part of the Ministry of Industry and Commerce. Soewandi issued two separate implementing regulations. is unit has participated in a significant number of enforcing actions. and open their factories to unannounced police and/or civil service investigators. For instance. He also suggests that pirated goods coming into or going out of India could be prosecuted under the Conservation of Foreign Exchange and Prevention of Smuggling Activities Act. ENFORCEMENT TO PROTECT IPR  araguay moved forcefully in 2004 with legislation and enforcement actions that strengthen IPR protection. Krishna believes the government of India could make a few changes that would make his job easier.  Hang company signs outside factories in a manner that makes them clearly visible to the public. maintain and report production records. numbers of disc copies produced. 2004. something they cannot do now. OPTICAL DISC REGULATIONS NOW LAW IN INDONESIA  ormer Indonesian President Megawati Soekarnoputri signed Indonesia’s first-ever optical disc regulations on October 5. one law for copyright piracy and the other for counterfeiting. and manager names at each facility with the Ministry of Industry. and gained a stronger focus on copyright piracy and falsification. In anticipation of a decision by incoming President Susilo Bambang Yudhoyono to split the Ministry of Industry and Trade into two separate ministries. specifically the removal of a producer’s registration. they call for criminal penalties of up to five years’ imprisonment. According to a local Indonesian Motion Picture Association consultant. the production capacity at each facility. The draft laws increase penalties to five years or more. often in coop- 36 . the quantity of polycarbonate (the material used to make discs) purchased. 2005. Convinced that it is a successful strategy “guaranteed” to make the manufacturer or trader of illegal goods close up shop permanently. among other measures. ese new regulations went into effect on April 18. these will require existing and future companies with optical disc production facilities to:  Register each of their production facilities. dividing issues and responsibilities between the two future ministries.

from China. raids of 10 TV cable operator companies engaged in piracy of cable signals. displayed beside two similar products marketed in Taiwan. including both domestic and foreign rights holders. A report prepared by the ministry in February 2005 states that between December 2003 through January 2004.eration with private sector groups. it allows Fox and the ministry to use the powers of the country’s communications regulator (CONATEL) to revoke the licenses of companies providing pirated cable signals. e first such agreement signed by Fox in Latin America. four warehouses raided where counterfeit cigarettes were stored. five cigarette factories raided that were suspected of producing counterfeit cigarettes. 1. argued that the bottle in the center was violating his trademark. toys. a more efficient method than relying solely on the courts. two raids in Market 4 in Asunción. such as watches. Since the agreement was reached. A dispute over alleged piracy erupted when the manufacturer of the product on the left. A drastic slide in revenues over the last three years for the music industry in South Korea. e ministry reached agreement in August 2004 with Fox Sports Latin America to cooperate in ending the theft of Fox’s programming. three printers raided that were producing cartons and labels for counterfeit cigarettes. for instance. In an effort to protect the “cultural future” of Korea — especially the  A can of authentic Tsingtao beer (right). 15 operations resulting in the seizure of various counterfeit products. Paraguay. action by the Paraguayan authorities resulted in: 11 million virgin CDs confiscated.600 CD burners confiscated. 37 . SOUTH KOREA: BRINGING SOUND RECORDING PROTECTION ON THE INTERNET INTO THE PUBLIC EYE outh Korean media headlines in January 2005 on the government’s new action to protect sound recordings grabbed the attention of the Korean public. under a cooperation accord with Tsingtao. and the investigation of five major organized crime groups that imported CDs for sound-recording piracy. and cell phones. with 11 stores raided and the confiscation of thousands of pirated CDs and DVDs. among the most popular in Paraguay. Paraguayan workers unload boxes containing smuggled CDs confiscated during a police action in Asunción. Reviews of company registration data following increased cooperation (including data sharing) between the ministry and the Customs Service led to the closure of 56 importing companies and the cancellation of 73 import licenses. at least four cable TV providers have reached accords with Fox and stopped pirating the signals. prompted the government to push through amendments to the country’s Copyright Act that require prior permission from rights holders before anyone can download music from the Internet.

The protesters said rampant piracy of CDs is threatening the survival of the island’s music industry. they must 38 seek prior permission from the rights holders. e Ministry of Culture and Tourism posted information on its web site to inform and educate the public regarding the practical consequences of the new amendments. Taiwan pop singer “Black” shows off his anti-piracy badge. “Korea wave” of popular music. the users. or blogs. e government’s campaign seems to be bearing fruit: Recording companies report that they already have received inquiries from some of the smaller on-line music services asking for a meeting to discuss contract details. e web site unequivocally states that only performers and phonogram producers themselves can transmit their performance or phonograms over the Internet or other networks. or blogs. mini-homepages. If the general public. TV dramas. want to transmit phonograms over the Internet. which went into effect January 17. including uploading music fi les and other copyrighted works onto web sites. Internet cafes. . and films that permeates Asia — the government has been very aggressively raising public consciousness about the new rules. minihomepages. Internet cafes.Taiwan’s former Premier Yu ShyiKun holds a model of a compact disc as he attends an anti-piracy protest in Taipei. e site lists acts now illegal in Korea. and uploading music fi les with the purpose of fi le sharing to closed web sites.

In addition, three National Assembly members are sponsoring a bill to revise Korea’s Copyright Act yet again. e bill would grant significant additional rights to producers and performers, including the right of communication to the public. e Ministry of Culture and Tourism’s Game and Music Division, in turn, drafted a new Music Promotion Bill for consideration by the National Assembly that would introduce additional protections for sound recordings, as well as authorize the ministry to set up and run an inspection team to investigate and handle illegal phonogram cases. SRI LANKA’S BIGGEST RAID DISCOVERS ILLICIT DISCPRINTING PLANT

e U.S. Embassy in Colombo reports that its public/private IPR Working Group is helping to coordinate private sector support, including that of Microsoft, for Sri Lankan authorities’ continuing investigations. TAIWAN STRENGTHENS COPYRIGHT LAW new law passed by Taiwan’s Legislative Yuan on August 24, 2004, closes loopholes in the version they passed in 2003. The new bill makes any technology or information used for circumventing “anti-piracy measures” a crime punishable by up to one year in prison and/or a fine of up to approximately U.S.$8000. It also allows Taiwan Customs to impound goods, pending determination of their authenticity. However, rights holders must still take measures to apply for attachment and/or initiate criminal or civil proceedings to protect their intellectual property rights within three days, or Customs is required to release the goods. e 2003 law eliminated minimum sentences for counterfeiters, giving judges the discretion to allow violators to pay a fine instead of serving jail time. Most intellectual property pirates saw paying these minimal fines as a justifiable cost of doing business. e new law mandates that those involved in the sale or rent of copyright-infringing optical discs must be imprisoned between six months and five years, and also may be fined between U.S.$16,100 to U.S.$161,000. 

lthough the sale of counterfeit CDs and DVDs is common in Sri Lanka, authorities assumed discs on sale were being imported to Sri Lanka from other parts of Asia. Then, on the night of October 9, 2004, Sri Lankan police investigating other criminal activities raided a previously unknown CD manufacturing plant, Optical Media Pvt. Ltd. Owned and operated by Malaysian nationals, the plant had been in operation since early that year, ironically as a company approved by the Board of Investment, the government of Sri Lanka’s foreign investment promotion agency. The police also raided the main bazaar in Colombo and confiscated a large number of optical media products. The news of the raids spread to other counterfeit CD sellers, and most of the shops have stopped displaying counterfeit copies of the Eagle brand produced by the plant. e plant had counterfeited music, movie, and software products and produced CDs using polycarbonate resin, which will make it possible to calculate the number of CDs and DVDs that were pirated. Informants told the police that a truck had removed approximately 175,000 discs and some stampers the night before the raid. Officials assume that, because of the large number of discs involved and the presence of several hundred Chinese Microsoft discs, the plant must have manufactured illegal discs for export as well as local consumption.

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e U.S. Approach:

U.S. agency negotiates a collaborative agreement with a university research organization in Brazil to study plants in that country as potential sources of drugs to fight cancer. Members of a Native-American tribe create a digital database in which they record all of their community’s cultural knowledge, history, practices, and arts. A U.S. corporation seeking to study microorganisms in Yellowstone National Park enters a Cooperative Research and Development Agreement with the U.S. government, stating that any benefits of commercialization will be shared. ough these situations may seem unrelated, they have something in common: All are mechanisms aimed at protecting the value of genetic resources, traditional knowledge, and folklore, three elements that are often intertwined in daily life in indigenous communities. A traditional healing remedy, for example, may involve preparing a local plant according to a recipe passed down from generation to generation and consuming it as part of a cultural ceremony. e United States respects and recognizes the importance of protecting genetic resources, traditional knowledge, and expressions of folklore by facilitating equitable benefit sharing, eliminating erroneously issued patents, eliminating misappropriation
40

Traditional Knowledge, Genetic Resources, and Folklore
By Jeanne Holden
of traditional knowledge, and preserving expressions of folklore, says Linda Lourie, an attorney with the U.S. Patent and Trademark Office’s (USPTO) International Relations Office. As a country composed of people from all over the globe, as well as more than 560 Native-American tribes, the U.S. government has had to handle a myriad of concerns regarding these often-complex matters. “We’ve resolved these issues by national means,” Lourie stressed. Some of these solutions utilize existing U.S. intellectual property laws, while others do not. Tribal businesses, for example, use established intellectual property laws, while Native-American expressions of folklore are protected by other types of laws, programs, and even museums. In the international arena, the United States is at the forefront in developing benefit-sharing agreements with source countries regarding their genetic resources. “We have consistently led the world in negotiating these kinds of arrangements,” she said, “and we certainly would encourage other countries to do so.” e United States is eager to share its experiences with other countries in international fora, said Lourie. “But,” she cautioned, “each country has different issues that need to be resolved differently. One size does not fit all.”

Anthony Morales of the Gabrieleno NativeAmerican tribe, at a powwow in California. The United States has developed a host of solutions to preserve its tribes’ traditional knowledge, folklore, and genetic resources.

A variety of herbal remedies, some of which have been traditional healing remedies for centuries.

WHAT ARE THE ISSUES?

n 1993, the Convention on Biological Diversity (CBD) came into force. It represents a commitment by nations to conserve biological diversity, to use biological resources sustainably, and to share the benefits arising from the use of genetic resources fairly and equitably. Article 8(j) of the convention draws a connection among traditional knowledge, folklore, and genetic resources by calling on nations to “respect, preserve, and maintain knowledge, innovations, and practices of indigenous and local communities” and to promote wider application with the approval of the holders of such knowledge and practices.

Since 1993, the international community has been working to better understand and implement Article 8(j) within the framework of the World Trade Organization (WTO) and the World Intellectual Property Organization (WIPO), among others. In these discussions, several developing countries have advocated creating new forms of legal protections for these resources at WIPO. In response, WIPO member states established an Intergovernmental Committee (IGC) as an international forum for discussing the relationship between intellectual property and genetic resources, traditional knowledge, and folklore.

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healing properties of local plants. but many questions remain unanswered. as “genetic material of actual or potential value. textiles. none has determined what the scope of such protection might be. or folklore from her past in her new home? How would combinations of traditions be protected? What about traditions or knowledge that span borders or continents or are universally practiced? Some countries want to prevent others from using their traditions while others want to commercialize or profit from such use. pottery. Traditional knowledge may focus on natural elements such as mineral deposits. innovations. land management practices. “traditional knowledge” refers to systems of knowledge. needlework. Article 2. to make matters even more complex. as in songs. actions. including use without benefit sharing and offensive use. jewelry.S. traditional knowledge. By definition.S. and cultural expressions. and architectural forms. paintings. as in folktales. How would an expatriate of an indigenous community from one country profit from. e term “expressions of folklore” has also been defined by WIPO for purposes of its discussions. tribal enterprises can and do avail themselves of U.” “preservation. or other origin containing functional units of heredity. Expressions of folklore may be oral. 42 Holders of genetic resources worldwide also are largely focused on the issues of “protection. traditional knowledge. among others. such as drawings. How could any one system encompass all these interests? And. genetic resources. pertaining to a particular people or territory.” and “equity. he explained. e current laws of intellectual property rights are not enough to cover all the concerns of indigenous peoples. said Eric Wilson. microbial. e tribe is engaged in manufacturing enterprises and wants to be able to avail itself of relevant intellectual property rights (IPR). WIPO says this term refers to characteristic elements of “traditional artistic heritage” developed and maintained by a community or by individuals who reflect the traditional artistic expectations of such a community.” although even those terms have not been defined uniformly. Similarly. Indigenous communities have many similar concerns regarding their traditional artistic expressions. sculptures. In the United States. intellectual property laws. or person has been able to identify the intended beneficiaries of these sought-after protection measures. However. carvings. e term “genetic resources” is defined in the Convention on Biological Diversity. international intergovernmental organization. and such laws alone cannot be expected to do so. what would constitute “fair use” or other exceptions of limitations. some form of traditional knowledge has existed for a long time. woodwork. According to the International Bureau of WIPO. an international program analyst with the U. lack of respect for traditional knowledge. Wilson . and the need to preserve and promote the use of traditional knowledge. holds annual seminars for tribal government and tribal industry managers on intellectual property. or tangible expressions. basket weaving. there is no agreement as to what actual harm would be remedied by new means of protection. musical. e concerns of traditional knowledge holders within the United States and other countries include: loss of traditional knowledge. Department of the Interior.” Genetic material refers to any material of plant. generally passed from generation to generation. metal ware. animal. or folklore? No country. for example. ere have been calls for the creation of new international legal protections for these resources. or even what enforcement mechanisms could be applied. Who would be the beneficiaries of any protection measures created for genetic resources. musical instruments. as in folk dances. costumes. and including their creations. carpets. plays. such knowledge is not static and can be constantly evolving in response to a changing environment. or have the right to use. location of salmon. the misappropriation of traditional knowledge. or rituals. e Mississippi Band of Choctaw.But what is meant by these three terms? Ultimately there is no uniformity in definitions. or agricultural technologies.

In the United States. other types of laws also protect folklore.The National Dance Company of Korea in the traditional dance Janggochum. 43 . Some countries want IP protection for dances and other expressions of folklore. A Cambodian troupe that performs Khmer classical and folk dance and music.

A worker near Trombetas. with new sprouts of native vegetation that will be used to reforest and replenish the country’s rich genetic resources. 44 Cecilia Bearchum goes over a binder used to teach Walla Walla Native-American vocabulary and grammar at the Umatilla Indian Reservation in Oregon. which for years collected plants in Latin America under a program that developed benefit-sharing with source countries. . institutions that preserve. Staff at the University of North Carolina in Chapel Hill’s Southern Folklife Collection — one of many U. protect.S. Brazil. and distribute American expressions of folklore. An ethnobotanist examines a specimen from the Brazil nut at the New York Botanical Garden.

Patent Act (Title 35 U. Several developing countries are working toward this end.stressed. Turmeric has been used for a long time in India to heal wounds. with some interests belonging to an entire tribe. To qualify for patent protection in most countries. infringement of a trade secret is considered a type of unfair competition. said Linda Lourie. Section 102). a clan. “if our patent examiners in Virginia do not know about traditional practices overseas. Digital databases would allow patent examiners all over the world to search and examine traditional knowledge. that knowledge may not be the subject of a patent. even if it is not widely known in an industrialized country.” Lack of information about a traditional remedy led to a problem in 1995 when a U.” e United States is encouraging other countries to create digital databases to catalog their traditional knowledge and protect it from patent attempts. if an invention a) was known or used by others in the United States. “If traditional knowledge is documented. or an individual. e importance of publishing traditional knowledge and making that information available to patent examiners internationally cannot be overemphasized.S. In order to achieve protection of intellectual interests. including those that are considered traditional knowledge. it must be useful. But an applicant trying to patent traditional knowledge likely cannot meet the three necessary requirements. then it is not entitled to a patent.S. patent covering the use of the turmeric plant in healing wounds was mistakenly granted to Indian nationals from the University of Mississippi Medical Center. “However. they cannot protect them. Wilson suggested that some of the solutions will need to come from the indigenous communities themselves. patent examiners regularly check the international databases that are already in use. or patented or described in a printed publication in this or a foreign country before the invention thereof by the applicant for patent. she said. or b) was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country.S. and it must not be a trivial extension of what is already known. Patent and Trademark Office revoked the patent for lack of novelty.S. so if it has been documented.” According to the U. they may want to take steps to guard their knowledge as a trade secret.” Lourie explained. an invention must be new. “Indigenous values. Lourie acknowledged that some traditional knowledge holders might want to keep certain aspects of their knowledge secret or limited to specific individuals or groups. or selling his or her invention. “Traditional knowledge is already known. He said that it would be appropriate for national governments to give legal recognition to customary indigenous law. are quite broad and vary among the tribal communities. U.” as they are sometimes called. consists of ensuring that patents are not granted on known products or processes. Code. If so. more than one year prior to the date of the application for patent in the United States. 45 . using. Some holders of traditional knowledge fear that others will seek patents based on their long-held knowledge and reap the benefits from it. In the United States. said Lourie. it’s no longer new. Lourie said. A patent is a grant by a national government to an inventor for the right to exclude others from making. TRADITIONAL KNOWLEDGE  ne approach taken to respond to traditional knowledge holders. and this had been documented in Indian publications. e Indian Council for Scientific and Industrial Research requested a reexamination of the patent. India and China have been very involved in developing searchable digital libraries of their traditional knowledge. Lourie said. and the U. e ability of a third party to request reexamination and the eventual cancellation of the claims when a mistake has occurred demonstrate that the current patent system works well to correct itself.S.

some Native American tribes are cataloging their tribal values in a way that fulfi lls the need for documentation and the need to limit outsiders’ access to information. FOLKLORE  n the United States. An individual or business violating the act can face civil penalties or criminal penalties or both. is truth-in-advertising law prohibits the marketing of products misrepresented as Native American-made. Some holders of traditional knowledge want to be sure that any new discoveries derived from their traditional knowledge include an equitable sharing of benefits. such as baskets. masks. the Tulalip Tribes in the U. they are insignia that various federally and state-recognized Native-American tribes have identified as their official tribal emblem.S. a federal law enacted in 1935 and amended in 1990. intellectual property laws to laws and programs specifically designed to protect and preserve the cultural heritage of its indigenous peoples.” that delineates who is to have access to what traditional information about their knowledge. Above. Monks from the Shaolin monastery in Henan province — considered the cradle of Chinese martial arts — are trying to protect the Shaolin trademark from encroachment by marketers who use it to push products ranging from medicine to cars and furniture. According to Eric Wilson. e Database of Official Insignia of Native-American Tribes was established at the USPTO in 2001 in response to NativeAmerican concerns about the preservation of expressions of folklore. jewelry. ranging from standard U. It covers all Indian and Indian-style traditional and contemporary arts and crafts.S. Guatemala. One mechanism is the Indian (Native American) Arts and Crafts Act.S. expressions of folklore are protected in a variety of ways. may have limited access. while others. young students from the Beijing Shaolin Kung Fu School. Official insignia are not trademarked designs.Within the United States. Inclusion of official insignia in the database ensures that an examining attorney will be able to identify Left. using a traditional design in her weaving. ese communities may want to negotiate contractual benefit-sharing agreements regarding new products or processes created through research using their traditional knowledge. very few financial benefits have accrued from commercialization of traditional knowledge. or practices. to date. that it could be a mistake to expect a windfall from such contracts. have developed a sophisticated digital computer inventory. Lourie cautioned. Some users have unlimited access. patent examiners. such as U. a woman from Almolonga. named “Cultural Stories. history. and rugs. however. culture. state of Washington. 46 . for example.

. on September 21.C. effort to protect and preserve Native-American culture is the Smithsonian Institution’s National Museum of the American Indian.S. and training. recognizable likenesses of Native Americans. still images.” 47 .C. government also maintains the Smithsonian Center for Folklife and Cultural Heritage to promote the understanding of grassroots cultures in the United States and abroad. Those communities have expressed their concern that industrializedcountry companies could utilize sourcecountry natural resources for agricultural and pharmaceutical products and assert intellectual property rights claims. languages. archival preservation.  The National Museum of the American Indian in Washington. all trademark applications containing tribal names. e newest U. and arts of Native Americans. exhibitions. and any other application that the USPTO believes suggests an association with Native Americans are examined by an attorney at the USPTO who has developed expertise and familiarity in this area. Its collection includes many thousands of commercial discs. The Jefferson Building of the Library of Congress.000. and motion picture fi lm. and educational materials.000 photographs. GENETIC RESOURCES hroughout the world. public programs. D. study. audiotapes. D.any official insignia that may preclude registration of a mark where the mark suggests a false connection with the tribe. established in 1928 as a repository for American folk music. videotapes. compact discs. symbols perceived as being Native American in origin. Congress created the Library’s American Folklife Center “to preserve and present American folklife. It produces annual folklife festivals. government has taken several other steps to protect and preserve its peoples’ expressions of folklore. documentary fi lms.S. live performance. documentation. exhibition. e American Folklife Center in the Library of Congress was created in 1976 by the U. Congress “to preserve and present American folk life” through programs of research. e U. which opened in Washington. history.S.S. e center incorporates the Library’s Archive of Folk Culture. e center holds more than 1. In addition. audio recordings. 2004. many communities are focusing on issues of equity as well as protection and preservation of resources. It is the first national museum in the United States dedicated to the preservation. and moving images. recordings. and exhibition of the life. manuscripts. e U.

contractor organization. and a collecting organization in the source country. NCI started developing policies for collaborating with source countries on the use of their genetic resources in research aimed at finding more effective treatments for cancer. “ere are many success stories” involving collaborative agreements and contracts for cooperation negotiated on mutually beneficial terms. such as part of the royalties.” said Cragg.S. Cragg. universities’ laboratories and technology transfer. explained that.” said Cragg. NCI began a collection program for plants and marine organisms in tropical regions. the New York Botanical Garden collected in Latin America. “e collections were done mainly in tropical and subtropical countries. In this. ese agreements provided the source countries with short-term benefits that would accrue without having to wait and see whether promising discoveries were derived from their resources. says scientist Dr. “NCI was ahead of the Convention on Biological Diversity by about three or four years” in negotiating agreements with source countries regarding their resources. is was the program in which NCI first developed policies for benefit-sharing with source countries.” In addition to short-term benefits. agreements among NCI. NCI has been a leader. For example. part of the U. NCI requires that.” he said. he said. contractor goes into an area.S. one arm of the U. Department of Health and Human Services.000. “e chances of a discovery becoming a commercial product is usually said to be one in 10. the company must negotiate an agreement so that benefits. including the National Cancer Institute (NCI).S. Mexico. he said. the University of Illinois in Chicago collected in South Asia. in the 1980s. and collects plants and marine organisms for us” with the source country organization. Over time. functions much like a non-profit pharmaceutical company. NCI had evolved by the 1950s into a drug research and development center. In the 1980s. and parts of Africa and Europe. will be returned to the country. said Gabrielsen. National Institutes of Health. Established in 1937. a U. Cragg’s program started using Letters of Collection.” At this stage. In the 1990s. “Where source-country organizations have the skills. “e U. chief of the Natural Products Branch of NCI’s Developmental erapeutics Program.S. said Linda Lourie. research organizations and pharmaceutical companies increasingly have adopted policies of equitable collaboration and compensation. government. Where the U. it enters into benefit-sharing agreements with those countries to gain fair access to genetic resources and/or traditional knowledge.S. mainly developing countries. if a promising potential drug is discovered and licensed to a pharmaceutical company. Canada.” explains Bjarne Gabrielsen. collecting plants mostly in the United States. e benefits included training source-country scientists in NCI laboratories or U. “e NCI does the extraction and testing.” NCI.Many others believe that such concerns have been overstated. “e Missouri Botanical Garden collected plants in Africa. “We began letting out contracts to high-quality research organizations in the United States for collections overseas. “I think that is optimistic. is involved in genetic resource research in other countries. in response to the Convention on Biological Diversity and to greater awareness on the part of source countries about the value of their resources. we support them by helping them further their own drug discovery research programs. obtains the necessary permits. Gordon Cragg. NCI de-emphasized its collections in its plant-derived drug discovery program in favor of expanding closer collaboration with qualified source-country scientists and organizations under agreements called Memoranda of Understanding. adding. senior advisor for drug discovery and development in NCI’s Technology Transfer Branch. and knowledge and some reasonable infrastructure in their labs. too. NCI’s Developmental erapeutics Program 48 . expertise.S.

Costa Rica. Even if they send NCI a sample for more extensive testing. South Korea.” said Cragg. if appropriate.. For example. “e results are sent back to them and the source-country organization can take out the patent. it must negotiate a licensing agreement and the source-country organization can dictate [the] terms. folklore. China. with milestone payments if the results are commercialized. the developing-country organization may make a promising discovery in-country. government supports the exchange of views on traditional knowledge. we achieve NCI’s mission and also the goals of the Convention on Biological Diversity.S. “To our minds. South Africa. Brazil.   49 . however. is group is now screening materials from research programs all over Brazil. such testing is regarded as routine and NCI makes no intellectual property claim. government that includes benefit sharing. in order to study unique microorganisms in the hot springs of the U.S.S. and global cancer population. particularly in WIPO. rough this type of collaboration.S. “e U. with the training and cancer cell lines to establish their own cancer drug discovery program. government also requires a contract when companies want to collect genetic resources from federally owned lands or from the approximately 56 million acres of land the federal government holds in trust for U. In the U. view of protection of genetic resources. she said. said Cragg..S.” Linda Lourie pointed out that the U. and use of traditional knowledge. Fiji. promotion. Mexico. view. expressions of folklore. e U.” said Cragg. . “By establishing these close collaborations aimed at developing promising treatments for the U. If a pharmaceutical company wants to use the discovery and the source-country organization has the patent.S. “We have five such agreements in Brazil. researchers must enter into a Cooperative Research and Development Agreement (CRADA) with the U. government-owned Yellowstone National Park that can withstand great heat. which has the necessary expertise and resources to tackle these complex and technical issues. U. Panama.S. experts agree that intellectual property protections do not offer a solution for all of the issues involved in the protection. he said. Nicaragua. sample contractual clauses. preservation. as well as collaborations with organizations in Australia.” Lourie said.S. view. and genetic resources in international fora. expressions of folklore.S. “is to encourage other countries to establish appropriate access and benefit-sharing regimes that provide benefit sharing on mutually agreed terms. and Zimbabwe. In the U. and genetic resources. and genetic resources worldwide. CONCLUSION he United States has developed a wide variety of mechanisms to respond to concerns regarding the protection of traditional knowledge. case studies and surveys. “e source country is deriving significant benefit.” Some countries develop policies limiting access by creating so many barriers as to almost prohibit collaboration. and examples of databases. New Zealand. Pakistan. thus ruling themselves out of the potential benefits of collaboration. said Cragg. intellectual property laws are and should continue to be available to indigenous individuals and peoples who meet the appropriate criteria for such legal protection. tribes and individual Native Americans.” stressed Cragg. Papua New Guinea.S. Iceland. “it is an ideal process. Bangladesh. WIPO activities have included fact-finding missions. the key to resolving these issues satisfactorily is a solutions-oriented approach rooted in each country’s national context.has provided a research organization at the Federal University of Ceara in Fortaleza.

Each copy. such as the Internet and personal computers. at the same time. like many innovations. a single copy of a work in digital form can supply the needs of millions of users. they are merely one step in a journey of continual and successful adaptation that characterizes the history of copyright law. Like broadcasting. are both promising and potentially harmful to various parties interested in the use and exploitation of works of authorship. unlike broadcasting. digitized materials need not reach each individual simultaneously). We have seen how the compact discs (CDs) containing the original digital versions of recorded music and sold to consumers in the ‘80s and ’90s have become the “masters” from which billions of copies have been made and distributed on computers and on the Internet in this decade. There are a number of aspects to these technologies that have implications for copyright law. This article examines some of the digital issues faced by copyright law today. CHARACTERISTICS OF DIGITAL TECHNOLOGIES WITH COPYRIGHT IMPLICATIONS  50 he technologies that presently are raising issues for copyright law are those related to digital storage and transmission of works. In this way.SECTION II: LAWS IN EVOLUTION Copyright in the Digital Age By Marybeth Peters e Challenge of  ince its inception. There is no doubt that the issues related to achieving the right balance between these interests in light of recent developments are daunting and justifiably can be described as “new” or “unique. These technologies. means that a single . can be further reproduced. combined with the ease of reproducing works. including the following:  Ease of Reproduction: Once a work is rendered in digital form. in turn. Today. worldwide dissemination of works in digital form. is. digital networks allow dissemination to many individuals from a single point (although. copyright law has responded to technological change. again without any loss of quality. However. digital networks allow each recipient on the network to engage in further dissemination of the work. which can cause the work to spread at a geometric (sometimes called “viral”) rate of increase. and without any loss of quality. it can be reproduced rapidly. at little cost. from books and music to films and web pages.” But.  Ease of Dissemination: e emergence of global digital networks allows the rapid. the changes that are grabbing all the headlines relate to digital technology and digital communications networks.

and store digital information. digital copy of a work can be multiplied many thousands of times around the world within a few hours. When transmitted through high-speed transmission lines. NEW FORMS OF EXPLOITATION … AND ILLICIT COMPETITION he revolution in the way new technology can reproduce.S. is truly a double-edged sword for authors and rights holders. it can provide for new and exciting ways for authors to provide copies of their 51  . the process is even faster. Today’s popular iPod portable music player can store nearly 70 times that amount (around 10. and the capacity for the transmission of works grows as well.000 songs) in a device the size of a cigarette pack. disseminate. and it gets denser with each passing year. Federal Bureau of Investigation (FBI) antipiracy warning text. including copyrighted works. for display on digital and software intellectual property. CDs. Ever-increasing quantities of material can be stored in a smaller and smaller amount of space. which can store over 600 megabytes of data.Copyright law in the United States and in other countries is coming to grips with new digital technologies and communications networks. U. like coaxial cable networks or even fiber optic lines. In the early 1990s. such as the Internet and personal computers. On the one hand. were perhaps the predominant form of digital storage used by commercial pirates for storing entire libraries of computer pro- grams or sound recordings with aggregate retail values in the millions of dollars.  Ease of Storage: Digital storage is dense.

it is easy for commercial pirates to reproduce it rapidly and at little cost. the subject matter of copyright has embraced new forms of authorship. In each case. which can store around 10. packaging. A billboard for the Apple iPod. Photography. and computer programs are some examples. electronic databases. inexpensive ways to a much larger audience than in the past. a recording artist can put his or her music on a web site that can be accessed by fans from around the globe. reproduction. On the other hand. COMMON THEMES  his article mentions several common themes in the approach that the copyright law of the United States took to past technological changes. For example. Once a movie is rendered in a digital form. is article describes how the United States has met this challenge in the past. and how challenges posed by those once-new technologies were addressed.S. these new technologies make it easier for pirates and those who want to compete illicitly with that author to make and distribute infringing copies of the work. distribution.g. cinematography. Maintaining the Framework of Exclusive Rights: A fundamental tenet of both national and international systems of copyright is that authors are entitled to exclusive rights over certain activities (e. policy-makers ultimately were able to look beyond the particular technology or medium of expression in order to recognize the common thread of creative authorship that runs through all of copyright. or performance) involving their creative U.works in convenient. Embracing New Forms of Expression: Time and again over the last two centuries. nearly 70 times the amount that CDs can hold. 52 . without a large investment in manufacturing. It also involves making sure that beneficial uses of works are not being needlessly stifled by a copyright system rendered inefficient by the advance of new technology.000 songs. and shipping physical products to these remote locations. e challenge of copyright in the digital age is to preserve the author’s and rights holder’s incentive to create new works and use new technologies to distribute them to users and consumers in the face of such a competitive threat from the illicit use of technology by infringers. and how it may meet it in the future. official William Lash III shows pirated copies of DVD movies to journalists.

rapper Ludacris surveying his songs on a pay-for-download music site. promotes literary and artistic creativity and benefits the public welfare. for example. a more expansive interpretation of existing rights is the answer. the limited exemptions for reproduction of computer programs contained in Section 117 of the U. is same principle is recognized in a provision of the U. to ensure that authors and owners of copyright continue to exercise exclusive control over their works.S. Copyright Act were considered an appropriate means of tailoring exclusive rights to the need of that technology. an existing right of public performance was interpreted to include radio and television broadcasts. which. ese rights allow the author to preserve both his economic and non-economic interests in his creative works. Similarly.S. U. the Berne Convention. either with new or broadened rights or new or broadened exemptions. legislators have had to examine the nature and scope of exemptions from exclusive rights. as when rights of communication to the public were added to the primary international copyright treaty. At the same time. the United States revised and adapted exemptions for educational use of works to accommodate new “distance learning” technologies that allow teachers to reach students via communications networks like the Internet. in response to the advent of broadcasting. the need to make copies in the course of authorized use and the need to make backup copies to guard against mechanical failure or accidental erasure.S. namely. new technologies often prompt debate about whether the set of exclusive rights granted to authors and rights holders should be modified. in 2002. On occasion. In the United States. in turn. to continue to serve the purpose of copyright.works. On other occasions. Constitution authorizing Congress to grant exclusive copyrights “To promote the Progress of Science and useful Arts.” As new technologies have expanded the means by which works may be exploited. 53 . new rights have been added to the copyright bundle. policy-makers periodically have had to reexamine the exclusive rights granted to authors under copyright. In short. For example.

e class of users. where the government creates and administers a license for the use of copyrighted 54 works. For example. and Publishers (ASCAP) and Broadcast Music. is inefficiency of the marketplace has largely been overcome in the United States through a familiar market-driven solution: collective administration of the right of public performance. is another approach to purported inefficiencies of the marketplace. For all of these reasons. non-exclusive. a compulsory license can cause significant distortions in the marketplace. making it extraordinarily difficult to eliminate even after the conditions that justified its adoption cease to exist. supermarkets. where technological change is very rapid. compulsory licenses are permitted sparingly under international copyright treaties and should be approached with great caution at the national level. in this area the Copyright Clearance Center has fi lled a void in the marketplace and acts as mediator to license a wide range of uses. Any marketplace will have its inefficiencies. A similar approach is being attempted for administering reproduction rights — photocopying. Typically. Inc. the flexibility of the marketplace is often the most efficient way to make sure that works continue to be created and disseminated to the public. is requires that any system of collective administration be voluntary. collecting societies collect license fees from each user and then distribute these payments to the writers and publishers. performing rights societies such as the American Society of Composers. and responsive to market forces (including market forces brought on by technological change). e exploitation of public performance rights in musical works is a classic example in the United States. ird. an exclusive right does not necessarily benefit a rights holder if inefficiencies in the marketplace make the exercise of the right impracticable. a compulsory license is a significant derogation from the norm of exclusive rights. First. a web of reliance interests builds up around it. and the like. the value of any single public performance of a musical work is small. grant blanket public performance licenses to many venues and distribute the income from these licenses to their members. once a compulsory license has become established. the value of this form of exploitation is substantial. both directly through the mechanisms for setting royalty rates and indirectly through the control of supply. electronic copying — with some success. (BMI). however. in the United States. such as in the cable and satellite retransmission market where transaction costs are prohibitively high. In particular. and it is a challenge for countries to try to address them. Sections 111 and 119 of the Copyright Act grant compulsory licenses for the retransmission of broadcast television signals because of the high transaction costs associated with obtaining necessary permission for such retransmissions. Moreover. In aggregate. however. in the United States. experience in this area has shown.S. Market failure. For example. is extremely large. Authors. that the best forms of collective management of copyright are those that retain as many characteristics of a marketplace of exclusive rights as possible. e U. For example. may be one justification for use of a compulsory license. bars.Market-Driven Solutions: One reason that a system of exclusive rights like copyright has been so successful throughout history at providing the means to support creative activity is that it allows copyright owners to rely on the marketplace to find financial support for their creative endeavors. the imposition of a compulsory license administered by the government can be costly to society. restaurants. Compulsory licensing. the third factor suggests that collective administration of rights should be decentralized in order to account for different market conditions in different countries. Second. In addition. but so is the cost of administering rights over such a large base of users. For example. which includes broadcasters. since it serves to control prices. . In this system. All three of these factors point toward private entities operating within a competitive environment for collective administration of rights.

55 . during an event to promote a Chinese music distribution platform that adheres to international IPR standards by promoting distribution of legitimate products. who signed a deal with Virgin Immortal Records after being “discovered” in cyberspace. one of the many companies that are offering new products and services for the digital age. Chinese pop singer Zhang Jie in Beijing April 19. 2005. A digital camera from Kodak.Members of the rock band Transmatic. including Picture CD software and on-line photo-sharing services.

the international community has paid significant attention in recent years to the need to adjust the existing framework of exclusive rights to address issues of new technology. to what extent the same conditions apply. In other words. In the United States. the principal change to U. in whatever form. including the right of “making available” their works. requires supplementing them with legal rules that prohibit the compromise of their technology. it requires that authors enjoy a right of communication to the public. countries must put effective legal remedies in place against the circumvention of technological measures that owners use to safeguard their rights. or public display of protected works. Title I of the Digital Millennium Copyright Act (DMCA) created a new form of liability for circumventing technological measures that restrict access to protected works. Traditionally. e information infrastructure that permits rapid. Maintaining the Framework of Exclusive Rights Because of the degree to which advances in digital technology have facilitated rapid. law in the legislation implementing the WCT was the addition of provisions on technological adjuncts to copyright protection. however. It’s unclear. At first blush.EARLY CHALLENGES  he advent of digital technology posed a number of challenges to the international copyright community. it does contain provisions. or that control reproduction. is is reflected in the modest. on technological adjuncts to copyright protection. Markets and Management of Rights As discussed above. collective management of rights is a market response to the inefficiencies of individually licensing rights to large numbers of works to large numbers of users. e WCT. recognizes that owners cannot rely on technological measures alone to protect their works. the meaningful exercise of these rights in the context of new uses. where the value of any individual use is relatively small. though important. ese adjuncts are intended to further the development of digital networks by ensuring that copyright can be meaningfully enforced and licensed online. public performance. e conclusion internationally has been that the existing framework is generally adequate to accommodate the new technologies and needs minor revisions rather than a major overhaul. Technological Adjuncts to Copyright Protection While the WCT leaves the existing framework of exclusive rights largely intact. widespread reproduction and dissemination of works. individually licensing such works would result in transaction costs that exceed the value of the license. while the framework of existing property rights continues to be appropriate. distribution. such as providing downloads from an Internet web site. e private sector currently is working to create technolo- 56 . the WCT made clear that such a right. e WCT requires member countries to recognize certain exclusive rights designed for activity that takes place over new digital communications networks like the Internet. inexpensive dissemination of works may also enhance the ability of rights holders to manage rights individually. Countries must also provide legal remedies against persons who delete or alter rights management information attached by the copyright owner to the work. scope of the WIPO Copyright Treaty (WCT). must be granted to authors. While many existing copyright laws provide such a right through the more traditional rights of reproduction or performance. because every technical device can be defeated by someone who is determined to access a work. Under the WCT. collective management of rights appears to be an attractive approach to managing rights to at least some works on digital networks. Among other things. concluded shortly after digital technology started to become prevalent. relatively new to international copyright agreements. such as those on the Internet. therefore.S.

It is quite difficult for copyright owners to identify. And even if the owners could bring such actions. Supreme Court addressed these issues more than 20 years ago in the case of Sony Corp. with very little investment. e U. copyright owners have turned to doctrines of secondary liability to hold the facilitators of these networks liable for the infringement. For these technologies to meet their full potential in the marketplace. 57 .” that is. A single individual. they must be allowed to develop with minimal interference.” However. individual management of rights. Secondary liability doctrines have long been part of the U. Grokster. especially works that can be digitized easily. ese companies. ey provide an effective means of enforcement by placing liability on those who are benefiting from the infringement and are in a position to control or restrain it.S. like music or motion pictures or photographs. the prospect of secondary liability for copyright infringement traditionally was an important safeguard that discouraged businesses from using copyrighted works as a “draw” for customers without permission. had to be balanced by the courts with freedom to engage in largely unrelated areas of commerce.S. it is unlikely that such individuals would be able to pay for the damage their actions have caused. locate. or some combination prevails. of America v. Universal Studios. saying that there would be no such liability as long as a product was capable of “commercially significant” or “substantial non-infringing uses. or additionally.” Since the Court found that the predominant use of the Betamax was non-infringing. not “merely symbolic. such as the old Napster. Inc. essentially enlisting millions of consumers into a network of copyright infringement on a scale never seen before. however. Ever since then. as more and more technological developments permit companies to take advantage of individuals’ infringing activity. such technologies could be used within a framework of collective management as a supplement to traditional blanket licenses. to record broadcast television programming for viewing at a later time. e Court found no contributory liability. and earn advertising dollars based on the size of the audience the infringing activity attracts. In the United States. common law of copyright. ese doctrines may play a much more important role in copyright in the future. and bring enforcement actions against the vast number of individuals who might be infringing their works. In the United States. Market forces — and not governments — must determine whether collective management of rights. now can copy and distribute millions of copies of works over the Internet. large-scale infringement raises serious questions about enforcement. Morpheus. we have seen companies deploy peer-to-peer networking technology to take advantage of this fact. the Court did acknowledge that copyright owners are entitled to effective. In an effort to address efficiently the infringement in these circumstances.” copyright protection. it did not need to further clarify what it meant by “substantial non-infringing uses.S. e various cases brought against such companies suggest the courts may be having trouble finding the appropriate standard for secondary liability in the digital age. this case has guided the courts in the proper application of the doctrine of contributory infringement. provided software and services to users. FUTURE CHALLENGES Determining the Proper Scope of Secondary Liability in the Digital Age Another interesting facet of the rapid evolution of digital technologies in the past decade is the personal nature of the new technology. U. Alternatively. is prospect of liability.gies that facilitate individual transactions between rights holders and users. e intensive use of automation could reduce the cost of such a transaction to levels that would make individual rights management economically feasible. Aimster. e fact that the activities of many individuals can cause massive. and Kazaa. which purchasers used to “timeshift. however. Sony involved the sale of the Betamax videocassette recorder.

the Internet provides the individual with access to a vast reservoir of information of all types. and he or she cannot resolve the question of whether the copyright law permits or prohibits using such works. there is very little uniformity among national laws as to secondary liability. which is ultimately the goal of any efficient copyright system. ere may be.S. U. e Court ruled unanimously that such providers could be held liable if they “distribute a device with the object of promoting its use to infringe copyright. the Copyright Office has begun an inquiry into the orphan works question to determine the nature and scope of the problem and what legal or regulatory solutions might be needed to address it. As an international matter. and that it complies with international copyright rules that prohibit the imposition of formalities that are a condition to the enjoyment and exercise of copyright. but is unsure of the copyright status of a work or whom to ask for permission. the U. including Canada.” If it is truly the case that the copyright owner of such a work no longer cares about its subsequent use. Library of Congress.  Marybeth Peters is the Register of Copyrights. an Internet service provider that provides facilities used by others to infringe. In the United States. then such use should not be restrained merely because of uncertainty about a work’s status. is result would deprive the public of access to a new and productive use of the work. whether it be liability for a company that uses peer-to-peer technology to encourage infringement. in MGM Studios v. Copyright Office. Grokster. as the United States addressed in Title II of the DMCA. Other countries. or. have already developed mechanisms for issues related to orphan works.S.Most recently. from text to photographs to music to audiovisual works. Often that author would like to use some of the material he or she might find. Many commentators have already called this case one the most important in the history of U. and held that the rule in the Sony case does not prevent liability where the defendant has been found to have induced infringement. however. Moreover. where a company can set up an infringement-facilitating operation that serves customers throughout the world from one country. is rule should allow copyright owners to obtain effective enforcement of their copyrights against software and service providers who seek to encourage and profit from copyright infringement. it can be held liable for that infringement. Supreme Court addressed whether the providers of peer-to-peer software could be held liable under secondary copyright liability theories. copyright law. e Court instructed lower courts to examine all the facts and circumstances to determine whether such inducement took place. Maintaining effective protection for copyright in the digital age might require such international standards. especially given the global nature of the Internet. . One challenge for the future is how the law should treat these so-called “orphan works. As we described above.” In other words. collective licensing of works can help such an author by providing efficient mechanisms so he or she can obtain permission to use works. Reducing Inefficiencies for Subsequent Users As we have seen over the past decade. is may be an area that warrants examination concerning international standards for such liability. some or even many works for which the author cannot find an owner or an administering collective agency. as shown by clear expression or other affirmative steps taken to foster infringement. Part of the challenge in addressing such a problem is ensuring that it is fully consistent with and does not derogate from the legitimate interests of authors and rights holders. if a technology provider induces its customers to infringe copyrights.S. digital technology 58 also provides that individual with the ability to become an author by creating and disseminating her own works.

59 . of a work located in the scene of an event being reported. or get permission from the owner.html and http:// memory. It permits certain limited uses without permission from the author or owner. e 1961 Report of the Register of Copyrights on the General Revision of the U. See the U. reproduction by a library of a portion of a work to replace part of a damaged copy. including whether such use is of a commercial nature or is for nonprofit educational purposes. and  the effect of the use upon the potential market for or value of the copyrighted work. HOW DOES “FAIR USE” APPLY? e Internet magnifies the possibility for making an infinite number of perfect copies.” No factor by itself will determine whether a particular use is “fair.gov/ammem/ndlpedu/start/cpyrt/. summary of an address or article. reproduction of a work in legislative or judicial proceedings or reports. reproduction by a teacher or student of a small part of a work to illustrate a lesson. Keep in mind that. Depending on the circumstances.” Be careful when using material from the Internet. scholarship.gov/fls/fl102. Copyright Law cites examples of activities that courts have regarded as “fair use”: “quotation of excerpts in a review or criticism for purposes of illustration or comment. “where the aim is to substitute for subscription or purchase.S. that is. for illustration or clarification of the author’s observations. http: //www.  the amount and substantiality of the portion used in relation to the copyrighted work as a whole (is it long or short in length. in a news report.WHAT IS “FAIR USE”?  “ air use” is an exception to the exclusive protection of copyright under American law. quotation of short passages in a scholarly or technical work. Copyright Office’s Copyright Information Circulars and Form Letters for “Circular 21 — Reproductions of Copyrighted Works by Educators and Librarians. even in an educational setting. though it is often unable to ascertain possible rights holders because of the age of the materials. e National Digital Library Program goes to great effort to identify possible copyright owners for items in American Memory. keep in mind the four factors of the “fair use” test. news reporting. incidental and fortuitous reproduction. are you copying the entire work.” FOR CLASSROOM USE. copying may be considered “fair” for the purpose of criticism. or notes that may safely be taken without permission. lines.” courts are required to consider the following factors:  the purpose and character of the use. e distinction between “fair use” and infringement may be unclear and not easily defined.S. use in a parody of some of the content of the work parodied. or just part as you might with a long novel). When the rights holder is known to the program. with brief quotations.” that is. it will provide that information in the Restriction Statements accompanying the collections. teaching (including multiple copies for classroom use). which changes what it means to be “fair.loc. as you might with an image. Acknowledging the source of the copyrighted material does not substitute for obtaining permission. ere is no specific number of words. it is not “fair use” to copy for a “commercial motive” or to copy “systematically.” To determine whether a specific use under one of these categories is “fair. in a newsreel or broadcast. This material was drawn from the Library of Congress’ Copyright Office web pages.  the nature of the copyrighted work.copyright. comment.” All four factors must be weighed together in light of the circumstances. or research.

but for which such protection has expired. Eisenstadt information contractually designated as unprotected). the exclusive right to their respective writings and discoveries. is one of the world’s greatest contributors to the public domain. a robust public domain also contributes to a democratic society. producer of the single largest public body of scientific and educational information.” recognizes that government information is a valuable national resource and that the free flow of information between the government and the public is essential to a democratic society. since failure to do so could constitute plagiarism. e term “public domain” refers to materials and information that are not protected by intellectual property rights (IPR). Constitution (Article I. They achieved this balance by limiting the term of the exclusive right and allowing the growth of an unrestricted “public domain. e public domain also includes works subject to copyright protection. government practices also have promoted broad dissemination of information generated by federal government funding. Clause 8) that provides Congress with the power “[t]o promote the Progress of Science and useful Arts. Its Office of Management and Budget’s Circular A-130. users should still acknowledge the source of the work. Note that the European Database Directive adopted in 1996 created a new type of intellectual property protection (sui generis) for databases. Even if works are in the public domain. In the United States. 1 he patent and copyright clause of the U.Public  e IMPORTANCE of the Domain By Anita R.S. this includes factual information1 and works created by federal government employees in the scope of their employment. U. or been abandoned. Section 8.” which typically refers to works that are copyright-protected.” speaks of “securing for limited times to authors and inventors. restricting certain uses of factual information compiled in databases. and the advancement of science. been renounced (such as 60 . Information in the public domain is available for the public to use without prior authorization or restrictions on reuse. ”Management of Federal Information Resources.S.S.” The insertion of the phrase “ for limited times” shows that the Founding Fathers of the United States realized that it is critical to balance the intellectual property interests of authors and inventors with society’s need for the exchange of ideas.” Just as a functioning intellectual property system can generate significant cultural and economic benefits. e U. government. a strong economy. Public domain is different from “open access. but whose authors or publishers have chosen to make the work freely available to the public. Grantees who receive federal government funding are strongly encouraged to share the results of their research.

She is an expert on federal scientific data policy. However. the International Council for Science (ICSU).edu/ catalog/10785. see:  e Role of Scientific and Technical Data and Information in the Public Domain: Proceedings of a Symposium. Government Printing Office bookstore.edu/ pd/. International and intergovernmental organizations — UNESCO.  WSIS Declaration of Principles and Plan of Action.S.int/wsis. producing. http://www.itu. 61 . there is tension in finding the optimal balance between the public domain and intellectual property protection. http://books. one thing is clear: Free and forward-moving societies need both. National Research Council.  UNESCO Policy Guidelines Related to Governmental Public Domain Information.S.nap. and preserving published information. Eisenstadt is a foreign affairs officer for Communications and Information Policy in the State Department’s Bureau of Economic and Business Affairs. most of it in the public domain. providing. cataloging. on detail from the National Science Foundation where she serves as assistant general counsel. Office of International Communications and Information Policy. www.A customer at the U. The agency is the federal government’s primary resource for gathering. government’s published information is now available electronically.  Duke Law School Conference on the Public Domain. e approaches to resolving this tension are almost as diverse as the governments seeking to resolve it. Certainly.law.CODATA.unesco. A robust public domain also contributes to a democratic society: Much of the U. http://www.org/ci/ ev. It is essential to promote the broad dissemination of knowledge and information while ensuring that authors and inventors receive appropriate protection for their work.php?URL_ID=15863&URL_DO=DO_ TOPIC&URL_SECT. and the Committee on Data for Science and Technology (CODATA) — have focused on the importance of the public domain for both developed and developing countries.org.  Anita R. http://portal. the United Nations’ World Summit on the Information Society.duke. For additional reading on this topic.html.

the focus has shifted from these laws to what countries actually are doing on a daily basis. Jason Gull. government experts to discuss these and other questions regarding the enforcement of intellectual property rights (IPR). . Why does effective enforcement often lag behind the institution of law? What are the barriers to enforcement? Will the benefits of enforcement be shared by all countries or just a few? e State Department’s Bureau of International Information Programs (IIP) invited a panel of U.S. We’ve found that many countries have laws on the books that are TRIPS-compliant. Led by moderator Berta Gomez. a Priorityfor All Countries  any countries have adopted sophisticated laws to protect intellectual property in order to join international or regional accords and organizations. Department of Justice’s Computer Crimes and Intellectual Property Section. but that much remains to be done to actually enforce those rights at the borders and in the civil and criminal court systems. the creation of laws alone will not enable a country to effectively enforce the rights of property holders. effective enforcement of intellectual property rights should be a priority for all countries seeking economic growth and full participation in the world economy. part of the Department of Homeland Security. where does enforcement fit into an overall intellectual property strategy? SMITH: As the world economy develops and as economies are more reliant on high-technology sectors. However. the emphasis was on advising countries about drafting legislation that would conform to obligations under the World Trade Organization’s Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS).Enforcement. According to these experts.S. 62 Roundtable: Customs and Border Protection Service. e following is their discussion. an attorney adviser in the Office of Enforcement at the U.S. the importance of protecting intellectual property rights is rising. Over time.S. That requires the development of appropriate enforcement mechanisms. Patent and Trademark Office (USPTO). When the Patent and Trademark Office began conducting overseas training in 1997. a senior attorney adviser in the Intellectual Property Rights Branch of the U. MODERATOR: First. and Joseph Howard. the roundtable discussion included: Michael Smith. a trial attorney with the U. then a senior writer-editor in IIP’s Office of Economic Security. a country has taken an important first step. By doing this.

We would like to see countries come to a general agreement about what those rights should be. has created markets that are increasingly global in scope. For example. release. the harmonizing of intellectual property laws around the world through international agreements. But without effective enforcement. and other rights holders around the world are reluctant to invest in countries where. trademarks. Federal Bureau of Investigation (FBI) “wanted” poster for an individual charged with copyright infringement. in addition to all the positive activity this technology allows. GULL: From our perspective at the Department of Justice. Just as tangible things can move easily and cheaply across borders. California. A combination of factors. health department officials during a news conference announcing the confiscation of illegal pharmaceuticals. e Internet allows for instantaneous distribution of information around the world at essentially no cost. going back even to the Berne Convention. In the United States. counterfeit products manufactured in East Asia have been a problem for a long time. and patents become more important each year to the U. a variety of federal laws and agencies protect consumers from counterfeit products that endanger health and safety. MODERATOR: You said improvements in shipping make it easier for goods to cross borders. So. including improvements in shipping. And U. is important to defining the rights of authors.A U.S. telecommunications. But counterfeit production like this becomes an even greater problem as the products become less expensive and easier to ship to other parts of the world. is problem is growing as the digital sector of the economy is growing in the United States and in other countries. people are using the Internet to engage in massive infringement of intellectual property. or invent something. inventors. As copyrights. IP problems can likewise be exported. enforcement has become a much more significant issue. economy. technology. copyrights. our interest in protecting those rights abroad increases. on a day-to-day basis. Is this one of the barriers to effective enforcement? 63 . In the last few years. and companies in products they develop. patents. trademarks. Effective enforcement of these rights is required so that authors and inventors can make rational decisions about whether they’re going to publish. and trade secrets are not adequately protected. and the Internet.S. Los Angeles. these laws are essentially empty promises.S.

or software — will likely find their own products being pirated along American ones. companies. When the USPTO conducts technical assistance. first. If you don’t respect intellectual property rights. local music is not only an indigenous cultural heritage issue. or software.S. or fi lm. in much the same way that trademark owners must work to protect their brands. “Why protect intellectual property when it’s all American or rich countries’ brands? Why should I do the bidding of these U. A trademark is simply a brand. particularly in Asia. A country can help build its own brand image by ensuring effective IP enforcement. suffer. too. If a particular trademark holder starts turning out poor-quality products. Without political will starting at the very top of the government. But if a country allows piracy to go unchecked. Michael’s point about indigenous music is an excellent one. if your country is governed by the rule of law and has signed certain international agreements.HOWARD: Perhaps the most critical obstacle to effective enforcement is the absence of a full understanding of the value of intellectual property rights to every nation that engages in international trade. companies?” One answer is that. For example. many pirated products are copies of goods produced by U. We have found. it’s important that you give them the full value of their rights. Since the domestic creators of music. I’ve spoken in several countries overseas. am asked by foreign audiences. Of course. or artisans are creating intellectual property. which leads to growth and a better quality of life. countries that neglect IPR enforcement will tend to see their reputations.S. e government also has to work on public awareness to make sure that the public agrees that intellectual property is worth protecting. and in each I was asked. 64 Conversely. you need an effective legal regime that protects people’s rights. and that their decrees will trickle down to street-level enforcement. . tend to rely more heavily on their own domestic markets for their livelihoods. countries themselves must work to enforce IPR to protect the country’s own reputation. as your country develops its own sectors in which manufacturers. which are then sold overseas. it’s hard for enforcement authorities to look at these issues as important and to commit resources to solving them. we try to explain why enforcement is important to the local economy. that is not to say that protecting intellectual property rights is just a matter of convincing the upper levels of government that this is an important issue. SMITH: Another key barrier to effective enforcement is a lack of political will. such as Microsoft’s software or American pop stars’ CDs. that there’s a link between the ability of the country to provide effective enforcement mechanisms and the growth of music made by local artists. inventors. e reputation goes down. MODERATOR: But how does a government go about providing effective enforcement once it has decided to do so? GULL: Although political will is certainly important. “Why should we do this? Why are we protecting the wealthy nations or manufacturers who own these intellectual property rights?” My response is that. no one wants to invest in your country. You won’t attract the foreign capital that you need to improve the lifestyle of your nation’s inhabitants. it is a copyright issue of economic concern to local industries. people will stop buying them. then it’s clearly not just benefiting the wealthy countries. its own industries – music. Secondly. including intellectual property rights. Once people appreciate the value of the rule of law. and the investment climate. people don’t appreciate that protecting intellectual property is important to employment. GULL: I. a high level of piracy at home may hurt these domestic producers most of all. it is obligated to adhere to its agreements. It conveys information about the reputation of the manufacturer and the reputation of the product. Many times. To encourage investment. or movies.

California. A police officer throws a box of pirated CDs into the fire near Jakarta. Governments should make sure that their publics agree that IP is worth protecting. In Cressier. officials crush counterfeit Swiss watches. To support one of its most famous industries. Switzerland. low damage awards are not a deterrent to pirates and counterfeiters. In many countries.A soil compressor destroys counterfeit CDs and tapes in Brasilia on Brazil’s National Counterfeit Fighting Day. Foreign media in China were invited to this IPR case being heard in Beijing’s highest court. Sheriff Deputies in Whittier. Switzerland’s border control confiscates thousands of counterfeit watches every year. 65 . check counterfeit Microsoft registration hologram stickers seized following an undercover investigation. Indonesia has imposed harsher laws providing fines and jail terms for copyright violators. A criminal investigation can be initiated through the complaint of a rights holder. but this should not be a requirement before police can act.

and the people I spoke with said that they wanted a customs system like that in the United States. Judges will be more willing to mete out deterrent penalties. The Intellectual Property Rights Module (IPR module) is the U.cbp. e web address is http: //www. e public version of the IPR module1 can be easily accessed. a local fi lm studio or software publisher will find it very difficult to compete.000 recordations. 1 . Click on the “Quick link” at that page for “Intellectual Property Rights. a trademark or copyright. including images. DVD. e U. to at least have a mechanism so that others can bring information to your attention.S. at’s crucial. whether prison time or monetary damages. I explain that it’s reasonable. Just as with 66 intellectual property rights that are recorded with us. Office of Regulations and Rulings. If the public is on board with protecting intellectual property. countries that want to avoid being overrun by American goods might consider strengthening their protection of intellectual property. people have to want to do it.S.S. MODERATOR: Can you describe the training or speaking that you do overseas? HOWARD: I’ve gone to other countries.gov. Ironically. The IPR module currently contains over 25. The IPR module is an extension of the Customs recordation process. Customs Services’s automated system containing information about recorded intellectual property rights. intellectual property rights) issuing from the U. Prosecutors will be willing to pursue those cases because they won’t face the wrath of an unhappy public. MODERATOR: And this is a case in which new technology actually helps enforcement? HOWARD: Yes. It provides a systematic listing and detailed information. to assist Customs officers in providing adequate protection on a timely basis. It seems people from all over the world look to our government for guidance on how to do certain things. It encourages the authorities to enforce rights. MODERATOR: Do you have examples of countries in which you’ve seen progress and growing interest in protecting IPR? HOWARD: I was in Egypt when they were talking about IP enforcement issues. looked at legislation.” e web site also contains a wealth of information about our intellectual property rights border enforcement program. Many countries thought that that was useful. to the IPR Branch. In countries where every kind of CD. Customs Service also enforces exclusion orders (legally binding commands barring entry into the United States of goods that allegedly violate U.Piracy can make it even tougher for domestic industries to compete with large foreign companies. HOWARD: It is particularly important for a country to have a mechanism whereby a foreign rights holder can bring a problem to the attention of authorities and have a realistic chance of receiving enforcement activity on his or her behalf. is overcomes the inertia that otherwise is present. information about exclusion orders issued by the USITC is entered into the IPR module for dissemination to field officers. and talked to people about what we do. A public version of the IPR module is available to those outside of Customs. based on price. or software is available for a couple of dollars per disc. ey might not like what we say in some instances. Bureau of Customs and Border Protection and recording that right with the IPR Branch. But as my colleagues have pointed out. if you don’t have the resources to have a database of all the intellectual property rights that might be infringed. then police officials will be willing to shut down street vendors selling pirated and counterfeit products.” and at the next page click on “Intellectual Property Rights Search (IPRS). federally registered intellectual property right. at would serve local industry in the long run by allowing that industry to grow and encouraging investment. Information about that intellectual property right is entered into the IPR module and made available to field officers.S. with the latest Silicon Valley software or Hollywood blockbuster. Recordation refers to bringing a valid. but they’re open to considering what we have to say. International Trade Commission (USITC).

But a lot of what is done in the United States is not practical for most countries. India is requiring identity proof from cybercafé customers.S. DVDs. etc. It does not require countries to provide protection at the border with regard to exportations of such goods or movements of such goods within the country that might be exported later. we would advocate for “TRIPS-plus” provisions.S. for instance. government right now is regulating optical disc (i. the TRIPS agreement requires countries to provide for protection against imports of pirated copies of goods and goods bearing counterfeit trademarks. In training. within Europe or Asia. We do this in bilateral negotiations as part of the free trade agreements negotiation process. TRIPS provides minimum standards. the Patent Office uses that as a starting point to encourage compliance with a country’s obligations under the TRIPS agreement. MODERATOR: Are countries receptive to this? SMITH: Definitely now more than 10 years ago. To check cybercrime. so the product is being exported. CDs. government has.. we would advocate export controls at the border and optical disc regulations. So a primary concern of the U. government is the exportation of pirated and counterfeit goods that are produced in one country to other countries. we would emphasize why. Also. For instance. In that case. most countries don’t have as many border crossing points as the United States. this overproduction of pirated material can’t be supported by the local economy.S. under the TRIPS agreement and have had legislation in place for a while. they are often needed in order to have an effective enforcement system. as countries have become more comfortable with their obligations A growing problem for governments and rights holders: Massive infringement of IP through the Internet is growing. Having said that.e. Obviously. Certainly developing and least developed countries don’t have nearly the resources that the U. I think that.S. In these instances.) piracy in countries where the production exceeds the amount of legitimate demand. A steamroller crushes a pile of counterfeit Winniethe-Pooh dolls during Thailand’s annual destruction of seized counterfeit items. such as establishing a system so that rights holders can go and record and seek enforcement of their rights. Of particular importance to the U.SMITH: I think most countries would agree that the U. a country can be fully in compliance with the minimum obligations of the TRIPS agreement and still have a huge problem at its borders. In technical assistance programs overseas. although these are not TRIPS requirements. they become more receptive. system for protecting intellectual property rights at the border is one of the most efficient systems in the world. e customs services in these countries have to decide how best to utilize the resources that they have. MODERATOR: How big a problem is corruption as it relates to IPR? 67 . VCDs.

one barrier to border enforcement is that it’s labor-intensive. SMITH: You asked. GULL: Yes. you’re going to have a problem with effective enforcement at the border. there is bound to be some corruption. Of course. a more efficient use of a government’s time and money would be to use their organized crime statutes to prosecute these cases at the source of the funding. both within the United States and in many other parts of the world. for now at least. and he’ll burn you a copy or get you a counterfeit copy from a van or an apartment down the street. On the criminal side. Criminal enforcement and border enforcement can be grouped together in that they are actions taken by the government. Without knowledgeable customs inspectors. In many countries. You need customs officials at the border who are good consumers. the biggest effect of going after street vendors is that piracy gets pushed a little off the street. and in many other countries with more established civil law mechanisms. the infringing goods and the machinery used to produce those goods are not actually destroyed. those laws are not applied in practice. we’ve found that. 68 . Criminal gangs. On the government side. e USPTO found that. in some countries. the infringement of intellectual property rights has its base in organized crime. “What are the barriers to effective enforcement?” I think it depends on whether you are talking about civil. it’s going to affect intellectual property enforcement. But in those places where corruption is widespread. there isn’t as mature a civil enforcement system. seizures of counterfeit goods. Another aspect of intellectual property piracy and counterfeiting is organized crime. at is. In those areas. another problem is that countries initially might prosecute numerous cases of vendors selling pirated or counterfeit goods on the street. Generally.GULL: Corruption is a significant problem in a number of countries around the world that are trying to enforce intellectual property rights. Although this might get the infringers off the street. it’s not going to the source of the activity. and monetary damages. We’ve also found that the damage awards that many courts give are so low that they are not actually a deterrent to those who engage in piracy or counterfeiting and do not adequately compensate rights holders for the harm they have suffered. Michael touched on the critical importance of having effective civil remedies. ey can enter back into the stream of commerce. e problems on the civil side are similar in many countries around the world. the vast majority of enforcement is done by copyright holders or trademark owners who initiate actions. criminal and related border-enforcement mechanisms are the only realistic chance of making a dent in intellectual property infringement. are involved in the production and distribution of pirated and counterfeit goods at all different levels. In some places. it’s more effective to go after “big fish” than small ones because you cut off the supply. it’s a private litigant going in and redressing harm in a civil courts system. you’ll have one guy with a sign saying CDs and DVDs. erefore. On the civil side. at’s obviously not in the best interest of the rights holders or the public. e United States has effective civil remedies: injunctions. although lots of countries have legislation and a civil procedure code that provides for a rights holder to go into court and get interim relief or a temporary restraining order. In the United States. corruption of public officials is by no means unique to intellectual property issues. and who have an interest in enforcing the rights of trademark holders. When there’s a lot of money involved in an illicit activity. Part of this is related to just how much money is at stake. or border enforcement. Finally. instead of a table full of pirated optical discs. familiar with the trademarks that have been recorded. One has a realistic chance of actually obtaining those types of remedies here. criminal.

as well as a federal trademark violation. by definition. MODERATOR: Do health authorities have a role in telling consumers that counterfeit products may be unsafe or dangerous? GULL: In the United States. rather than simply allowing a certificate from a copyright office as “prima facie” (Ed. in some countries. would likely be a violation of Food and Drug Administration laws regarding drug safety. Or consider airplane parts. is is about people’s lives. that’s not possible because. there’s no way of tracing it to the true manufacturer. is is a serious impediment because it’s not practical for the rights holder to make a complaint in every instance. e government can play a role in educating the population that intellectual property protection is not only an economic issue. and people purchase them unwittingly. the port or ship they’re going to be on. When something is counterfeit. but may not have the same features as the actual product. We encourage countries to eliminate this kind of requirement. Either they don’t contain the components that they’re supposed to or they contain components that are lethal to people. the origin of the product can be traced.S. When genuine liquor violates health and safety standards. a variety of federal laws and agencies protect against the kinds of counterfeit products that endanger health and safety. Health and safety issues can bring the discussion to a more personal level than the economic aspects of intellectual property protection. A court may require that there be testimony from the actual copyright owner.S. Also. Selling a counterfeit drug on the Internet. you may not get the support that you would get from a legitimate manufacturer if the product is defective. It means that. a criminal prosecution or investigation cannot be initiated unless there is a complaint from a rights holder. for example. states as well. For example. at helps us to focus our efforts and not waste our limited resources. where a pirated or counterfeit product is labeled as meeting laboratory standards of safety. is sort of excessive formality can impede an effective enforcement regime.  69 . Note: Latin for “on its face. MODERATOR: How important is participation on the part of the rights holder? HOWARD: e U. counterfeit liquor is prevalent in a number of Eastern European countries. have been accomplished. But with counterfeit goods. It might violate laws in the individual 50 U.” as it seems at first sight) evidence of copyright ownership. Often it’s little things like this that persist even after the large steps of signing on to TRIPS. SMITH: is ties in with public awareness. police aren’t empowered to seize offending goods that they recognize on the street or at a criminal enterprise. but actually contains faulty components. Often the rights holder can pinpoint the date when infringing goods are going to arrive. e factory where it was made can be inspected and forced to improve. or the mode of entry into the United States. like the fake Viagra advertised by “spammers” through e-mail. some countries erect or maintain artificial barriers that make it more difficult to show ownership of a trademark or copyright. or it may not be as safe or last as long. but also a health and safety issue.In some countries. A counterfeit product may be sold at a lower price. the origin of the product is unknown. Customs and Border Protection Program relies heavily on the rights holder who has recorded something with us to bring information about potential problems to us. Equally or perhaps more important. Intellectual property rights holders also might help themselves by educating the consumer to understand that not all decisions should be based merely on price alone. Counterfeit food products and counterfeit pharmaceuticals have resulted in deaths. whether it’s in their actual law or merely a policy on the part of the police and prosecutors.

DVD-Recordables (DVD-R). With digital technology. motion picture industry. In 2003.Fighting Optical Disc Piracy By Laura Lee with Bonnie J. the quality of a digital pirated disc is as high as the original. and the creation of valuable new jobs. In order to tackle this fast-growing crisis effectively. e “Effective Practices” are designed to identify and control all facilities that replicate optical discs by requiring that authorities strictly license optical disc producers and manufacturing equipment. seized more than 52 million pirated optical discs. Optical discs include formats such as digital versatile discs (DVD). a film enthusiast anywhere in the world can view movies from India. two features that make them highly 70 vulnerable to piracy. video compact discs (VCD). including the movie.S. working with law enforcement agencies around the world. e regulations also require that licensed optical disc producers retain production records and add source identification codes (SID) to each disc produced. Every industry that depends on copyright protection. Piracy hinders the development of these industries in many countries and thus discourages potential investors. the U. it is essential to develop and implement innovative tools for controlling piracy at the source of production. Mexico. K. compact discs (CD). . and laser discs (LD). or Egypt. Chinese. ese same technological advances. have also given rise to serious forms of piracy. and a production facility can churn out a huge volume of illegal discs in a relatively short time. CD-ROM. and software industries. measures that will help ensure that licensed facilities are producing only legal optical discs. however. compact discs with recording cores of dye instead of metal (CD-R). Countries put their economic future in jeopardy when they fail to adequately protect these industries’ intellectual property rights (IPR) from both optical disc and traditional forms of piracy. Unlike traditional piracy involving analog technologies. or Zairian music at the click of a button. is facing tremendous losses from optical disc piracy. music. One useful way of doing so would be to adopt optical disc regulations along the lines of the “Effective Practices” adopted by government leaders at the APEC (Asia-Pacific Economic Cooperation) conference in October 2003. and music lovers can download the unique sounds of Russian. A well-enforced licensing scheme will provide legal grounds for the immediate closure of unlicensed facilities. Optical discs are inexpensive to manufacture and easy to distribute. innovators. Richardson New Tools for  igital technology has turned into reality the promise of innovative ways of distributing creative works on a global scale.

71 . the U. seized more than 52 million pirated optical discs. and two optical detectors onto a CD. VCDs. a unique serial number. Steamrollers crush confiscated pirated music and movie CDs. In 2003.Fighting pirates: These DVD-Audio discs offer a higher sound quality than common music CDs. An inventor in Israel. and DVDs in Manila. plasticcovered electronic card with an electronic chip. believes he has found a solution to the worldwide problem of CD piracy by placing a slender.S. the Philippines. but also contain a digital watermark that prevents the owner from making perfect copies of the content. motion picture industry. working with law enforcement agencies around the world. Amos Loewidt.

workers prepare movie.S. showing pirated and authentic copies of CDs. and software discs for destruction. A foreign tourist browses the selection of pirated CDs in a stall in Phnom Penh. The U. Russia. music. . Governments have to remain flexible and develop new tools to deter pirates. The “Effective Practices” discussed in this article endorse a government’s authority to conduct surprise inspections of optical disc producers’ facilities. A peddler in Moscow.An official from Thailand’s Commerce Ministry inspects a pirated DVD from a shelf showing pirated movies during a raid at a shopping mall in Bangkok. Bulgaria. and computer software to a prospective customer. government is working with Russia to adopt vital optical disc regulations. 72 In Sofia. videos.

China. and revamped organized crime laws. Malaysia. such as optical-grade polycarbonate. such as Interpol. 73 . these tools may include money laundering statutes. surveillance techniques. with its potential for high profits and minimal penalties in many countries. the “Practices” endorse a government’s authority to conduct surprise inspections and to seize and destroy machinery used to produce pirated materials. Pakistan. and Taiwan employ optical disc regulatory regimes. have identified counterfeiting of optical discs as a valuable source of funding to criminal syndicates and terrorist groups. In order to stem the tide of piracy in an effective manner.S. Law-enforcement authorities. government is also working with the governments of Russia. e welfare of the copyright industries depends upon the coordinated efforts of all countries to dedicate the same kinds of legal tools to fighting piracy that they bring to other kinds of organized crime. We believe that every country whose optical disc production facilities are producing significant quantities of pirated products should create and enforce this type of specialized regulatory framework for controlling the production of optical discs. K. subject to reporting requirements that facilitate the tracking of these materials. The MPAA is a nonprofit trade association representing seven of the largest producers and distributors of television programs. Pirate syndicates are constantly migrating optical disc production from jurisdictions with antipiracy regulatory regimes to countries still lacking sufficient protection. An effective means to sever this tie between criminal syndicates and optical disc piracy is the use of laws designed to combat organized crime. It is only with a truly international approach — one that adopts and enforces tailored optical disc regulations — that optical disc piracy rates can be significantly diminished on a local and global scale.e “Effective Practices” also make the cross-border traffic in manufacturing equipment and raw materials used to make optical discs. Pirates aim to be always one step ahead of current regulatory regimes. the Philippines. To date. Bulgaria. An increasingly troublesome facet of optical disc piracy is its association with criminal organizations. e U. Laura Lee is a student at the University of Virginia School of Law and MPAA intern. and ailand to adopt these vital optical disc regulations. Organized crime has been quick to realize that piracy. is one of the most lucrative and low-risk criminal businesses. and Singapore is in the process of completing a similar system. Furthermore. Richardson is vice president for Trade and Federal Affairs at the Motion Picture Association of America (MPAA). feature films. it is imperative that governments remain flexible and develop new legal tools on a continuing basis. Among others.  Bonnie J. and home video entertainment material.

Creators will more likely stay in their home countries if they are able to produce an income from their talents there. Books serve as tools for entertainment and education.S. Proof of this is that AAP raids abroad almost always uncover illegal copies of local materials. foreign and domestic producers and — ultimately — every national economy.S. is a gross underestimate. sixth. publishers. copyshops that make it easy to illegally photocopy works often have lines out the door. and consumers around the globe. without fear of reprisal. unfortunately. and retailers are often denied the opportunity to satisfy the world’s appetite for books because rampant print piracy. Unfortunately. but who will be creators in the near future. e Association of American Publishers (AAP). book publishing industry.  Pirates marketed fifth. commercial photocopying. printers.S. as well as professional. Popular titles. Biswas. Naipaul’s A House for Mr.K.SECTION III: ISSUES BY INDUSTRY Trade Association  ooks are everywhere around us. seventh. Rowling’s Harry Potter® series. Protecting their ability to do that serves them and their countries as well as their publishers. can be found in bookstores all over the world. at a time when the author had written only four! 74 A at Work By Patricia L. based on calculations of losses in just a few countries and territories.  English-learning programs and other language courses advertise use of high-quality materials and display original products. and societal development. and adherence to international copyright standards by all countries. and most also have publishing or printing industries that are suffering from the same type of piracy encountered by U. this figure alone underscores the need for improved enforcement in many places. publishers. and eighth books. estimates that its members lose over $600 million dollars a year because of global piracy. is number. businesses. personal. the principal trade association of the U. and digital piracy work to destroy the market for legitimate materials. legitimate authors. since copyright pirates prey on authors. Every country has writers and scholars. Every country has students who may be primarily users of information now. supposedly in J. such as the Harry Potter® series or Nobel Prize winner V. illegal translations. Judd ese activities — often seen by many book consumers as harmless — hurt legitimate creators. Nevertheless. . Symptoms of this phenomenon abound:  In and around universities and schools. distributors.  Medical book pirates conduct door-todoor sales. but then use illegally photocopied versions in their lessons.

75 . robbing authors of their intellectual property and the right to make a living from their work. and Jean Valentine read from and sign their award-winning books at a New York City bookstore. With today’s technologies. pirates find it easy to copy whole books.S. Lily Tuck.Winners of the U. National Book Awards Kevin Boyle.

authors in the United States and in the rest of the world can enjoy an income from the sale of their books and of subsidiary rights for translations. marketed fifth. The millions of Harry Potter fans include this nine-year-old in Denmark.K. The Association of American Publishers works within the United States and with other countries to spread the message about illegal commercial photocopying. however. movies. and TV serials. Because of IPR protection. scanner. even though at the time J. Pirates. Rowling had written only four. 76 . supposedly in the series. sixth.A new device that works as a printer. and copier. seventh. and eighth books.

training. 20001 (202) 220-4541 pjudd@publishers.W. AAP has active programs in Hong Kong. and ailand. Singapore. and conferences in the United States and overseas. D. AAP and its members also work. AAP regularly discusses intellectual property rights (IPR) issues at book fairs. Malaysia.publishers. Taiwan. e association also works closely with its international counterparts in Pakistan. e association also monitors developments in legal or practical market access. IIPA.S.org Patricia L. International Copyright Enforcement 50 F Street.C. Currently. On the policy side. member company offices. In all of this. AAP members and staff are interested in work that benefits creators and publishers in all countries and territories. with local publishers to identify projects for possible collaboration.org www. Judd Director.  For more information. which in turn is essential to the development of markets. 77 . AAP cooperates with U. the Philippines. and would welcome your input.” submitted to the Office of the U. uses this report to update the status of copyright protection in 50 to 60 countries and territories worldwide. Finally. Suite 400 Washington. publishers. AAP projects include legal action. of which AAP is a founding member. N. and several other countries. the People’s Republic of China.AAP supports the international fight against copyright pirates by partnering with local counsel. South Korea. please contact: Patricia L. not only for U. AAP works to educate the public about the ways in which copyright protection promotes creativity. where appropriate.S.. AAP contributes significantly to the annual “Special 301 Report on Global Copyright Protection and Enforcement. India. Trade Representative (USTR) by the International Intellectual Property Alliance® (IIPA) every February. Judd is the director of international copyright enforcement for the Association of American Publishers. seminars. and foreign government agencies to promote passage and enforcement of stringent intellectual property laws. but for each and every country’s creators and related industries.S. data collection. and government officials to ensure that both the public and private sectors are doing everything possible to stamp out these crimes. and media efforts to educate governments and consumers about the harms inflicted by piracy. investigation firms.

and treatment of HIV/AIDS. with Merck donating two antiretroviral drugs for treatments. has greatly reduced transmission of “river blindness” throughout West Africa by combining a spraying program and the donation of the drug Mectizan by Merck & Co. those years in which a company’s patented products are protected can help generate the funding that makes research into the next generation of drugs possible. pharmaceutical industry donated more than $1. Both of these claims are false. healthcare access. e Onchocerciasis Control Program. the U. Drug companies are not only doing the research that has helped so many. In 2003 alone. Without patent protection.Intellectual Property Rights Pharmaceutical Industry By Judith Kaufmann and the  any claim that more people do not have access to life-saving drugs because of high prices and that patent rights both increase prices and stand in the way of getting treatment to those who need it. in which the government of Botswana. ese are but some examples of the ways in which the research-based drug industry has regularly lowered its prices to the poorest nations of the world and has increased drug companies’ partnership with governments and with nongovernmental organizations to ensure that drugs reach those in need. the Bill & Melinda Gates Foundation. independently developed drugs that contain the same active substance as the original brand-name drug. other manufacturers could copy new drugs immediately. are marketed in accordance with patent law and identified . Drugs that cure AIDS and many other diseases are available precisely because of patent protection. Drug companies also are helping poorer countries through a variety of innovative public-private partnerships. Generic medicines and copycat drugs are not always the answer for those seeking an alternative to a patent-protected drug. they are ensuring that drugs reach those most in need through donations.4 billion in medicines and 78 services to people in more than 40 least developed countries. they can offer their versions at a reduced price.S. in turn. seriously hurting the ability of the company that developed the drug to recoup its costs. support prevention programs. ese partnerships include the African Comprehensive HIV/AIDS Partnership in Botswana. a powerful incentive to companies to invest millions and millions of dollars into risky research and development of these medications. In addition. Patent protections encourage research and development by offering the possibility that a pharmaceutical company’s investment will be repaid. Generics. and the Merck Co. Since their costs are minimal.

in Port Elizabeth. after announcing a comprehensive HIV/AIDS public-private partnership — with $30 million from the Merck Foundation — on May 11. producers of generic AIDS drugs.. to manufacture generic versions of its AIDS medicines. a maker of anti-retroviral generic drugs in Sao Paulo. 79 . Two bottles of a medicine for liver patients. Epogen.Chinese Vice Health Minister Wang Longde (right) shakes hands with the executive vice president of Merck & Co. A worker on the assembly line of Laboratorio Cristalia. Employees of Aspen Pharmaceutical Research Laboratories. South Africa. in addition to Aspen. Judy Lewent. Makers of generic drugs normally have not invested the millions that research companies spend to find new drugs. Inc. one real (left) and one counterfeit. 2005. GlaxoSmithKline has licensed three more South African companies. Brazil.

they often are comparing apples and oranges. Prices include various factors: training of health care personnel in the use of the drug. Copycat drugs do nothing to ensure that scientific innovation translates into new treatments that may be less toxic and more effective. but they do nothing to guarantee that new drugs will be available when they are needed. although usually not actually patented. has a thriving generic drug industry. fully regulated and inspected by the U. When people cite prices as a problem. or expired. copycat drugs can lower drug prices.either by their own brand name or by their internationally approved nonproprietary scientific name. patenting is rare for 319 products on the World Health Organization’s Model List of Essential Medicines. eir profits. 80 . explanatory materials to make it safer for the consumer. A technician in a pharmaceutical plant in Ahmadabad. Surveys indicate that more than 60 percent of medicines on sale in Nigeria are counterfeit.and middle-income countries. Patents are not the problem that people assume them to be. are reaping profits. Food and Drug Administration. for instance. Building on the enormous investment already made by the research-based pharmaceutical industry. A woman inquires about a drug at a street-side shop in Lagos. either. A recent study published in Health Affairs found that “in 65 low. Rather. they. Manufacturers of some of these drugs have not had to invest in the extensive testing required of the research-based industry even before their drug can be marketed. are not being used to further scientific knowledge and find new cures. then patents cannot be the problem in getting drugs to people. Of course.S. And make no mistake: e manufacturers of generic or copycat drugs are not in business to be generous. where four billion people live. Patented drugs often have passed much more rigorous licensing requirements than so-called generics. Copycat drugs usually simply copy the original drug manufacturer in the countries with weak intellectual property protection. Only 17 essential medicines are patentable. Patenting is rare for 319 products on the World Health Organization’s Model List of Essential Medicines. there are many reliable manufacturers of generic drugs. Price is not always the issue. e United States. substandard.” If this large amount of life-saving drugs is either off-patent (meaning that the company that originally invented them no longer has an exclusive claim because the patent has expired) or not patented. however. India. either. they reduce incentives to research and thus discourage new products. Why “so-called”? Because not all drugs that claim to be so are identical and not all are subject to the stringent inspection process that guarantees that they contain the same amount of active ingredients and work in the same way. too.

A University of Chicago field station foreman examines a Rauvolfia serpentina plant. As an article in the Washington Post recently suggested. 84) and the International AIDS Vaccine Initiative (IAVI) are two good examples of such partnerships. as the National Institutes of Health does in the United States. for instance.  Judith Kaufmann is a retired foreign service officer. since the government is paying a large percentage of the actual cost. Certainly. Illinois. State Department’s Office of International Health Affairs.” Cheap drugs are no bargain. MMV. much as the Orphan Drug Bill in the United States does. “ese entities are in effect nonprofit virtual drug companies configured to discover and develop drugs and vaccines for neglected diseases. Developed countries can offer tax incentives to encourage innovation in such areas. deals with medications used to treat diseases and conditions that rarely occur. administered by the Food and Drug Administration. Public-private partnerships are showing the way in innovation: e Medicines for Malaria Venture (MMV — see p.S. especially for drugs with limited markets or which treat diseases mostly prevalent in low. is part of a program to search for new plant-based medicines.S.even shipping and handling can be included or not. ere are issues that need to be addressed. Violating or bypassing patent protections is a short-term solution that threatens the long-term health of the world’s citizens by removing the incentives and discouraging the innovation we need. (is U.) Government research dollars can be used to do basic research. who served as the director of the U.and middle-income countries. if they do not cure the disease and if they contribute to drug resistance that may make the drug useless for everyone. “orphan drug status” gives a manufacturer specific financial incentives to develop and provide such medications. law. Since there is little financial incentive for the pharmaceutical industry to develop such medications. has 21 drug development projects to ensure that the next generation of treatment is available when drug resistance overtakes current malaria treatment options. The university’s field station in Downers Grove. including how to encourage even more innovation. If one drug seems cheaper but shipping costs are not included. a government-sponsored drug company can provide lower prices to the citizens of that country. the effective cost may be identical to that of a patented drug. 81 .

Of those 250 unique compounds. in order to identify a pool of 250 compounds that then enter into preclinical laboratory and animal testing. Industry scientists searching for a new drug typically must sort 82 through 5. If it shows promise. will show enough potential to qualify for Phase I human testing to establish basic safety. despite the standard 20-year . On average.Developing a New Drug By Neal Masia e Cost of  any of us know a family member or friend who has benefited from a new medicine: Advances in treating cancer. the Pfizer pharmaceutical company announced that it is investing $800 million just for a set of Phase III trials for a single drug. Even the high end of those estimates may soon be considered a bargain. the economic gains from medical innovation are estimated at more than $500 billion per year.000 to 10. government authorities will grant the pharmaceutical company approval to market just one. Overall. cardiovascular disease. Where does all the money go? In the United States and most other countries with pharmaceutical industries. however. private industry undertakes or funds virtually all discovery and development of new medicines. Phase 1 trials usually include a very small group of healthy volunteers who are tested to determine whether the candidate drug is both safe and effective.000 to 10. and it usually takes at least a few years between the granting of patents and marketing approval. fewer than 10. the discovery and development of a new medicine takes about 12 to 15 years. Finding new cures is an extremely expensive and risky proposition. Some drug candidates undergo several different types of Phase III trials in order to test for different kinds of effects. HIV/AIDS.000 studied). on average.S. thanks to — in many instances — new drug discoveries. In the United States alone. often building on basic medical hypotheses developed through university and publicly funded research. Estimates about the cost of developing a new drug vary widely. U. A compound or drug candidate that makes it through Phase I then enters small-scale Phase II trials in patients with a specific condition to test whether the compound has the intended effect on the disease. it graduates to Phase III trials. is means that. Economists estimate that almost half of the increase in life expectancy achieved over the past 15 years in the industrialized world can be attributed to new drugs.000 new chemical inventions that look promising. which are wide-scale tests involving thousands of patients in carefully controlled clinical testing. and a broad host of other afflictions have been nearly continuous in recent decades. Recently. for every five compounds that make it into human trials (of the original 5. from a low of $800 million to nearly $2 billion per drug. Patents are granted along the way.

HIV/AIDS and other infectious diseases. Conversely. along with the promise they hold for new treatments. testing an Alzheimer’s drug for a new pharmaceutical company. 83 . with significant investments in cardiovascular disease. a cost that increases as development times increase. however.  Dr. in the United States and in other countries. since they would have more difficulty raising investment capital if expected returns were lower. New discoveries in these areas are dependent on both the ingenuity of scientists and the confidence of the investors who fund their investigations. where they are investigating new treatments for hemophilia B. At current levels of reimbursement. Pfizer alone is investing over $8 billion this year and employing more than 12. biotech company Avigen. firms must pay returns on the capital they invest on behalf of shareholders over the course of a decade or more. e support of the international community for strong intellectual property rights regimes is a key ingredient in bolstering that confidence. e enthusiasm and support among investors for pharmaceutical companies to find new cures depends on the expected returns of a relative handful of products. as well as pharmaceutical firms looking to expand in other countries. In addition to the direct costs of development.S. Continued investor confidence has enabled large-scale research and development to continue in the pharmaceutical industry. Inc.000 scientists in the search for new cures. Neal Masia is director of economic policy at Pfizer. central nervous system (CNS) afflictions. A society that guarantees strong patent protection helps give investors confidence that their high-risk investments might pay off down the road. investors in pharmaceutical firms.A laboratory at the U. cancer. Two researchers at the Oklahoma Medical Research Foundation. If investors made the decision to pull out today and pharmaceutical research investments stopped. given the decade-long drug-development-cycle time. If a firm incurred the average cost of drug development and only invented “average” drugs. without confidence that discovery of a new cure can produce a potentially large payout. economists estimate that only about 30 percent of new medicines actually earn enough revenue during their patented product lifecycle to cover the average upfront cost of development. and a wide range of other chronic and acute diseases. Capital-starved companies would soon disappear. patent life. the average effective patent life for a new drug — the amount of time where the product is sold under patent protection — is roughly 10 to12 years. consumers would not neces- sarily notice the absence of new medicines for a decade or more. will demand that their funds be returned or invest them elsewhere. Smaller firms and biotechnology companies would certainly notice. it would quickly go out of business.

with 21 projects in various stages of development. ese companies share their knowledge with MMV project teams once they enter into agreements with MMV. for . killing 3. In those cases. and more than one million people die of the disease. retain licenses to the intellectual property. As a result. MMV is a nonprofit organization that brings public. In many cases ownership of the intellectual property rights is not necessary. fueled by the rapid spread of resistance to widely used malaria drugs like chloroquine. private. MMV is managing the largest-ever portfolio of malaria drug research. In 1999. is is not enough to tackle the problem. talks between the World Health Organization (WHO) and the International Federation of Pharmaceutical Manufacturers Associations (IFPMA). 300 to 500 million people around the world are infected with malaria. only four of almost 1. Depending on the circumstances. development. cause the intellectual property rights (IPR) to be transferred back to MMV.Partnering to Find a Cure  very year. MMV manages the ownership and licensing of intellectual property so that the partner’s interests — whether academic. Venugopal After just five years of operation. and philanthropic sector partners together to fund and manage the discovery. V.400 new medicines developed worldwide between 1975 and 1999 were antimalarials. An integral part of agreements negotiated by MMV is its innovative management of the intellectual property that its partners bring to the table. and registration of new medicines for the treatment and prevention of malaria. In Africa. MMV. the burden of malaria is on the rise for the first time in 20 years. or purely in the public interest — are reflected in the terms of agreements. since MMV is working with a company to both discover and develop a promising compound as an antimalarial. for example. 84 MALARIA: By Richard Wilder and P. These statistics represent an international disaster and a public health failure. Despite the massive burden malaria represents for developing countries. looked to pharmaceutical companies doing anticancer therapy research that has led to the development of compounds that are highly active against the malaria parasite. such as the World Bank and the Rockefeller Foundation. if not met. or have conditions in its agreements that. Such a rapid advance was made possible by MMV’s pioneering collaboration with nearly 40 public and private institutions around the world. MMV may own the intellectual property outright. commercial. led to the creation of the Medicines for Malaria Venture (MMV). malaria is the leading cause of death for children in Africa.000 every day. in collaboration with a number of institutions. since new drugs are needed to offset the malaria parasite’s pattern of developing resistance to the ones in use.

 Richard Wilder is a partner in the Washington. including price specifications and other conditions relating to access to the antimalarial by people in poorer countries. e drug resembles plant-derived artemisinins. are a tool to bring the partners in a given project together for a common goal and to ensure that the path that MMV must take to achieve its goals is clear. malaria is on the rise for the first time in 20 years. office of Sidley Austin Brown & Wood. so as to go forward with the project with a different partner. Tanzania. then. Dr. Monash University in Australia. first discovered by scientists from the University of Nebraska Medical Center. One of MMV’s most promising drug candidates is a synthetic peroxide. the determining factor is its ability to carry out its mission. e agreement will specify certain conditions that have to be met. the drug is moving into clinical development. the company may retain ownership of the intellectual property rights and use them while performing their obligations to MMV to develop and bring an antimalarial to market. Venugopal is director of international operations for the Medicines for Malaria Venture. Today. 85 . example.C. rough an agreement arranged by MMV. such as chloroquine. used to produce anti-malaria medications. e intellectual property rights. Consequently. the Swiss Tropical Institute. but on the path that MMV must take to ensure that the new antimalarials being developed under its supervision are brought to market and made affordable and accessible to those who need them in the developing world. In Africa. It is only in cases where the partner company cannot — or will not — fulfi ll its obligations that MMV needs the rights to be returned to it. on the outskirts of Arusha. and Roche Pharmaceuticals. Regardless of the nature of the intellectual property rights held by MMV.Artemisia annua plants. is illustrates the result of innovative management of intellectual property rights by MMV to accomplish its goal — and that of its partners — of bringing modern medicines to market to treat malaria. the focus is not on the intellectual property rights per se. P. Roche Pharmaceuticals has transferred more than three years of research results on synthetic peroxides to the Indian pharmaceutical firm Ranbaxy.. and could become the most important new weapon against malaria in a generation. It is now the leading cause of death for children in that continent. today’s most effective antimalarials. to speed the drug’s development at the lowest possible cost.V. D. It was the primary drug in the treatment of malaria until supplanted by synthetic drugs. which are becoming less effective against this disease. A 19th century bottle containing quinine.

Auction sites present special challenges to enforcement and raise site liability issues. Examples of such sites include eBay. medicines. easily can achieve gross revenues in the millions of dollars by exploiting weaknesses in current laws and enforcement techniques. review the pitfalls that each type of action brings. While there are many legitimate merchants. we will examine the scope of the problem. enforcement by the private sector and supportive governments requires persistence and vigilance. and iOffer. the preferred approach is to notify the offending auction site and offer an opportunity to cure the violation by removing the offending offers.com. Many of these rogue sites. trademark holders in every country face a daunting enforcement challenge. Stand-alone web sites are independent retail sites that offer goods for sale via the Internet. and anything else that can be copied for sale. (Site liability refers to the legal responsibil86 ity and culpability of the web site. however. the topic is too complex for this short article. 1 Auction web sites allow users to bid for items sold by independent sellers. responsible site operators close repeated violators’ auction accounts. Sell. If the violation continues. An international legal framework to protect legitimate trademark holders on the Internet does not exist yet. Currently. Focusing on current practices in the United States. As a result. and evade enforcement. and determine what methods may succeed. their survival is threatened by unscrupulous rivals who exploit loopholes to gain unfair advantages. The sites offer a variety of goods that range from the mundane to the specialized.Trademarks on the Internet By Angelo Mazza Protecting  ith the expansion of e-commerce through auction1 and 2 stand-alone Internet web sites that sell a wide range of products. While legitimate businesses can prosper on the Internet. is article will limit itself to a general overview of the issues related to stand-alone sites selling counterfeit products. Yahoo!. one to address auctions sites and another for stand-alone sites. 2 . there are also many sites that offer only counterfeit goods for sale. We can divide these enforcement strategies into two general areas. though they appear to be unrelated to each other or to be small operations. luxury goods. outline the steps that need to be taken. The sites offer clothing.) Since the laws and policies of each country and/or auction site vary dramatically. pass off counterfeit goods as legitimate. to name only a few. Governments and rights holders should be aware that they can take steps to protect their marks in an Internet world fi lled with round-the-clock sales by sellers from many nations.

buying almost any product is just a few clicks away. E-buyer beware: As of yet.Widespread use of the Internet has sparked a revolution for sellers and customers. 87 . there is no international legal framework to protect customers or legitimate trademark holders on the Internet. The private sector must remain committed to pursuing Internet violators. With E-commerce sites. in order to protect both trademarks and unsuspecting customers.

Many legitimate companies employ teams of in-house personnel. Law-abiding ISPs will remove infringing sites from their servers. deprives the rights holder of immediate relief. laws to require more accurate information when registering a domain name. names of dead personalities. they are not required to verify any of the information they collect. and addresses that have them living in Atlantis or other improbable locations. the site is now on notice of violation and can no longer claim ignorance as to its illegal activities. is lack of accurate information presents a major obstacle to rights holders trying to locate the site and to police the sale of goods on the Internet. Although there has been talk of amending the applicable U.S. However. Once a rights holder identifies a site offering counterfeit goods for sale. Once a site selling counterfeit goods has been identified. In almost every instance.e process of dealing with web sites selling counterfeit goods can be very timeconsuming and. Given the lack of any penalties in the United States for providing false or misleading information to a database. Typically. in many cases. specialized software. and gather Whois3 information. e Internet presents special challenges for rights holders since. and outside service providers to locate and track sites selling counterfeit goods. the rights holder prepares cease-and-desist letters and sends them to the Internet Service Provider (ISP) and to the site itself. this is not the case when the site selling counterfeit products becomes its own ISP and ignores all correspondence. there are instances of rogue ISPs that become safe harbors for infringing sites. However. however. In most instances. If contacting the site fails and the counterfeiter engages in a game of moving to alternative ISPs. hire outside investigators to make purchases that may lead to the source of the items or of the site. counterfeiters fi ll their Whois information with periods. e unintentional side effect of cooperative ISPs is that many infringing sites eventually migrate to ISPs located outside the United States. the infringing web sites provide false or incomplete “Registrant” information. the holder can begin to collect data. in some instances. Home pages of some major auction web sites. although. dashes. review databases. the site will ignore the letter. unfortunately. ISPs are cooperative when contacted. ese investigations often reveal a variety of sources for the counterfeit goods. so as to identify those responsible for the site. the site information gathered from the Whois database is woefully inadequate or completely false. those efforts have yet to bear fruit. Success requires persistence and expertise. where laws differ and ISPs are often less cooperative. under the current system. 88 . the rights holder may take additional action. In addition. e rights holder may do more research and.

must remain committed to pursuing Internet violators. 4 Left. However. 3 e enforcement problems outlined in this article will be reduced only when governments create laws that level and harmonize the Internet playing field and support private enforcement efforts. 89 . The Whois database provides contact and registration information for domain names.S. Replica sites openly sell copies of established or widely coveted goods. In other instances. it may merit a referral to law enforcement for criminal prosecution. they collect money in the United States. who must retain overseas counsel and investigators to advance the investigation. auction sites present special enforcement challenges. Often. given the lack of resources and specialized cybercrimes units. the ISP records are outdated or no longer available. currency. but ship counterfeit items to the purchasers from overseas locations.Although many sites are in English and conduct business in U. He is also the president of the International AntiCounterfeiting Coalition (IACC) Foundation. Anthony & Flaherty. LLP. which provides contact and registration information for domain names. e rights holder may initiate legal action once enough information is gathered. the Whois database. Right. where he specializes in and oversees day-to-day operations in the Internet area.  Angelo Mazza is a partner in the New York City firm of Gibney. e owners of replica sites4 are acutely aware of this lack of criminal enforcement as well. Now the rights holder faces mounting costs and the peculiarities of enforcement in a foreign jurisdiction. in the meantime. the educational and training arm of the IACC . e private sector. If the site is part of a larger series of sites under common ownership. e legal action allows the rights holder to subpoena ISP records related to the operation of the site in question. is creates additional enforcement problems for the rights holder. criminal actions represent a small percentage of enforcement actions. more often than not they operate outside the borders of the United States.

e World Intellectual Property Organization (WIPO) serves as the administering agency for the activities of the Berne Union. corporate or individual. BEST MODE [patent]. Roquefort cheese is an example of an appellation of origin because it designates both geographic origin and product characteristics. for example. Some distinguish an appellation of origin from an “Indication of Source. of an undivided portion (for example. or of all rights within a specified location (for example. which refers only to geographic origin. (See WORK MADE FOR HIRE. in some circumstances. a 50 percent interest). “Author” in copyright law includes not only writers of novels. take photographs. plays. e major multilateral copyright treaty. “Paris” perfume is an indication of source. An inventor must describe the best method he or she knows for carrying out the invention. and treatises. A transfer of rights in intellectual property. e term “Geographic Denomination” encompasses both categories. the commissioning party of certain specified types of works. arrange data in reference books. is adhered to by nearly 150 nations. An assignment of a patent. A condition for the grant of a valid patent. as well as any sound accompanying the work. presented in a series. including the United States. write songs. or. ASSIGNMENT [patent-trademarkcopyright]. Switzerland. whose members form the Berne Union. a certain area of the United States).” AUDIOVISUAL WORK [copyright].) S O U R CE S B BERNE CONVENTION [copyrightinternational]. a lecture.Glossary of Intellectual Property Terms A APPELLATION OF ORIGIN [trademarkunfair competition]. signed in Berne. sculpt stone. AUTHOR [copyright].” which refers solely to the geographic origin of production. C COMMUNITY TRADE MARK CTM [trademark-international]. A common example of an audiovisual work is a slide show. but also those who create computer programs. choreograph dances. in 1886. e Berne Convention. A term that refers to both a product’s geographic origin and to its distinctive product characteristics caused by particular geographic conditions or methods of production. A copyrightable work consisting of images that are related. and translate books from one language to another. 90 . such as that used in a sales presentation. is a transfer of sufficient rights so that the recipient has title to the patent. Transfer of anything less is considered to be a “license. Either the real person who creates a copyrightable work or the employer. record sounds. and intended to be shown by the use of a machine. JOINT AUTHORS. e assignment can be a transfer of all rights of exclusivity in the patent. of a person who creates a copyrightable work within the scope of employment. or an introduction to a museum. A trademark registration granted by the European Union’s Office for Harmonization in the Internal Market and enforceable throughout EU member nations. paint murals.

To be valid. or embellished in some way. COPIES [copyright]. A dependent claim must be written so as to be more restricted than the technology defined in the previous claim. recast. a copyrighted work must have originality and possess a modicum of creativity. e typical “cybersquatter” is one who knowingly reserves with a registrar a domain name consisting of the trademark or name of a company for the purpose of selling the right to that domain name back to the legitimate owner. occurs when a manufacturer of goods aids or encourages its distributors to pass off its goods as those of another manufacturer.COMPILATION [copyright]. CYBERSQUATTING [trademark]. “Cybersquatting” and “cyberpiracy” are synonymous terms that refer to the same type of unfair competition for web sites. distributing it to the public. A work based on a preexisting work that is changed. As a noun. Contributory infringement of a trademark. the act of copying. independent production or from being taken from the same source as the copyrighted work. or other symbol that describes something about the goods or services in connection with which it is used. condensed. A descriptive term is not considered to be inherently distinctive. such as purpose. organization. known as “secondary meaning. performing it in public.” (See SECONDARY MEANING. D DEPENDENT claim [patent]. as a verb. A copyrightable work consisting of a collection and assembly of preexisting material. COUNTERFEITING [trademark]. or displaying it in public. 91 . so as to deceive customers into thinking they are purchasing the genuine merchandise. CONTRIBUTORY INFRINGEMENT [patent-trademark-copyright]. or the end effect on users. picture. An exclusive right granted or conferred by the government on the creator of a work to exclude others from reproducing it. and arrangement of the material without making any internal changes in it. neither of which require proof of copying. it must have been “copied” from the copyrighted work as opposed to being the result of coincidental. COPYING [copyright-patent-trademark]. e assembly must exhibit at least minimal originality in the selection. it needs proof of acquired distinctiveness. A claim in a patent that refers back to a previous claim and defines an invention that is narrower in scope than that in the previous claim. To constitute an infringement of copyright. Often. Legal standards for infringement of copyright differ from those for patents and trademarks. e act of producing or selling a product containing a sham mark that is an intentional and calculated reproduction of the genuine mark. adapting it. “copying” denotes two separate but interrelated concepts. their size or color. COPYRIGHT [copyright]. DERIVATIVE WORK [copyright]. counterfeit goods are made to imitate a popular product in all details of construction and appearance. the class of users. it protects only the concrete form of expression in a work. “copies” means the material objects that store or fi x copyrightable information other than sounds. In copyright law. A word. to establish validity for registration or protection in court. A “counterfeit mark” is identical to or substantially indistinguishable from the genuine mark. SUGGESTIVE MARK). DESCRIPTIVE MARK [trademark]. for example. Indirect infringement of intellectual property rights in which one person contributes to the direct act of infringement of another. a work must be a “copy” in the sense that it is substantially similar to a copyrighted work. Copyright does not protect an abstract idea.

the distribution right is infringed merely by a transfer of copies of the work. A major piece of U. blurs the distinctiveness or tarnishes the image of the plaintiff ’s mark. DOCTRINE OF [patent]. statute. A government grant of exclusive rights in a novel. Technologically.S. effective June 8. E ECONOMIC ESPIONAGE ACT (EEA) [trade secret]. or agent and steal trade secrets that benefit “anyone other than the owner. using. the mark must be relatively strong and famous. such as an automobile or a table lamp. e basic duration of a copyright is the life of the author plus 70 years.coca-cola.S. law to various treaty obligations.” EQUIVALENTS. law was changed.S. e term or length of time that an intellectual property right lasts. U.” (See FIRST SALE DOCTRINE. legislation adopted in 1998 that extensively amended the copyright laws. in part to conform U. each domain name is unique and cannot be shared. nonobvious. while not causing likelihood of confusion. except under the “First Sale Doctrine. A design patent and a utility patent can cover different aspects of the same article. A rule of claim interpretation under which a product or process. is still an infringement if it performs substantially the same way as the patented invention.” For example: <www. 92 . and ornamental industrial design. or rental. Unlike the other rights of copyright. A design patent covers ornamental aspects of a design. also referred to as a “URL. first-served basis. Protection of information as a trade secret lasts as long as the information remains secret.S. its functional aspects are covered by a utility patent. e names and words that companies designate for their registered Internet web site addresses. DURATION [patent-trademark-copyrighttrade secret-right of publicity].) DOMAIN NAME [trademark]. whether those copies were unlawfully or lawfully made. to adopt a patent term of 20 years from the date on which the patent application was fi led. adopted in 1996. e EEA makes it illegal to steal or fraudulently obtain trade secrets for the benefit of a foreign government. or selling designs that closely resemble the patented design. DILUTION [trademark].DESIGN PATENT [patent]. instrumentality. A trademark continues in duration as long as there is no abandonment of rights by nonuse or by acts that cause the term to lose its significance as an indicator of origin and to become a generic name. which provides criminal penalties for the theft of trade secrets. although not a literal infringement. DIGITAL MILLENNIUM COPYRIGHT ACT [copyright]. under which the copyright owner has the exclusive right to distribute copies or phonorecords of the work to the public by sale. Domain names are registered on a firstcome. A design patent confers the right to exclude others from making. and in part to modernize the law to take into account various new digital technologies. DISTRIBUTION RIGHT [copyright]. As a result of the Uruguay Round Agreements Act.com > is a domain name identifying the site of e Coca-Cola Company. A type of violation of a strong trademark in which the defendant’s use. 1995. One of the six exclusive rights held by a copyright owner. lease. A U. To possess the selling power and recognition protected by the antidilution statutes.

A provision in an intellectual property license restricting the licensee to use of the licensed property only in a defined product or service market. e fundamental rule of law that copyright does not protect an idea. 93 . e value of a business or of a line of goods or services that reflects commercial reputation. a rule under which patent priority. rather than who was the first to fi le a patent application. A rule under which patent priority is determined by which inventor was the first to actually invent. FIELD OF USE RESTRICTION [general intellectual property-antitrust].” No one person may have trademark rights to a generic name. First to invent is the rule followed in the United States. the secondary user must show that he or she is not using a descriptive. or to name the person running the business. yet still own its reputation. For patents.) FIRST TO INVENT [patent]. courts consider four factors in determining if a fair use defense exists: the purpose and character of the disputed use. rather than who was first to actually invent. priority among conflicting applications to register trademarks is handled by publishing the application with the earliest fi ling date for possible opposition by the applicant with the later fi ling date. For copyrights. G GENERIC NAME [trademark]. is is the rule followed by almost every nation in the world except the United States. Trademark infringement is a form of theft of good will. such as “cellular phone. its good will.) FIRST TO FILE [patent-trademark]. not by who was first to fi le an application for registration. is determined by which inventor was the first to fi le a patent application. since a trademark or service mark is a symbol of a business’ good will. For trademarks. and the effect of the use on the potential market for or value of the copyrighted work. (See INTENT-TO-USE APPLICATION. as opposed to making the product look better or to identifying its commercial source. the nature of the copyrighted work.F FAIR USE [copyright-trademark]. GOOD WILL [trademark]. An exception to the exclusive right of a copyright owner to distribute copies or phonorecords of the copyrighted work.S. A business with a well-established good will could see all of its tangible assets destroyed. ownership of a trademark is determined by who was first to use it. the copyright owner has the right to sell a copy of a book but not the right to control subsequent sales of that copy. an application for registration can be fi led prior to actual use of mark. FUNCTIONALITY [patent-trademarkcopyright]. or personal name mark in a trademark sense but only to describe his or her goods or services or their geographic origin. A word used by most people to name a class or category of product or service. FIRST SALE DOCTRINE [copyright]. and thus entitlement to a patent. geographically descriptive. the importance of the portion used in relation to the work as a whole. In the United States. For trademarks. copyright protects only specific expressions of an idea. at aspect of design that makes a product work better for its intended purpose. U. I IDEA-EXPRESSION DICHOTOMY [copyright]. Under this principle. (See DISTRIBUTION RIGHT. A defense to a charge of copyright or trademark infringement. Under the new intent-to-use system.

INFRINGEMENT [general intellectual property]. An invasion of one of the exclusive rights of intellectual property. Infringement of a utility patent involves the making, using, selling, offering to sell, or importing of a patented product or process without permission. Infringement of a design patent involves fabrication of a design that, to the ordinary person, is substantially the same as an existing design, where the resemblance is intended to induce an individual to purchase one thing supposing it to be another. Infringement of a trademark consists of the unauthorized use or imitation of a mark that is the property of another in order to deceive, confuse, or mislead others. Infringement of a copyright involves reproducing, adapting, distributing, performing in public, or displaying in public the copyrighted work of someone else. INTELLECTUAL PROPERTY [patenttrademark-unfair competition-copyrighttrade secret-moral rights]. Certain creations of the human mind that have commercial value and are given the legal aspects of a property right. “Intellectual property” is an all-encompassing term now widely used to designate as a group all of the following fields of law: patent, trademark, unfair competition, copyright, trade secret, moral rights, and the right of publicity. INTENT-TO-USE APPLICATION [trademark]. Since 1989 in the United States, an optional method of applying for federal registration of a mark on the Principal Register based upon a declared good-faith intention to use a mark on defined goods or services. INVENTION [patent]. e human creation of a new technical idea and the physical means to accomplish or embody the idea.

J
JOINT AUTHORS [copyright]. e collaborating creators of a single copyrightable work who merge their separate contributions to the work. Joint authorship implies joint ownership of copyright in the work created. Co-owners of a copyright are treated as “tenants in common,” with each co-owner having an independent right to license the use of a work, subject to a duty of accounting to the co-owners for any profits. JOINT INVENTORS [patent]. Two or more inventors of a single invention who collaborate in the inventive process.

K
KNOCK-OFF [patent-trademarkcopyright]. An identical copy of a work or product protected by patent, trademark, trade dress, or copyright. When used as a verb, the act of producing such a copy. KNOW-HOW [trade secret]. Information that enables a person to accomplish a particular task or to operate a particular device or process.

L
LICENSE [patent-trademark-copyright]. A permission to use an intellectual property right, under defined conditions – as to time, context, market line, or territory. In intellectual property law, important distinctions exist between “exclusive licenses” and “nonexclusive licenses.” An exclusive license does not necessarily mean that this is the one and only license granted by the licensor. In giving an exclusive license, the licensor promises that he or she will not grant other licenses of the same rights within the same scope or field covered by the exclusive license. However, the owner of rights may grant any number of nonexclusive licenses of the same rights. In a nonexclusive license, title remains with the licensor. A patent license is a transfer of rights that does not amount to

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an assignment of the patent. A trademark or service mark can be validly licensed only if the licensor controls the nature and quality of the goods or services sold by the licensee under the licensed mark. Under copyright law, an exclusive licensee is the owner of a particular right of copyright, and he or she may sue for infringement of the licensed right. ere is never more than a single copyright in a work regardless of the owner’s exclusive license of various rights to different persons. LOGO [trademark]. A graphic representation or symbol of a company name or trademark, usually designed for ready recognition. e term has no legal significance in the law of trademark.

MUSICAL WORK [copyright]. A category of copyrightable work expressed in notation or sounds. A musical work can be embodied and fi xed in physical objects that are classified as either “copies” (sheet music) or “phonorecords” (e.g., compact discs or tapes). A composer’s song is covered by a musical work copyright, but a recording of the song is covered by a sound recording copyright.

N
NOTICE [patent-copyright-trademark]. A formal sign or notification attached to physical objects that embody or reproduce an intellectual property right — for example, the use of the word “patent” or its abbreviation, “pat.,” together with the patent number, on a patented article made by a patent holder or his/her licensees. e formal statutory notice of U.S. trademark registration is the letter R in a circle symbol , “Reg. U.S. Pat. & Tm. Off.,” or “Registered in U.S. Patent and Trademark Office.” Many firms use informal trademark notices, such as “Brand,” “TM,” “Trademark,” “SM,” or “Service Mark,” adjacent to words or other symbols considered to be protectable marks. Notice of copyright consists of the letter C in a circle symbol © or the word “Copr.” or “Copyright,” the copyright owner’s name, and the year of first publication.

M
MISAPPROPRIATION [unfair competition]. A common-law form of unfair competition where the defendant has copied or appropriated some item or creation of the plaintiff that is not protected by either patent law, copyright law, trademark law, or any other traditional theory of exclusive rights. MORAL RIGHTS [copyright-author’s rights]. Some European and other nations’ legal systems expressly recognize certain rights of authors beyond those strictly recognized in copyright law. Moral rights generally fall into three categories: the right of an author to receive credit as the author of a work, to prevent others from falsely being named author, and to prevent use of the author’s name in connection with works the author did not create; the right of an author to prevent mutilation of a work; and the right to withdraw a work from distribution if it no longer represents the views of the author.

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NOVELTY [patent]. One of the three conditions that an invention must meet in order to be patentable. Novelty is present if every element of the claimed invention is not disclosed in a single piece of prior art.

O
OBVIOUSNESS [patent]. A condition of non-patentability in which an invention cannot receive a valid patent because a person with ordinary skill in that technology can readily deduce it from publicly available information (prior art).

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ON SALE [patent]. An inventor cannot obtain a valid patent if he or she waits for more than the one-year grace period to fi le a patent application after a product embodying the invention has been placed “on sale.” ORDINARY SKILL IN THE ART [patent]. at level of technical knowledge, experience, and expertise possessed by the run-of-the-mill or ordinary engineer, scientist, or designer in the technology that is relevant to the invention.

expires, the public is entitled to make and use the invention and is entitled to a full and complete disclosure of how to do so. PERFORMANCE [copyright]. To recite, render, play, dance, or act a copyrighted work, including the broadcast by radio or television of a performance and the reception of such a broadcast. e exclusive right to “perform the copyrighted work publicly” is granted to all types of copyrighted works, except for pictorial and sculptural works and sound recordings. PHONORECORDS [copyright]. e material objects that store or fi x copyrightable sounds, other than soundtrack accompanying a motion picture. Phonorecords can be audiotapes, compact discs, computer chips that store sounds, and the like. PIRACY [copyright-trademark]. e act of exact, unauthorized, and illegal reproduction on a commercial scale of a copyrighted work or of a trademarked product. PRIOR ART [patent]. e existing body of technological information against which an invention is judged to determine if it can be patented as being a novel and nonobvious invention. PROCESS CLAIM [patent]. A claim of a patent that covers the method by which an invention is performed by defining a series of steps to be followed. is is in contrast to a product claim or apparatus claim, which cover the structure of a product. PRODUCT-BY-PROCESS CLAIM [patent]. A patent claim in which a product is claimed by defining the process by which it is made. e product-by-process form of claim is most often used to define new chemical compounds, since many new chemicals, pharmaceuticals, and drugs can only practicably be defined by the process of making them.

P
PASSING OFF [trademark]. (1) e substitution of one brand of goods when another brand is ordered. (2) Trademark infringement where the infringer intentionally meant to mislead or deceive purchasers. (3) Trademark infringement where there is no proof of intent to deceive but likelihood of confusion is proven. (4) In British-law countries, acts illegal under the common law, apart from registered “trademark” law, and consisting of the misrepresentation of one’s goods or services as those of a competitor, usually by using a similar mark. PATENT [patent]. In the United States, a grant by the federal government to an inventor of the right to exclude others from making, using, or selling the invention. ere are three very different kinds of patents in the United States: a utility patent on the functional aspects of products and processes; a design patent on the ornamental design of useful objects; and a plant patent on a new variety of living plant. Patents do not protect “ideas,” only structures and methods that apply technological concepts. In return for receiving the right to exclude others from a precisely defined scope of technology, industrial design, or plant variety, which is the gist of a patent, the inventor must fully disclose the details of the invention to the public. is will enable others to understand the invention and be able to use it as a steppingstone to further develop the technology. Once the patent
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is acquired distinctiveness is known as “secondary meaning” because it is acquired second in time to the primary meaning of a word.PRODUCT CLAIM [patent]. PUBLICATION [copyright]. A claim of a patent that covers a structure. a word such as “best” for milk is regarded as descriptive and not inherently distinctive. R REDUCTION TO PRACTICE [patent].” which covers a method or process. INTELLECTUAL PROPERTY. e extension of a registration of a trademark or the extension of a copyright. or composition. slogan. RENEWAL [trademark-copyright]. and commercial symbol that is not protected by any form of intellectual property law. and the like) as opposed to a product. SERVICE MARK [trademark]. e engineering effort goes in the reverse direction of usual engineering efforts. e primary meaning is that milk thus described is purported to be the best. Items in the public domain are available for free copying and use by anyone. For trade symbols that are not inherently distinctive. If the product or other material that is the subject of the reverse engineering was properly obtained. apparatus. REVERSE ENGINEERING [trade secretcopyright]. PUBLIC DOMAIN [general intellectual property]. the process of reverse engineering is not infringement of any trade secrets in the data embodied in a product and it is legitimate and legal competitive behavior. e status of an invention. design. A word.” a seller using this word must use it so that it achieves a secondary meaning denoting that all milk marked “best” comes from a single commercial source. After a reduction to practice. the invention is complete for patent law purposes. e distribution of copies or phonorecords of a work to the public. 97 . SKILL IN THE ART [patent]. distinctiveness must be acquired in order to be protected by a trademark or service mark. (See COPYING.) RIGHT OF PUBLICITY [general intellectual property]. which start with technical data and use it to produce a product. A meaning for a trademark or service mark that customers associate with a particular brand of products or services. or how it was produced. insurance. S SECONDARY MEANING [trademark]. A category of copyrightable work consisting of the sounds that are recorded in a phonorecord. To achieve exclusive trademark rights for a product called “Best Milk. A method of obtaining technical information by starting with a publicly available product and determining what it is made of. or any other symbol used to identify and distinguish services (retail sales services. picture. airlines services. investment services. SOUND RECORDING [copyright]. creative work. For example. e copying of items that are in the public domain is not only tolerated but encouraged as a vital part of the competitive process. is is in contrast to a “process claim. e inherent right of every human being to control the commercial use of his or her identity. what makes it work. An ordinary level of proficiency in the particular technology in which an invention is made. e physical part of the inventive process that completes and ends the process of invention.

A trademark is infringed by another if the second use causes confusion of source.S. For example. A symbol used to identify and distinguish companies. such as the shape and appearance of a product or container. (2) Any identifying symbol. Business information that is the subject of reasonable efforts to preserve confidentiality and has value because it is not generally known in the trade. or any other symbol used to identify and distinguish goods. or trade dress. commerce. ey signify that all goods bearing the mark come from or are controlled by a single source and are of an equal level of quality. together with proof of validity and copying. trading partners that deny benefits to the United States or unjustifiably restrict or burden U. design. SUGGESTIVE MARK [trademark]. Trademarks identify one seller’s goods and distinguish them from goods sold by others. design. (See DESCRIPTIVE MARK. certification mark. e degree of resemblance between a copyrighted work and a second work that is sufficient to constitute copyright infringement by the second work. statutory provisions requiring annual review of trade agreement rights and foreign trade practices of U. TRADE NAME [trademark]. A word. partnerships.S. picture. 98 . (1) A word. courts have chosen the flexible phrase “substantial similarity” to define that level of similarity that will. A suggestive term is considered to be inherently distinctive and needs no proof of secondary meaning for registration or protection in court. but does not directly describe. or other symbol that suggests. authorizes the U. TRADE SECRET [trade secret]. and businesses. e Trade Act of 1974. trade. S.S. collective mark. constitute copyright infringement.) T TRADE DRESS [trademark]. service mark. including a word. that qualifies for legal status as a trademark. ese elements combine to create a visual image presented to customers and are capable of acquiring exclusive legal rights as a type of trademark or identifying symbol of origin. SUBSTANTIAL SIMILARITY [copyright]. trade name. recommend the suspension of trade agreement concessions and the imposition of duties and import restrictions. a polar bear for parkas and coats merely suggests the kind of protection that a polar bear has from the cold. Infringement of a trade secret is a type of unfair competition. TRADEMARK [trademark]. Exact word-for-word or line-for-line identity does not define the limits of copyright infringement.SPECIAL 301 [international trade]. Trade Representative (USTR) to identify and investigate potential violating countries. picture. and enter into agreements to eliminate the burdens or restrictions on U. connection.S. Such confidential information will be protected against those who obtain access through improper methods or by a breach of confidence. or sponsorship. as amended by the Special 301 provisions of the 1988 Omnibus Trade and Competitiveness Act. affiliation. U.S. or shape of a product or container. e totality of elements in which a product or service is packaged or presented. as opposed to marks used to identify and distinguish goods or services. something about the goods or services in connection with which it is used as a mark. U. or the cover of a book or magazine. slogan.

omas McCarthy. Trademark infringement has long been considered to be unfair competition. infringement of a trade secret. and David J. Located in Geneva. 20037. by J. accounting for over 97 percent of world trade. Copyright © 2004 by e Bureau of National Affairs. and cooperating with other international organizations. Washington. To be patentable. and creating model laws for adoption by developing nations. e WTO entered into force with respect to the United States on January 1. product disparagement/trade libel. WTO is the only global international organization dealing with the rules of trade between nations. One hundred forty-eight nations are members of the WTO (as of June 2005). 1995. ird Edition. One of the 16 “specialized agencies” of the United Nations system. settling trade disputes. infringement of the right of publicity. an invention must operate and be capable of use. Schechter. A person injured by an act of unfair competition is entitled to relief in a civil action against the perpetrator of the act. and it must perform some “useful” function for society. was created in 1967 and is responsible for the promotion of the protection of intellectual property throughout the world. Switzerland. e information that is presented here was adapted and excerpted with permission from McCarthy’s Desk Encyclopedia of Intellectual Property. located in Geneva. Commercial conduct that the law views as unjust.U UNFAIR COMPETITION [general intellectual property]. assisting developing countries in trade policy issues through technical assistance and training programs. acting as a forum for trade negotiations. call toll free 1-800-960-1220 or visit www. partnership.C. Roger E. Activities of WTO include: administering trade agreements. it was created at the end of the Uruguay Round of the General Agreement on Tariffs and Trade (GATT) negotiations in December 1993 to oversee the operation of GATT. e WTO often plays much the same role in world financial and economic affairs as the United Nations does in political affairs..bnabooks. reviewing national trade policies. WORLD TRADE ORGANIZATION (WTO) [international]. Switzerland. administering various “unions” and other treaty organizations founded on multilateral treaties. Franklyn. To contact BNA Books. or corporation for whom the work was prepared is considered to be both the “author” and the owner of copyright from the moment of creation of the work. and misappropriation. e real person. e usefulness of a patented invention. D. Inc. UTILITY [patent]. W WORLD INTELLECTUAL PROPERTY ORGANIZATION (WIPO) [international].com. WIPO fulfi lls this responsibility by promoting cooperation among nations in intellectual property matters. WIPO. Other legal categories recognized as being types of unfair competition are false advertising. 99 . WORK MADE FOR HIRE [copyright]. A work prepared by an employee within the scope of his or her employment or a commissioned work that the parties agree in writing to treat as a work made for hire.

Sources of Information on Intellectual Property U. Keeney Building.gov Internet: http://www. provides training and technical assistance relating to protecting IPR. among many topics.C. topics. D. submission forms.eop. N. U. D.doc.gov/ ip.ustr.gov Internet: http://www. Department of State Bureau of Economic and Business Affairs Trade Policy and Programs Office of International Intellectual Property Enforcement 2201 C Street. and a comprehensive listing of federal criminal laws that pertain to the protection of IPR. an overview of IP policy and programs. and other documentation on a range of trade-related subjects. Patent and Trademark Office P.export. U.514-1026 Fax: 202. including rules. and the TRIPS Agreement.514-6113 Internet: http://www.S. Department of Justice Computer Crime and Intellectual Property Section (CCIPS) 10th & Constitution Ave.S. speeches.W. Department of Commerce Strategy Targeting Organized Piracy (STOP) Internet: http://www.ipr.cybercrime. press releases.S.S.S.gov/e/eb/tpp/ Internet site provides an overview of economic and trade topics arranged by current issues. John C. D. definitions. intellectual property rights laws.S. U. Box 1450 Alexandria.S. Department of State.S. testimony.html Internet site offers. N.S. Department of Commerce International Trade Administration 14th Street and Constitution Avenue. maintained by U. initiative that helps U.gov Internet site provides access to information on intellectual property as related to patents and trademarks. and regional information. Washington.S.A. 100 U. remarks.gov Internet site includes reports. 20506 U.gov/ is database.asp is is the Internet site for a recent U. and briefings.training. D.uspto. Tel: 202-482-3809 E-mail: tic@ita.A.C.A.C. including intellectual property (IP).O. Washington. Virginia 22313-1450 U.C. Department of Commerce U.S. N. 20520 U.W.W.S. Washington. government agencies and IP industry associations and sponsored by the U. . Tel: 703-308-4357 Internet: http://www. Suite 600 Washington. advice.state. guidance to law enforcement on the investigation and prosecution of violations of federal intellectual property laws.S. Tel: 202-647-3251 Internet: http://www. Tel: 1-888-473-8787 E-mail: contactustr@ustr.gov/ Internet site includes periodically updated articles on U. U. Trade Representative 600 17th Street. International Intellectual Property Rights Training Database http://www. 20230 U. N.ita.A.doc. fees.gov/stop_fakes_ gov/index.S. 20530 Tel: 202.S.. and more. businesses protect their intellectual property at home and abroad. "Special 301" enforcement activities. Government Office of the U. press statements.W.S.S.

the texts of treaties it administers. Phone: 202-344-2410 Fax: 202-344-1920 Internet: http://www. services.S.A. N. 20559-6000 Tel: 202-707-3000 Internet: http://www. and other fields of IP. Copyright Office 101 Independence Avenue.C. Virginia 22202 U.int Internet site provides the history and objectives of this organization.A.gov/graphics/ cornerstone/ipr e National Intellectual Property Rights Coordination Center (IPR Center) is a multi-agency center responsible for coordinating a unified U.A. Internet: http://www.S. development.W.en. and documents of the World Intellectual Property Organization.S.ice.org Internet: http://www.S. Switzerland Tel: +41-22 338 9111 Fax: +41-22 733 54 28 Internet: http://www. Washington. government response regarding IPR enforcement issues. and patent information products. environment. trademarks. official communications.E.aipla.org Internet site provides information aimed at improving laws relating to patents.5A Washington. D. 101 International Organizations European Patent Office Erhardtstrasse 27 D-80331 Munich Germany Tel: (+49 89) 23 99 -0 Fax: (+49 89) 23 99-44 65 .htm Internet site.cbp. as well as information on copyright.C. Tel: 202-354-1000 Internet: http://www. Library of Congress U. and a list of contracting parties or signatories to these treaties.U. Switzerland Tel: 41-22-739-5111 Fax: 41-22-731-4206 E-mail: enquiries@wto. World Intellectual Property Organization P.wto. unfair competition.O. Immigration and Customs Enforcement National Intellectual Property Rights Coordination Center 1300 Pennsylvania Avenue. copyrights. Rm. N. Particular emphasis is given to investigating major criminal organizations and those using the Internet to facilitate IPR crime. D.php Internet site includes general information about the European Patent Office. Associations and Trade Organizations American Intellectual Property Law Association 2001 Jefferson Davis Highway Suite 203 Arlington.wipo. including frequently asked questions. 20229 U.copyright. U. 20229 U.C.S.org/english/ tratop_e/trips_e/trips_e. Box 18 CH-1211 Geneva 20.W.org/index. a patent information center. in addition to providing general information about the WTO.gov Internet site presents a publication titled Copyright Basics. includes special sections on topics such as goods.org Internet: http://www.gov/xp/cgov/ import/commercial_enforcement/ipr/ Internet site has information on all aspects of IPR enforcement in the United States. Washington. a toolbox for applicants. Tel: 703-415-0780 Fax: 703-415-0786 E-mail: aipla@aipla. Customs and Border Protection 1300 Pennsylvania Avenue.S. Investigative personnel provide core staffing from Immigration and Customs Enforcement (ICE) and the Federal Bureau of Investigation (FBI).european-patentoffice. as well as a list of its members. D. 3. dispute settlement. S. U. World Trade Organization 154 Rue de Lausanne CH-1211 Geneva 21.. and IP.S.S.

New York 10017 U.ascap.S.A.W. New York 10016 U. N. D.org Internet site for this association — which is concerned with legislative. Tel: 202-872-5500 Fax: 202-872-5501 Internet: http://www. songwriters.com Internet: http://www. Software Publishers Association 1730 M Street.A.C. 50 F Street. Washington. 20036 U. Music Publishers Association 243 Fifth Avenue. International Intellectual Property Alliance 1747 Pennsylvania Avenue. It includes information on MPAA anti-piracy efforts and its positions on laws and regulations governing the industries.American Society of Composers.000 composers.W. and educational matters related to copyright and new technology — includes extensive frequently asked questions about copyright and licensing.A.C.net Internet site provides information related to fighting software piracy. Tel: 202-872-5500 Fax: 202-872-5501 Internet: http://www. 20001 U. the Motion Picture Association.A.A. and television industries. Tel: 202-293-1966 Internet: http://www. Association of American Publishers.S. Business Software Alliance 1150 18th Street. as well as reports on worldwide piracy by country and issue.A. N. D.org Internet site for the principal trade association of the U. New York 10023 U.487-6779 Internet: http://www. home video.org Internet site reports on the activities of software-industry organization with piracy enforcement programs in 65 countries and anti-piracy hotlines operating in nearly all nations.siia. N.com Internet site for this membership association of over 68. National Music Publishers Association 711 ird Avenue New York. . N.S. book publishing industry contains information on copyright and electronic publishing.C.W. also includes links to music information resources on the World Wide Web. D.W.nmpa. 20036-4510 U.A. D. and Publishers One Lincoln Plaza New York. and music publishers provides information aimed at protecting the rights of its members by licensing and paying royalties for the public performance of their copyrighted works.bsa. Tel/Fax: 212-327-4044 Internet: http://www. which serve as a voice for the motion picture. Tel: 202-347-3375 Fax: 202-347-3690 Internet: http://www.mpaa. copyright-based industries in bilateral and multilateral efforts to improve the international protection of copyrighted works). Suite 236 New York.iipa. Inc. Tel: 212-621-6000 Fax: 212-724-9064 E-mail: info@ascap.S. D. includes a list of international addresses of BSA offices. Authors. Motion Picture Association of America 1600 Eye Street. legal. lyricists.org Internet site for this organization and its international counterpart.C. 20006 U. Suite 400 Washington.S.S.mpa.A.com Internet site includes general information on the IIPA (a coalition that represents 102 U.S. 20006 U.W. Tel: 202-452-1600 Internet: http://www.publishers. this association disseminates copyright information with the aim of increasing copyright responsibility. Suite 825 Washington. N. Suite 700 Washington.S. Tel: 212-834-0100 Fax: 646.S. Suite 700 Washington.S.C.org rough its copyright resource centers.

copyright law. University of California. N. including cases involving cyberspace law.S. and useful off net references. as well as a newsletter issued three times a year that reports on CASRIP research and other IP-related activities and highlights IP developments around the world. It is committed to striking an appropriate balance in law and public policy between protecting IP and affording public access to it. Other Copyright Clearance Center 222 Rosewood Drive Danvers. and useful links to other web sites. Inc. Franklin Pierce Law Center e IP Mall http://www. profit and nonprofit groups that deal with IPR.. the Congressional Research Service. IPR. University of Iowa Copyright and Multimedia Law for Web Builders and Multimedia Authors http://bailiwick. as well as information going back 10 years.edu/ Provides information and links to IP resources worldwide. University of Washington School of Law Center for Advanced Study and Research on Intellectual Property (CASRIP) http://www.washington.stanford.edu/Copyright/ Sponsored by the Library at the University of California at Berkeley and Sun Microsystems. current legislation.S.org e Digital Future Coalition (DFC) is a collaboration among U. this Internet site offers articles.fplc.ipmall.stanford. and licensing issues.S. Los Angeles e UCLA Online Institute for Cyberspace Law and Policy http://www.ht ml#intellectual%20property Includes brief summaries of IPR law topics with links to key primary source material.gseis.html is electronic archive offers a cyperspace law bibliography.law.Educational Institutions (Internet Sites) Berkeley Digital Library SunSITE http://sunsite.edu/iclp/hp. and core documents. and papers. Tel: 202-628-9210 E-mail: dfc@dfc.berkeley.com/ Web site of an intermediary between copyright holders and content users. Stanford University Copyright and Intellectual Property http://palimpsest. Stanford University Copyright and Fair Use http://fairuse.edu/Casrip Includes information on the CASRIP program. publications. lists of initiatives and projects.ucla. Digital Future Coalition 1341 G Street. and an overview of copyright law. Massachusetts 01923 U.edu Includes such primary materials as statutes. other Internet resources.org http://www. judicial opinions. and links on copyright.html Includes IP law articles.edu/topics/topic2. 20005 U. and treaties and conventions.edu/bytopic/ intprop Includes a menu of source materials on U. primers.A. including daily news. It facilitates the exchange of reuse rights and royalties through a wide range of licensing services that grant permission to reproduce copyrighted materials. Cornell University Legal Information Institute http://www.edu/webbuilder/ copyright. D. references. Tel: 978-750-8400 Fax: 978-646-8600 E-mail: info@copyright.A.law. Suite 200 Washington.dfc.copyright.uiowa. 103 .W.com http://www.lib.S. institutions.C.cornell.

New York: Oceana. Cook. ompson Intellectual Property Rights and United States International Trade Laws Dobbs Ferry. Wayne W. Lara A. New Jersey: John Wiley. and Privacy San Francisco. Granstrand. Constance S. Glick. 2003. North Carolina: Carolina Academic. Profits and Power: How Intellectual Property Rules the Global Economy London: Kogan Page. Robert D.: National Academy. New York: Kluwer Law International. Halbert. 2004. 2002. Goldstein. Inc. Stephen and Richard Stim Patent. Debora J. Hawke. Lesley Ellen Digital Property Ontario. Patents. 2005. Anderson. 1998. 2003. 2000. Free Speech. Washington.. Reymann. Massachusetts : Kluwer Academic.Additional Readings on Intellectual Property Alikhan. and Trademark Berkeley. Shahid and Raghunath Mashelkar Intellectual Property and Competitive Strategies in the 21st Century e Hague. California: Nolo Press. Bénédicte Pirates on the High Seas: e United States and Global Intellectual Property Rights New York: Council on Foreign Relations.C. and Richard Hoff mann Intellectual Property Damages: Guidelines and Analysis Hoboken. Introduction to Intellectual Property: Cases and Materials Durham. Callan. Canada: University of Calgary Press. Canada: McGraw-Hill Ryerson Ltd. Elias. 2002. 2001. e Digital Dilemma: Intellectual Property in the Information Age Committee on Intellectual Property Rights and the Emerging Information Infrastructure. 2003. omas G. Harris. D. Field. Curtis W. Alberta. Law. 2003. 1998.. Herrington. Ove (ed) Economics. Paul Copyright's Highway: From Gutenberg to the Celestial Jukebox Stanford. Mark A. and Intellectual Property: Seeking Strategies for Research and Teaching in a Developing Field Boston. California: Jossey-Bass.. 2003. Computer and Internet Use on Campus: A Legal Guide to Issues of Intellectual Property. Resisting Intellectual Property Law New York: Routledge. California: Stanford University. (ed) Competition Policy and Intellectual Property Rights in the Knowledge-Based Economy Calgary. Copyright. and George W. 104 . 1998.

and Mark A. Chicago. Andrew D. Lemley Intellectual Property in the New Technological Age 3rd ed.Hurley. New York: Matthew Bender & Company. 2004. 2004. 2003. 2004. Matthews. Melville B.C. and Michael S. G. Schechter. omas.. David R. and Privacy Boulder. McCarthy. Matsuura. Renee Knowledge Power: Intellectual Property. Menell. McManis. J. New Jersey: Transaction. Cases and Materials on Copyright 5th ed. College of Law. Illinois: One Court. Managing Intellectual Assets in the Digital Age Boston. Colorado: Lynne Rienner. Idris. Duncan Globalising Intellectual Property Rights: e TRIPs Agreement London and New York: Routledge. Deborah and Hal Varian (eds) Internet Publishing and Beyond: e Economics of Digital Information and Intellectual Property (publication of the Harvard Information Infrastructure Project) Cambridge. Charles R. et al. Moore. Edward F. 2004. and David J. Lexington. Marc Copyright Law on Campus Pullman. e Ontology of Cyberspace: Philosophy. Switzerland: World Intellectual Property Organization. 2002. Letterman. 1998. Roger E. D. Robert P. Lessig. 2003. IL: Tort Trial and Insurance Practice Section. and Richard A. 2003. Minnesota: omson/West. St. J. Marlin-Bennett. 2004. Gregory Basics of International Intellectual Property Ardsley. New York: Aspen. Intellectual Property Law and Litigation 2nd ed. Ralph. Kentucky: University of Kentucky. Intellectual Property and Information Control: Philosophic Foundations and Contemporary Issues New Brunswick. Massachusetts: Belknap Press of Harvard University. O'Connor. New York: Transnational. Massachusettts: Artech House. Franklyn McCarthy’s Desk Encyclopedia of Intellectual Property 3rd ed. Washington. Washington: Washington State University. Posner e Economic Structure of Intellectual Property Law Cambridge. Paul. Hargis Intellectual Property 3rd ed.: e Bureau of National Affairs. Office of Continuing Legal Education. and the Future of Intellectual Property Chicago. Landes. Lawrence Free Culture: How Big Media Uses Technology and the Law to Lock Down Culture and Control Creativity New York: Penguin. Merges. Peter S. 2003. King. 2001. Information. Massachusetts: MIT Press. 2002. Law. William M. Adam D. Nimmer. 105 . Kamil Intellectual Property: A Power Tool for Economic Growth Geneva. Jeff rey H. 1998. Koepsell. 2002. 2003. Dorisio. Lindsey. American Bar Association. 2000. Intellectual Property and Unfair Competition in a Nutshell 5th ed.

: Bureau of National Affairs. Richard (ed) Caught in a Web: Intellectual Property in Cyberspace London. Roger E. and Aaron W. Minnesota: omson/West. 2003. D. Patents and Trademarks St. 2004. and Cultural Organization Copyright Laws and Treaties of the World Looseleaf volume with supplements.: e Brookings Institution. United Kingdom. New York: Cambridge University. Michael Steal is Idea: Intellectual Property Rights and the Corporate Confiscation of Creativity New York: Palgrave. ierer. 106 . Denberg (eds) International Trademark Treaties With Commentary Dobbs Ferry. Richard Valuation and Pricing of Technology-Based Intellectual Property New York: John Wiley and Sons. Ellen P. Sell.C. Wilson. External Effects.C. Poltorak. Scientific.: Denwent/ omson Scientific. Washington. Lee e Trademark Guide New York: Allworth Press. 2002. and John R.S. 1998. Poynder.C. Private Power. D. United Nations Educational. and Anti-Trust Law: Leveraging IPRs in the Communications Industry Oxford. Jennifer (ed) Intellectual Property New York: H. Knowledge Diplomacy: Global Competition and the Politics of Intellectual Property Washington. Ryan. 2000. 2001. Washington. 2002. D. Alexander and Paul Lerner Essentials of Intellectual Property New York: John Wiley and Sons. Susan K. Schechter. Michael P. Saint-Amour.Peloso. New York: Cornell. Winner. Public Law: e Globalization of Intellectual Property Rights Cambridge. D. Perelman. Razgaitis. Paul K. 1956. D. Wilson. 2003. e Copyrights: Intellectual Property and the Literary Imagination Ithaca.: Cato Institute.C. Adam and Wayne Crews (eds) Copy Fights: e Future of Intellectual Property in the Information Age Washington. 2003.C. 1998. U. New York: Oceana. Ilkka Intellectual Property Rights. Paul. 2002.W. Rahnasto. 2003. 2003.: GAO.. New York: Oxford University. omas Intellectual Property: e Law of Copyrights. General Accounting Office Intellectual Property: Deposits of Biological Materials in Support of Certain Patent Applications Washington. 2003.

int/freepublications/en/patents/ 925/wipo_pub_925.html MENC: The National Association for Music Education.info/ Convicted copyright pirate Mike Nguyen has created a site to educate young people about the risks of on-line piracy. join the Super Cyber Team. and links to adult and youth resources.A.cybercrime.org/index. MENC/ASCAP Foundation http://www. games and contests.gov/rules/ kidinternet.copyrightkids. teachers.org: Just for Kids http://www. English.e.cyberspacers.org web site to teach schoolage children the basics of copyright law.S. Create the Future: Inventions and Patents http://wipo.Educational Materials for Children and Young Adults Cybercitizenship. examine on-line resources. has developed a school curriculum that teaches students at all levels about the creative community and copyright. comics. parents. with support from the ASCAP Foundation.S. and help create an archive of educational materials. i. CyberPilot’s License http://etec. Netmonkey http://www. A FA©E subcommittee developed the copyrightkids. 107 KIDS’ CORNER: .hawaii.org/10_ education.edu/cpl/home. Government Affairs. CyberSpacers http://www. Students.cybercitizenship.html http://www. etc.cybercitizenship. This site contains a downloadable copy of “Net Monkey Weekly.pdf is new on-line publication on intellectual property is the first of a new series of free offerings by WIPO aimed at schoolchildren (ages 8-14) as the creators of the future.musicunited.htm U.netmonkey. designed to provide a broad range of resources to foster and support copyright education.html The Cybercitizen Partnership Awareness Campaign offers approaches for teaching children about cyberethics.” an entertaining and informative newsletter directed at children.org Friends of Active Copyright Education (FA©E) is a new initiative of the Copyright Society of the U. Cyberethics for Kids http://www. and learn about cybercrime through on-line quizzes. Department of Justice offers teachers a lesson plan outline and exercises for K-8. FA©E http://www.html The CyberPilot’s License is dedicated to the study of web ethics and the development of healthy on-line learning environments. Learn From the Past. which addresses the ills of piracy.com/ This site provides activities for kids: the CyberSpacers’ oath. cybercrime information.org/4kids/ 4kids. History. and policymakers are welcome to join the discussion forums. The program is offered not only by grade level but also by teacher’s class subject specialty.

pro-music.org/ Pro Music is an international web site that supports legitimate on-line services. and the ability to avoid misuse on the Internet.html Parade Classroom. It provides information about copyright laws and presents artists speaking out against piracy.S. Play It Cybersafe http://www.com/ This web site provides children.playitcybersafe. and teachers the opportunity to prevent cybercrime through knowledge of the law. It is a Cyber Crime and Intellectual Property Theft Prevention and Education Project funded by the U. in “Sources of Information on Intellectual Property. parents. knowledge of their rights. Pro Music http://www.Parade Classroom http://www.whatsthedownload. The U.com/tg_ folders/2003/1026/1026_info. a web site for professional educators.” All Internet links were active as of Fall 2005. 108 . while understanding the part they play in the future of music.paradeclassroom. The Business Software Alliance and the Hamilton Fish Institute at the George Washington University created this site. offers a Teacher’s Guide titled “The Music Swapping Crackdown.S. Department of State assumes no responsibility for the content and availability of the resources from other agencies and organizations listed above.com/ A comprehensive public education campaign created by the Recording Academy that strives to empower consumers to make informed ethical and legal decisions when getting their music through digital technology. Department of Justice to educate the public on cybercrime and intellectual property theft.” The guide encourages students to research the issue and decide what’s right and wrong.” and in “Additional Readings on Intellectual Property. What’s e Download? http://www.

51: © Monika Graff/The Image Works – David McNew/Getty Images. 34: AP/Wide World Photo (3). sell. 13: © SSPL/The Image Works. 79: Reuters – AP/Wide World Photo (3).int. 76: AP/Wide World Photo (2).org. 22: AP/Wide World Photo – Alessia Pierdomenico/Reuters – © 2002 Richard Lord /The Image Works. S. © Science Museum. London/ Topham/The Image Works – © SSPL/The Image Works. 21: © Topham/The Image Works – AP/ Wide World Photo. Executive Editor: George Clack Managing Editor: Mildred Solá Neely Art Director/Design: Min-Chih Yao Photo Research: Maggie Johnson Sliker .gov. 65: top left Frederic J. Geoff Brightling/Getty Images. AP/ Wide World Photo – © Science Museum/SSPL/ The Image Works.8: AP/Wide World Photo (3). 52. yahoo. Brown/AFP/Getty Images. 11: Library of Congress (2) – AP/Wide World Photo. Miller Nichols Library. 88: Courtesies ebay. 24: AP/Wide World Photo (3). 14: AP/Wide World Photo (3) – Creatas Images (RF)/PictureQuest. AP/Wide World Photo – © SSPL/The Image Works.training.gov/ CREDITS: (Credits from left to right are separated by semicolons. AP/Wide World Photo (4). 33: Reuben Sprich/Reuters – Finbarr O’Reilly/Reuters. 17: Courtesy WIPO. 27: AP/Wide World Photo – Courtesy www. 6: AP/Wide World Photo (2).) Cover Montage: Counter clockwise from top: National Museum of American History. 87: Tannen Maurey/ The Image Works – AP/Wide World Photo. 75: AP/Wide World Photo (2).state. PhotoSpin – PictureQuest (RF) – AP/Wide World Photo (2) – PhotoSpin – AP/Wide World Photo (2). from top to bottom by dashes. David McNew/Getty Images (2). AP/Wide World Photo. 7. David Silverman/Getty Images. 63: AP/Wide World Photo. Transportation Archives. 67: AP/Wide World Photo – Pornchai Kittywongsakul/Getty Images. 43-47: AP/Wide World Photo (8).com. Popular American Sheet Music.ipr. 38: Kenny Wu/Reuters. AP/Wide World Photo. whois. 80-83: AP/Wide World Photo (5).U. 71: AP/Wide World Photo – AFP/AFP/Getty Images. DEPARTMENT OF STATE Bureau of International Information Programs 2006 http://usinfo. 72: AP/Wide World Photo (3).com.com. Smithsonian Institution – AP/Wide World Photo. 29: Reuters. AP/Wide World Photo. 85: Anna Wang/MMV. Special Collections.com.com. 19: NRM/SSPL/The Image Works. Simon Kwong/Reuters. bottom left Sergei Guneyev/Time Life Pictures/Getty Images. © Peter Hvizdak/The Image Works. 89: Courtesies ioffer. top right Francis Dean/The Image Works. AP/Wide World Photo.61: AP/Wide World Photo (8). 37: Reuters. Page 3: University of Missouri-Kansas City. © Francis Dean/The Image Works. 5: AP/Wide World Photo (4) except bottom left Milos Bicanski/Getty Images. 41: AP/Wide World Photo – Getty Images (RF).

gov/ .U. S.state. DEPARTMENT OF STATE Bureau of International Information Programs http://usinfo.

FOCUS ON: INTELLECTUAL PROPERTY RIGHTS book spine (PLease adjust size according to the width of the spine) .

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