Mylly, Tuomas, and Jonathan Griffiths (eds), 'The Transformation of Global Intellectual Property Protection: General Introduction' , in Jonathan Griffiths, and Tuomas Mylly (eds) , Global Intellectual Property Protection and New Constitutionalism: Hedging Exclusive Rights (
, 2021; online edn, Oxford Academic , 23 Dec. 2021 ), https://doi.org/10.1093/oso/9780198863168.003.0001, accessed 9 Sept. 2024.
Navbar Search Filter Mobile Enter search term Search Navbar Search Filter Enter search term SearchThis chapter traces the transformation of global intellectual property protection. The classical Convention regime, epitomised by the Paris Convention protecting industrial property and the Berne Convention protecting copyright, dominated the international IP scene for about a century. Other norm sets have become relevant for IP more recently. These often strengthen IP rights or grant them complementary protection and include international investment agreements (IIAs), predominantly in the form of bilateral investment treaties (BITs) and investment chapters in trade treaties; the protection of property ownership as a fundamental right; private regulation of IP; and IP-specific counter-norms. Ultimately, this transformation of global IP law necessitates a broadening of the constitutional discourses relevant for IP. Constitutional pluralism, new constitutionalism, and societal constitutionalism represent the main currents of such global constitutional discourses.
Collection: Oxford Scholarship OnlineInternational intellectual property (IP) has become a many-splendoured thing. Its norms emerge in diverse processes and venues. The classical Convention regime, epitomised by the Paris Convention protecting industrial property and the Berne Convention protecting copyright, dominated the international IP scene for about a century. The Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS Agreement), a compulsory part of the World Trade Organization (WTO) acquis, marked a turning point in the mid-1990s. 1 IP is now covered globally in the World Intellectual Property Organization (WIPO)-administered IP treaties—old and new—the WTO acquis, as well as several agreements with IP chapters, such as bilateral trade treaties, development and cooperation treaties, and mega-regionals. 2
Other norm sets have become relevant for IP relatively recently. Such norm complexes often strengthen IP rights or grant them complementary protection. First, international investment agreements (IIAs), predominantly in the form of bilateral investment treaties (BITs) and investment chapters in trade treaties, now regularly protect IP. 3 They give rights directly to private corporations to challenge national or regional laws or measures in investor to state dispute settlement (ISDS). They enable claims for substantial damages and allow investors to seek enforcement of awards directly before domestic courts. The grant of directly enforceable rights for investors is the key innovation of the regime. 4 Arbitration awards treating IP as an investment have started to emerge. Yet international investment tribunals and their arbitrators typically have limited experience of IP discourses or the human rights issues that operate in the background in IP limitations and exceptions and exclusions from protection. Admittedly, tribunals could take account of norms outside the applicable IIA, such as IP and human rights treaties, in the interpretation of IIA provisions or even apply them directly where the IIA permits. The bringing of IP assets under investment arbitration nevertheless implies a shift away from the balancing mechanisms available both under IP and human rights law towards interpretations biased in favour of the exclusive rights and property interests of multinational investors. 5
Second, the protection of property ownership as a fundamental right adds another layer of security for IP owners. Such protection may be based on international human rights, basic rights as protected in the domestic constitutions, or regional fundamental rights instruments, such as the European Convention of Human Rights (ECHR) and the Charter of Fundamental Rights of the European Union (CFREU). 6 IP may even be separately mentioned as a category of possessions protected by the relevant property ownership provision, like in Art 17(2) of the CFREU. It insists that: ‘Intellectual property shall be protected’. Furthermore, the European Court of Human Rights (ECtHR) has extended the protection of property ownership under the ECHR to IP possessions—even to trade mark applications owned by multinational companies. 7 Other rights, such as the principle of non-discrimination or the right to an effective remedy as protected in the CFREU, may grant additional protection and de facto new remedies for IP owners independently or in combination with property protection. 8 International or regional human rights norms, especially norms protecting property ownership and procedural rights, might also work their way into the investment tribunals’ interpretations of IIA provisions. 9 As a consequence, they strengthen the rights of IP investors, potentially providing investor-specific rights that are not necessarily applicable for private individuals in the same jurisdiction.
Third, private regulation of IP is emerging as a global trend, likely to have been boosted by deadlocks and setbacks suffered by some high-profile international, regional, and domestic IP initiatives, such as the Anti-Counterfeiting Trade Agreement (ACTA) on the international level, the EU’s Software Patent Directive, the United States’ (US) Stop Online Piracy Act (SOPA) and Protect IP Act (PIPA), as well as the United Kingdom’s (UK) Digital Economy Act 2010. 10 In place of these and some other failed traditional public law efforts to strengthen protection, powerful private actors have increasingly taken a regulatory role in the area of IP. They have accomplished many of the objectives of the failed or watered-down public law measures, especially in the case of the IP-related private regulation of the Internet. Private regulation might operate globally, as is the case with non-binding agreements to enforce copyright and trade mark rights on the Internet. Such contracts have been concluded between IP owners and their organisations on the one hand and Internet ‘chokepoints’, such as the global search, advertising, payment, and domain name services, on the other. 11
However, nation-state governments and the European Union (EU), especially the US, the UK, and the EU Commission, have often given the decisive stimulus for such private regulation. They may endorse, facilitate, legitimate, and even demand private regulatory practices as part of their IP policies. Hence, it is often more appropriate to talk of semi-private regulation, with consequences for their constitutional status. For example, private technological design, such as YouTube’s Content ID filtering algorithm, increasingly operates as a regulator of what is possible and what is not. However, such private design choices only become the universal norm once the EU and other public norm-giving centres support them through their policies and rules, such as the EU’s DSM Directive, which universalises private filtering. 12
Finally, IP-specific counter-norms have started to emerge as a reaction to the global strengthening of IP protection and ensuing conflicts with norms produced within other social sectors and norm-producing centres. IP-specific counter-norms could be created, for example, in the frameworks of the Convention on Biological Diversity, Food and Agriculture Organization, World Health Organization (WHO), and human rights instruments under the United Nations (UN) or the Council of Europe. The Oviedo Convention on the protection of human rights and the dignity of the human being concerning the application of biology and medicine could be classified as one such instrument. 13 The norms of this Council of Europe Treaty may function as counterweights for demands to strengthen patent law with new measures, or as normative support for balancing arguments when interpreting existing patent law treaties or European IP measures. Moreover, many Internet-related actions have direct repercussions for IP; for example, those aimed at non-proprietary Internet standards or measures that otherwise emphasise and reflect openness, transparency, and neutrality as the traditional core values of the Internet. Even provisions from international IP treaties that generally strengthen protection, such as the TRIPS Agreement, might turn out to function as counter-norms. For example, the TRIPS Panel and Appellate Body in the recent dispute concerning plain packaging of tobacco products referred to the principles of the TRIPS Agreement (Arts 7 and 8) to deny the extension of trade mark rights to positive uses of the mark. 14 Denying such protection was in line with public health aims, which must be considered when interpreting any provisions of the TRIPS Agreement. These and other TRIPS principles might also affect subsequent investment treaty interpretations. Finally, constitutional provisions and judicially developed general doctrines of law at the national level could still function as IP-specific counter-norms, as some of the chapters to this volume demonstrate. Albeit being subject to international law, such domestic provisions and doctrines might, on some occasions, also affect the interpretation of the international IP treaties and IIAs or help provide breathing space for local policies under a less interventionist review at the international level.
The threat produced by counter-norms—together with failed public law efforts to strengthen IP—may have intensified IP owners’ efforts to further solidify existing levels of protection through overlapping forms of protection, such as through investment norms and specific reference to IP as part of property ownership. 15 These overlapping forms of protection function as constitutional hedges of IP, creating increasingly impenetrable fences around exclusive rights and securing intellectual investments against political and judicial risks.
Such developments expand the notion and boundaries of IP to comprise the relevant norms of IIAs; trade treaties; human rights law; environmental, food, health, and other similar norm sets; as well as (semi-) privately regulated IP norms. Traditional IP norms now give only a partial picture of the way in which IP is regulated in practice and of diverse and multiplying conflict zones related to the application of IP. In order fully to understand late modern IP issues, it is necessary to become not only an expert on traditional IP norms but also an expert on investment and trade law, human rights, private regulatory practices, competition law, and IP-related health and environmental law. However, the acquisition of more knowledge is not the only issue. Viewing IP through the lens of competition, investment, or human rights also leads to different and competing logics and rationalities.
As a corollary, the relevant discourses participating in the construction of IP norms are no longer restricted to the traditional epistemic IP expert communities, further sub-divided into IP-specific sub-categories of patent, copyright, trade mark, and other IP law. Human rights experts; investment, trade, and competition lawyers; environmental, education, and health specialists, among others, now increasingly participate in framing and constructing meaning within IP law. The relevant sectors and epistemic communities in question not only possess different knowledge; they represent different globalising rationalities affecting IP issues. This development politicises IP in a new way. It challenges the traditional justificatory narratives underlying IP, which reflect natural law or utilitarianism. The new frames offer more critical narratives demonstrating the effects of IP on health, nutrition, environment, and so forth.
Our core thesis is that the above transformation of global IP law necessitates a broadening of the constitutional discourses relevant for IP. With the globalisation and diversification of IP regulation (as part of a broader global development), it has become clear that constitutional theories anchored in nation-states or even regional constellations like the EU are no more adequate for framing the above IP developments. Instead, it is preferable to turn our attention to theories capable of extending the notion of the constitution to sets of evolving global and transnational institutions—public and private—patterns and practices of inter-state relations, and overlapping public and private legal regimes, developing in successive epochal phases. 16
The constitutionalisation of IP is often equated with the latter’s benign and progressive integration with fundamental rights. Yet this is not a full or even an adequate picture of the ongoing constitutionalisation processes affecting IP. We posit that the most relevant forms of constitutionalisation are based on instruments other than human rights. Even when fundamental rights do participate in the constitutionalisation of IP, they tend to reinforce what has been called trade-related, market-friendly human rights. 17 This trend is visible in the case-law of the European Court of Justice (ECJ). 18 In this case-law, the parties have typically been powerful corporations.
Moreover, the ECJ has generally reduced the conflicts to double proportionality analysis between (intellectual) property ownership and the freedom to conduct a business. It has done so even when other rights, such as information and data protection rights of private users, could have received much more attention. The trade-related, market-friendly trend is yet more visible in investment treaty arbitration, where the tribunals’ invocations of human rights have typically had the role of strengthening the property rights of investors.
What, then, are the alternatives? Discourses on constitutionalism beyond the nation-state have continued for at least two decades. Yet they have so far affected constitutionalisation discourses relating to IP only marginally. Constitutional pluralism, new constitutionalism, and societal constitutionalism represent the main currents of such global constitutional discourses. They seek to identify, address, and problematise constitutional developments beyond nation-states. 19 In the IP context, they invite us to consider the multiplicity of regulation identified above as a feature of the de facto global constitutionalisation process. Common to all these constitutional discourses is the recognition that nation-states have lost their exclusive power to produce constitutional norms—if they ever had it. Instead, multiple overlapping norm-producing centres provide constitutional norms (constitutional pluralism). 20 They are created through the juridification of functionally differentiating social spheres obeying their specific logic and rationalities (societal constitutionalism). 21 They are further created through global hegemonic forces comprising both public and private power (new constitutionalism). 22
The last-mentioned discourse, in particular, has functioned as an inspiration for this volume. In line with this, many chapters address, for example, the new regulatory strategies, locking-in mechanisms, and biases of IP regulation from a critical constitutional perspective. Hence, we see constitutionalism more as a form of critique than as a project of enlightenment. It is possible to construct a de facto global constitution, erecting binding constraints on domestic and regional politics, economic policies, and social thought. 23 Although not based on a written constitutional text like typical nation-state constitutions, the de facto global constitution is difficult to amend. Like nation-state constitutions, it includes binding enforcement and judicial review mechanisms, and may even be drawn from the language of nation-state constitutions.
On the other hand, the de facto global constitution also encompasses informal elements. These include, for example, technical assistance, training of judges and IP office staff in the developing countries. Such measures seek to build—through Foucauldian biopolitical means—the desired mindset. They try to unite the key professionals in the developing world with the epistemic community of IP professionals, having a strong protection mindset (new informality).
How do global IP developments reflect such new constitutionalist discourses? Constitutional norms relating to IP do not merely relate to fundamental rights or nation-state constitutions or the de facto constitution of the EU. For example, international IP law and investment law have started to produce their constitutional norms and practices, which enable judicial review of domestic or regional regulations. 24 As one example, the notorious three-step test of IP treaties enables the judicial review of domestic and regional exceptions and limitations to exclusive IP rights. Exceptions and limitations often relate to values and public policies directly or indirectly protecting human rights (such as freedom of expression and the right to education). Hence, the three-step test may even have a limiting function on traditional constitutional law like fundamental rights provisions.
Similarly, investment treaty arbitration and IIA standards like indirect expropriation or fair and equitable treatment enable a specific type of de facto judicial review of domestic and regional norms, administrative practices, and even court judgments. They may have a chilling effect on domestic and regional law reforms or even court judgments intended to protect fundamental rights or, for example, the environment. Such new constitutionalist norms are also often used in the interpretation of other rules, both domestic and international. As such, they function as constitutional locking-in mechanisms seeking to preserve the hegemony of influential IP owners and a potent form of IP exclusivity.
On the other hand, the constitutional design might also seek to place IP norms outside standard judicial review and beyond the reach of generalist courts. Such a strategy was adopted with the Unitary Patent System in the EU; substantive patent norms were placed mainly beyond the control of the ECJ, to be interpreted by international organs and habituated by the members of the epistemic patent expert community. 25
Such developments do not connote the demise of nation-state or regional constitutions, such as the de facto constitution of the EU. For example, IIAs function as part of global constitutional law agreed by nation-states. Yet the processes are initiated by private investors through investment treaty arbitration. Investment treaty arbitration might also globalise the effects of selected parts of regional human rights instruments agreed between states. In particular, investment arbitration tribunals have used the property norms of the ECHR and the American Convention of Human Rights as interpretative guidelines for the applicable IIA norms.
Moreover, the new constitutionalist discourses invite us to direct our attention to the whole global frames of IP and the structural and other biases they produce. Such global structures of IP comprise meta-level solutions and patterns of regulation, making exclusive IP rights more durable or more resistant to challenges through the structural solutions themselves. Examples of such frames include minimum harmonisation of exclusive IP rights on the global level while limitations and exceptions are merely censored at that level. They also comprise direct or self-executing effects of treaties giving rights to IP owners while typical counter-norm treaties lack such effects. They further encompass the removal of significant parts of IP enforcement in the Internet environment from public law processes to be governed by private agreements.
Together, IIAs, the protection of property ownership as a human right, (semi-)private regulatory regimes, as well as the inherent ‘supernorms’ of IP treaties with constitutional functions, such as the three-step test and the most favoured nation (MFN) principle, add additional layers of security for IP owners and the whole regime of strong exclusive rights. They are used to censor and question the legality of, for example, exceptions and limitations to exclusive IP rights on national and regional levels or any other measures jeopardising different objects of protection or uses of IP rights. These new constitutionalist norms thus lock in and hedge exclusive IP rights by seeking to immunise them from threats arising from potentially conflicting rules in cultural, competition, health, consumer protection, human rights, and other laws and related international measures.
Such constitutional hedges around IP have the function of fencing and securing IP rights. Having double or even triple protection makes interferences with IP rights riskier for domestic legislators and courts, and ensures that backward steps in treaty-based protection are more complex and thus improbable. Investment treaty norms, property ownership as a fundamental right, and protective provisions of international IP treaties may be invoked complementarily even in a single case, as the recent disputes concerning cigarette plain packaging laws demonstrate. Overall, the identified constitutional hedges protect a strong form of IP exclusivity and could inhibit useful legislative renewals and court-created solutions. The below discussion seeks to further elaborate types of new constitutionalist norms of IP preliminarily.
The core international measure of IP continues to be the TRIPS Agreement. Its constitutional effects lock in the classical IP Conventions by incorporating parts of the Berne and Paris Conventions in their latest versions. It extends their geographical reach, as compliance with the incorporated parts is rendered mandatory for accession to the WTO. Moreover, the TRIPS Agreement extends the minimum standards of protection beyond those applicable under classical Conventions. It not only sets higher, more comprehensive, and entirely new standards of protection, such as a non-discriminatory standard of patent protection, it also regulates the permissible exceptions and limitations, for example, through the three-step test mentioned above, thus enabling judicial review of domestic and regional exceptions and limitations.
The TRIPS Agreement also seeks to ensure that its provisions do not override or limit pre-existing protection under the Berne and Paris Conventions. On the other hand, it expressly enables more extensive protection for right-holders, as long as such protection does not contravene the TRIPS provisions. Hence, it not only freezes and locks in what was achieved for right-holders with the classical Conventions and the TRIPS Agreement, but also locks in a trajectory for continuous strengthening of IP through subsequent, so-called TRIPS-plus international measures of protection. These are typically in the form of bilateral trade agreements with IP chapters. The IP provisions of these measures often go to the heart of current controversies concerning access to medication and knowledge, education, and research, as well as technological progress and promotion of national industries as part of the right to development. As their ‘TRIPS-plus’ nature is to establish standards of IP protection exceeding the TRIPS Agreement, they narrow the flexibilities and policy space available for WTO Members under the TRIPS Agreement. Moreover, due to the lack of exceptions concerning the MFN and National Treatment (NT) principles in TRIPS, the effects of bilateral TRIPS-plus measures become globalised in the sense that the protection thus achieved must be provided to the right-holders from all WTO Members.
The international regulation of IP has thus been based on the accumulation-only principle applicable in international human rights law. 26 The Members of the WTO may achieve more extensive protection both by legislative measures and international treaties. The TRIPS Agreement thus, in effect, controls not only domestic laws of the Member States but also the content of international treaties signed by WTO Members. The TRIPS Agreement, therefore, also constitutes part of international constitutional law by facilitating and constraining the production and application of ordinary international law. 27
The allocation of the regulation of exceptions and limitations on IP rights to the domestic level—while exclusive IP rights are secured on the global, international, and EU-federal level—is in keeping with the neoliberal paradigm of multilevel governance. 28 In this paradigm, property rights, capital mobility, and free markets are centralised and thus secured on the global or federal level. However, aspects of the economy pertaining to wealth redistribution and correction of market failures are decentralised and therefore left for the national or sub-national regulation. States and regions compete for investments and mobile corporations. The potential exit of investors functions as a threat to nation-states and regions. The risk of capital flight has a disciplinary effect on governments. In the absence of federal-level redistribution and correction of market failure norms, states compete to regulate in favour of investors. Such self-enforcing principles of the market, based on an implementation of a particular federalist paradigm, constitute an essential neoliberal complement to the enforceable constitutional restrictions operating on the international and EU-federal levels.
In the absence of balancing norms, the creation of proprietary rules protecting IP on the global and federal (EU) levels thus has a double function: to create enforceable constitutional rules enabling judicial review of national or regional norms or practices threatening IP investments and the creation of inter-jurisdictional policy competition and the motivation for states and regions to compete for mobile investors and corporations. This double function might partly explain why proposals to establish minimum user rights in IP law on international or EU-levels have been modest when compared to the detail with which exclusive IP rights have been regulated on the same levels. Establishing binding standards for non-proprietary interests related to IP on the global or federal levels through minimum harmonisation of exceptions and limitations or the creation of new treaties like the Kyoto Protocol might jeopardise regulatory competition for investments and corporations. 29
The production of counter-norms to strong exclusive IP rights within regimes such as international health, environmental, and food regimes can be seen as a vital part of regime shifting taking place in the international regulation of IP. 30 Such proliferation of IP regulation might lead to the framing of IP issues within environments that are more interested in developing exceptions, limitations, and exclusions of IP protection rather than in expanding the protection of the exclusive rights of IP owners. 31
However, such counter-norms tend to be closer to ‘soft law’ on the sliding scale of the bindingness of legal norms. They may, for example, be resolutions of UN human rights organs or principles of ‘openness’ and non-proprietary standards codified in internal rules of an Internet standards body. Moreover, counter-hegemonic IP norms cannot typically produce direct and judicial review effects on national or regional levels. The instruments in question are not usually intended to create individual rights or freedoms, which is the requirement for such effects in the EU following the ECJ’s Air Transport Association of America. 32 On the other hand, investment and IP treaties are typically intended to give rise to individual rights and freedoms and could thus produce such effects. Their norms may, therefore, have a direct effect in the EU legal system and be applied in place not only of conflicting Member State laws but also conflicting provisions of EU secondary law. Moreover, they can provide the foundation for judicial review of EU secondary legislation. Often, the instruments capable of producing these effects are also equipped with binding arbitration or other dispute settlement mechanisms and are frequently spiced with the threat of trade sanctions or massive damages for non-compliance.
Some counter-norms have recently been negotiated within the IP system. The Marrakesh Treaty administered under the WIPO, providing compulsory exceptions to protect the blind and visually impaired, has been characterised as a de facto human rights treaty. 33 However, the mandatory exceptions provided under that instrument have been subjected directly to the three-step test. As has been pointed out, this technique explicitly subjects human rights considerations to a test deriving from copyright law, intended to limit permissible exceptions and limitations to copyright enforcement: ‘Implementing human rights via exceptions and limitations to IP rights then necessarily implies that the former are subjected to the constraints the IP system imposes on the latter.’ 34
In contrast, even the most excessive provisions or practices protecting exclusive IP rights norms are seldom placed under any similar tests that measure their acceptability against standards found in other sets of rules. Exclusive IP rights are formally subject to fundamental rights as protected in the CFREU and the ECHR. However, in cases before the ECtHR and the ECJ, human rights have in practice neither curbed the strong protection of exclusive IP rights on the domestic level (ECtHR) nor limited the level of protection provided under EU secondary legislation (ECJ). 35 In its three Grand Chamber judgments of July 2019, the ECJ maintained that fundamental rights could not justify a derogation from copyright where such a derogation is not already within the exhaustive list of exceptions of the Information Society Copyright Directive. 36 The ECJ applied all the restrictions that condition the use of exceptions and limitations as restrictions that also apply to freedom of information and freedom of the press as protected in the CFREU. These comprise, in particular, the three-step test and the aim of the said Directive construed as high-level protection for copyright owners. The judgment thus, in effect, reversed the hierarchy between legislation and EU fundamental rights: the Directive conditions the application of the rights in the CFREU and not vice versa. The ECJ’s position is to be contrasted with the practices involving the three-step test, which subject exceptions and limitations, for example, to external control before the WTO dispute settlement organs and constrain the interpretation of exceptions and limitations before the ECJ and EU Member State courts.
Evaluated as a whole, it seems that the relevant fundamental rights case-law of both courts reinforces the trade-related, market-friendly preferences outlined above, characteristic of the global economic constitution more generally. The most pertinent rights are the protection of property ownership, the prohibition of non-discrimination, the requirement of effective remedies, and freedom to conduct a business, all exercised by corporations. Increasingly frequently, the constant overlaps of these and other inflated and proliferated rights are resolved in favour of IP exclusivity and new remedies for IP owners. Such a practice is at the expense of widespread and generally accepted freedom of information-related customs, such as open WiFi provision or hyperlinking on the Internet. 37 Even where the ECJ has interpreted some exceptions in line with freedom of expression, like the parody exception in Deckmyn, it has at the same time established new and problematic privatised means for copyright owners to ban parodies they consider to be discriminatory.
The failure of international, regional, and domestic legislative initiatives to further strengthen IP (including, for example, ACTA and the EU’s Software Patent Directive referred to above) represent potential turning points in IP politics on the national, international, and regional levels, challenging the hegemony of IP owners. 38 These examples alarmed the IP lobby and encouraged it to pursue further strategies to lock in proprietary IP norms on the international treaty level. However, as this approach proved increasingly difficult, regulatory efforts have been partially shifted to the private sphere. Powerful governments with a comparative advantage based on IP have actively pushed such regulatory practices, for example, in the form of the non-binding agreements between IP owners and Internet ‘chokepoints’ referred to above.
Private regulation of IP is nothing new: specific institutional solutions have enabled various forms of private and public-private ordering that have de facto led to global IP norms. Examples of such privatised regulative practices include the Uniform Domain-Name Dispute-Resolution Policy (UDPR) adopted by the Internet Corporation for Assigned Names and Numbers (ICANN), Internet service provider practices in response to notices from copyright owners, regulation through technological protection measures and digital rights management (DRMs) that are not tied to national copyright rules, 39 and the regulation of IP liability through technical standardisation. 40
When such private regulatory practices escape any public structuring, their content and enforcement reflect the particular interests of the corporations that ‘enacted’ them. To the extent that users, future innovators, and actors such as human rights and environmental groups have not been involved in their ‘enactment’, such private regulatory practices could negatively affect the core functions of IP protection manifested in the balance between non-proprietary interests and exclusive rights given to the IP owners.
The rapidly expanding self-regulatory practices of IP should also be seen as part of new constitutionalism on a global scale. 41 Private regulation affects the whole constitutional frame of global IP enforcement by transferring significant parts of IP regulation from the publicly legislated, generally applicable, and transparent norms to mostly private mechanisms operating between a handful of business entities, but with the capacity to give rise to global effects. Such arrangements are based on non-transparent private norms agreed beyond democratic or even broad industry participation. They might also constitute ‘code as law’, hidden in the ‘black boxes’ of algorithmic decision-making, 42 as in the case of automated notice and takedown mechanisms or algorithmic filtering of protected music or other copyrighted works.
These privatised practices may also jeopardise the functioning of the more traditional nation-state or regional constitutional norms on a mass scale. They tend to escape all possibilities for transparency, judicial review, and effective legal remedies for those suffering collateral damage. Moreover, they enable not only private global regulation of IP enforcement on the Internet, but also pave the way for and legitimise algorithmic decision-making practices in the enforcement of IP rights on the Internet. 43 Such private regimes and algorithmic decision-making are theoretically subject to new measures based on public law. Yet it becomes increasingly difficult to reverse or even inhibit the processes subsequently after such enforcement has become a dominant form of operation in the Internet environment.
It is true that private regulatory practices might respond more quickly and effectively to accelerating global issues than is possible for formal international treaties. 44 A combination of contractual and technological regulation does not have to take into account issues such as state sovereignty, political bargains, ratification and implementation processes, litigation against other states, or even questions related to direct or indirect effect before domestic courts. Even if based on non-binding agreements, these global norms, in distinction to most state-created soft law, determine outcomes and decide on the rights and interests on a worldwide scale. Such practices may thus often seem acceptable from the perspective of the global reach of the Internet and information technologies, as well as from the standpoint of inefficiencies based on transaction costs. However, they typically lack democratic legitimacy and regulate IP from the highly selective right-owners’ and globally operating Internet intermediaries’ perspectives only.
Before proceeding to suggest any ‘solutions’ intended to legitimise such private regulatory practices through ‘public structuring’, 45 it is necessary to address the characteristics of such private regulation and its inherent problems. In particular, it is essential to explore the extent to which governments participate in such private regulatory practices and how such private regulation might jeopardise traditional constitutional values. It is also necessary to consider how these private practices might affect the functions of IP related to its multiple objectives and stakeholders, and the whole global constitutional frame of IP protection.
Following this introduction, Part I of this collection focuses on over-arching systemic issues. It relates the core concepts of IP to critical new constitutionalist discourses and provides a bird’s eye perspective of the issues. It proceeds as follows:
Part I starts with Henning Grosse Ruse-Khan’s chapter ‘Effects of Combined Hedging: Overlapping and Accumulative Protections for IP Assets on a Global Scale’. This chapter provides a broad systemic overview of the regimes that regulate IP and hedge exclusivity at the international level, building on the author’s previous work on international norms in IP law by focusing on the interplay of some of the core constitutional hedges in the international IP, investment law, and human rights fields. Such hedges include concepts of private rights (as well as negative rights), concepts of minimum standards, non-discrimination protections, TRIPS as a comprehensive supranational code, and IP protection via broad investment concepts.
Tuomas Mylly’s chapter ‘The New Constitutional Architecture of Intellectual Property’ looks beyond discourses reflecting constitutionalism 1.0—constitution as a charter of powers—and 2.0—constitution representing the supreme value of human rights—in the context of IP. It sketches some of the central features of the new 3.0 constitutional architecture of IP by studying the characteristics of this constitutional development from the perspective of social acceleration, in particular. This enables the discussion of novel developments of IP, beyond the traditional constitutional treatments reflecting constitutionalism 2.0 and the idea that human rights could re-establish the lost balance of IP. Mylly argues that the prevailing new constitutionalist architecture of IP is best understood through the role of constitutional norms in both accelerating and decelerating change. In particular, the chapter argues that the judicature, the executive, and the private sphere increasingly replace legislators as the key drivers of IP policies, that locking-in mechanisms like the three-step test and IIAs provide the needed stability for the acceleration developments, and that the notion of structural proprietarian bias best captures the spirit of the prevailing multipolar IP constitutionalism.
Part II of this volume, International and Transnational IP Norms as ‘Constitutional Hedges’ of IP, focuses on the restrictive constitutional functions of IP norms, such as the three-step test, patent norms established under the TRIPS Agreement, EU trade secret protection, and IP chapters of trade agreements, so-called TRIPS-plus measures.
It begins with Martin Senftleben’s chapter, ‘From Flexible Balancing Tool to Quasi-Constitutional Straitjacket—How the EU Cultivates the Constraining Function of the Three-Step Test’, which focuses on one of the most important hedges protecting strong IP rights, the three-step test. This test forms part of the TRIPS Agreement and other international treaties, as well as EU law, and functions to regulate the permitted range of exceptions and limitations to IP rights. The author outlines the potential enabling and constraining functions of the three-step test in international and supranational copyright law and explores the way in which a potentially flexible international balancing tool has been converted into a powerful IP hedge. In particular, he concentrates on the embedding of the constraining function in EU law and the Marrakesh Treaty.
Part II also includes Nari Lee’s chapter, ‘Hedging (into) Property?—Invisible Trade Secrets and International Trade in Goods’, which addresses the recent strengthening and hedging of trade secrets protection globally and in the EU, in particular. Trade secrets potentially include all subject matter of IP as well as any other types of data, information, and knowledge that may not meet the threshold of eligibility for (other) IP rights. Trade secret protection may be used either to prolong existing exclusivity or to hedge the balance of interests that the law establishes through such restrictions, as in the case of the patent-ineligible methods and data collected through the use of diagnostic methods at issue in AMP v Myriad Genetics. Against this backdrop, this chapter considers the extent to which trade secrets law can be used privately to create a property-rules regime in an age of digitalised trading, using the recently adopted EU Directive on trade secrets as an example. It questions whether the manner of protecting and enforcing trade secrets envisaged in the EU Directive indeed make it a de facto property right, hedging a liability regime into a proprietary scheme, which may be unilaterally created by taking steps of secrecy and imposing a duty of confidence. The chapter also criticises recent waves of investment treaties as well as regional trade agreements, such as CPTPP, which include clauses on trade secret protection with detailed definitions of misappropriation subject to criminal liability and observes that it is difficult to argue for further international harmonisation in this area on the logic of international trade and investment alone.
Part III of the volume addresses the concrete ways in which human rights participate in the hedging of strong property rights through, in particular, the protection of property ownership.
The single chapter of this part is Aurora Plomer’s ‘A Market-Friendly Human Rights Paradigm for IP Rights in Europe?’ In the new variants of constitutionalism, human rights are perceived as critical normative counterweights to the extension of market-friendly rights privileging the protection of fiscal policies; the free movement of capital assets across borders; and the interests of investors over democratic processes, communities, and people in the new variants of constitutionalism. From this perspective, the ECHR and EU Charter of Fundamental Rights, which extend the right of property to legal persons, strike a discordant note by comparison with other international human rights instruments. This chapter investigates the origins of this incongruity. It shows that, paradoxically and contrary to the prevailing view, the rationale for the extension in the ECHR was to enable states to counteract the adverse social and economic impact of untrammelled exploitation of property and accumulation of profit. The chapter then examines the jurisprudence of the ECtHR through this prism and considers how the court may recover the normative ideals of human rights law. The last part of the chapter draws out the implications and challenges for the interpretation of IP rights in the EU Charter of Fundamental Rights.
Part IV of the collection considers the way in which international investment treaty protection has changed the logic of global IP protection and has played a significant role in further hedging IP exclusivity.
Rochelle C Dreyfuss’s chapter argues that bilateral investment treaties and free trade agreements erect a high hedge around IP rights, protecting them from the impact of legitimate state regulation. Two ISDS involving IP have been resolved by final award. In both cases, the state prevailed, suggesting to many that the hedge may not be as impenetrable as was originally feared. However, this chapter argues that this view is mistaken. While the awards in the decided disputes may close the door on specific contentions, they invite further challenges and maintain the heavy shadow that the hedge provided by ISDS casts on state action. The author argues that, in order to trim that hedge, it will be necessary for the drafters of investment obligations, and the tribunals that hear ISDS disputes, to take into account the intangibility of IP rights in determining when IP is sufficiently localised in a host state to be considered protectable by that state’s investment obligations.
Further, the possibility of using ISDS as a mechanism for building counter-norms—hedges that protect the public and its regulatory interest—is also explored. Dreyfuss argues that tribunals must consider the object and purpose of IP when resolving IP-holder claims and allow those who invest in reliance on the limited scope of IP rights to challenge attempts by states to expand IP protection at the expense of other vital public interests. At the end of the day, however, she questions whether ISDS, which allows foreigners to challenge a government’s choices, is an appropriate vehicle for maintaining hedges—for striking the right domestic balance between the interests of IP holders and those of the public.
Peter K Yu’s chapter ‘The Second Transformation of the International Intellectual Property Regime’ notes that, three decades ago, the arrival of international trade law dramatically transformed the global IP regime. It argues that we are at a critical juncture today, when the arrival of international investment law may transform this regime yet again. While the recent efforts by Philip Morris and Eli Lilly to use ISDS to address cross-border IP disputes failed, they loudly announced the rude intrusion of international investment law. Such intrusion may not only destroy the hedges built around the international IP regime but may also threaten to undermine their very foundation. The chapter begins by revisiting the first transformation of the international IP regime in the late 1980s and the early 1990s. Although the WTO TRIPS Agreement undoubtedly expanded the regime’s coverage and levels of protection and enforcement, these changes followed a predictable, though highly accelerated progression.
Nevertheless, the Agreement also initiated unnatural transformation in three areas: (1) norm-setting (from ‘one country, one vote’ to a consensus-based Green Room process); (2) norm interpretation (an added trade gloss); and (3) dispute settlement (from an unused optional process before the International Court of Justice to a mandatory mechanism under the WTO). This chapter then goes on to explore the potential second transformation of the international IP regime. After briefly recounting the recent intrusion of investor-state disputes in the IP area, it identifies possible transformation in three areas: (1) norm-setting (from WIPO and the WTO to non-transparent private processes); (2) norm interpretation (an added investment gloss); and (3) dispute settlement (from a state-to-state process to an investor-state process). The chapter concludes by recommending three courses of action to protect the vitality and integrity of the international IP regime.
Part V of the book explores two phenomena sometimes neglected in constitutional and IP discourses. These are informal measures in the form of technical assistance from the developed to the developing countries and private regulation of IP as means to place controversial and fundamental rights-sensitive subject matter partially beyond the reach of courts, constitutional safeguards, and even out of sight of public discourses and oversight.
Daniel Acquah’s chapter ‘Technical Assistance as a Hedge to IP Exclusivity’ considers the connection between neo-colonialism and IP. In general, an essential part of the process of neo-colonialism by economic means is the establishment of a legal framework of IP that confers legally enforceable rights supporting and safeguarding economic penetration and control. This process includes, in a similar way as in colonial times, the guarantee of protection of foreign property rights in developing countries. The TRIPS Agreement and other hard norms, such as TRIPS-plus bilateral trade treaties concluded between the EU and developing countries, further contribute towards such neo-colonial control. They promote a particular vision of economic ordering that seeks to increase the level of IP protection beyond that required by TRIPS. However, an often overlooked but essential aspect of such control is that once these treaties have been concluded, the US, the EU, and other leading industrialised trading blocs actively offer technical assistance. Such assistance includes the drafting of new laws, training of judges, training of IP office staff, capacity building, and so forth. Such technical support—as a third layer of norms—becomes the ‘new informality’, as emphasised in the new constitutionalist literature. The chapter addresses such informal measures. It argues that such technical assistance further hedges IP’s exclusivity by seeking to create a Trojan horse IP approach and by creating—through Foucauldian biopolitics—an elite IP community in developing countries that sees things through the dominant industrialised country approach.
Martin Husovec’s and João Pedro Quintais’s chapter ‘Too Small to Matter? On the Copyright Directive’s Bias in Favour of Big Right-Holders’ posits that Art 17 of the EU’s DSM Directive contains an inherent bias favouring large right-holders to the prejudice of small creators. They study the likely trajectories and incentives of the relevant actors and conclude that the licensing model of Art 17 is tailored to the needs of powerful content owners. Only smaller right-holders must monitor the market, review the use of their works by third parties, and approach each online content-sharing service provider separately. The enforcement mechanism of Art 17 has similar effects on amateur creators who will often have to rely on exceptions to copyright when creating content in distinction to larger units that can typically resort to licensing. Collective licensing could offer a potential solution to alleviate the identified problems in unequal treatment of different types of copyright owners. Husovec and Quintais discuss these effects from the perspective of the principle of equal treatment, protected under Art 20 of the EU Charter. They argue that unless Member States resort to legal mechanisms—like collective licensing—that can better balance competing rights and interests and not discriminate between different actors, the end result will be unconstitutional.
The last part of the book introduces chapters challenging the power and logic of constitutional hedges or at least introducing significant developments by which individual countries have managed to resist constitutional norms shielding strong IP rights.
The part opens with Caterina Sganga’s chapter ‘Multilevel Constitutionalism and the Propertisation of EU Copyright: Even Higher Protection or a New Structural Limitation?’ As noted above, it represents a common mantra in contemporary scholarship that the constitutionalisation of copyright as property right has contributed to the reinforcement of its protection vis-à-vis other interests and rights, with distortive consequences on the already fragile copyright balance. In the EU, this fear has been reinforced by the language of Art 17(2) CFREU (‘intellectual property shall be protected’), which has been read by some as constitutional confirmation of the ‘high level of protection’ introduced by the InfoSoc Directive and has been used by the ECJ to broaden the scope of exclusive rights and to insist on a strict interpretation of exceptions. The chapter argues that a more careful analysis proves this narrative wrong and simplistic because it ignores elements which could open the door to different interpretative results, where the classification of copyright under the umbrella of constitutional property may, instead, create internal limits to authors’ exclusive rights and lead to their functionalisation to alternative goals chosen for the copyright system. The chapter demonstrates how the property model stemming from the combination of common constitutional traditions and EU sources is not absolute, but carries the imprint of the social function doctrine, which limits property rights from inside their structure. It argues that a correct constitutional propertisation of EU copyright law would not tilt but preserve and guide the balance between copyright and other fundamental rights, and between copyright and EU social and cultural policies.
Christophe Geiger and Luc Desaunettes-Barbero’s chapter ‘The Revitalisation of the Object and Purpose of the TRIPS Agreement: The Plain Packaging Reports and the Awakening of the TRIPS Flexibility Clauses’ focuses on the potential generation of counter-narratives in IP law by Arts 7 and 8 of the TRIPS Agreement. In particular, it argues that the recent decision of the TRIPS Panel and Appellate Body relating to the plain packaging of tobacco products indicates the potential of these provisions in this respect. The chapter addresses selected other developments of global IP law and evaluates their potential as turning points in global IP law and policy.
Allan Rocha de Souza’s chapter ‘Copyright, Human Rights, and the Social Function of Properties in Brazil’ addresses copyright dynamics under the Brazilian Federal Constitution, which positions human rights at the core of the entire legal system, opening the law to the influence of new international human rights treaties. The protection of property rights, as well as the obligation to fulfil property’s social function, are inscribed within such rights, establishing a dynamic between individual and collective interests in proprietary institutions. In this context, how is the constitutional copyright system to be understood and applied in the courts of Brazil? How do proprietary and non-proprietary, economic and social, individual and collective interests, arguments and rationales relate to one another in shaping copyright protection under the Brazilian Constitution? These questions are addressed with a particular focus on two key issues that have recently been faced, the regulation of collective management and the interpretation of limitations. After an explanation of the legal structure supporting copyright in Brazil and a description of the process of constitutionalisation of private law in general, both key issues are discussed, with reference to relevant leading cases in the highest courts in Brazil.
Graham Reynolds’s chapter ‘Hedge or Counterweight? New Constitutionalism and the Role of the Canadian Charter of Rights and Freedoms in Intellectual Property Litigation’ addresses Canadian IP law through a new constitutionalist lens. Over the past few decades, Canada has been the target of several international actions in the area of IP law. The chapter examines these actions through the lens of the theory of new constitutionalism, as articulated by Stephen Gill and A Claire Cutler. This perspective suggests that these measures have certain significant similarities: they all seek to use international trade law as a means through which to lock in strong protections for owners under Canada’s IP system and to limit the ability of either the Government of Canada or Canadian courts to shape IP laws so as to constrain the exclusive rights of IP owners. Beginning from the position that IP rights ought to ‘serve human values’ (State v Shack), the chapter proceeds by considering whether, and to what extent, the Canadian Charter of Rights and Freedoms (Canadian Charter) can produce counter-norms to those promoting strong protection for right-holders that are provided by international trade law. It argues that, while the Canadian Charter has traditionally had little impact on Canada’s IP system, it can and ought to play a more prominent role in this area by helping to preserve space for the Government of Canada to legislate in the public interest.
Recent discourses on global constitutionalism provide the lynchpin through which IP treaties, fundamental rights protecting IP ownership, and the rights of IP owners, international investment law, and private regulation are seen in this volume. The focus is not only on the new types of IP norms and their inherent problems but also on the whole framework and the underlying constitutional and societal theories.
Having double, or even triple, constitutional protection makes interference with IP rights riskier for countries, and backward steps in treaty-based protection more complex and less likely. Investment treaty norms, property ownership as a fundamental right, and international IP treaties may be invoked complementarily even in a single case, as the recent disputes before national courts, investment treaty tribunals, and the WTO dispute settlement Panel concerning cigarette packaging laws demonstrate. Private regulation of IP shifts IP enforcement increasingly from public law to the sphere of private contractual relations and automated decision-making practices between powerful corporations. It transforms the whole constitutional frame of IP and shelters strong enforcement measures from most constitutional safeguards available otherwise.
Hence, global and European IP norms, investment treaties, protection of property ownership, and private regulation ‘hedge’ exclusive IP rights by seeking to immunise them from perceived internal threats, such as IP law’s own exceptions and limitations, as well as external threats arising from conflicting norms in cultural, competition, human rights, and other laws. They thus also have the function of further marginalising the counter-hegemonic IP norms created through regime shifting and transplantation of IP specific counter-norms, for example, in the Biodiversity Convention, the Oviedo Convention, global Internet norms, and constitutional provisions at national level.
Berne Convention for the Protection of Literary and Artistic Works (opened for signature 9 September 1886, entered into force 5 December 1887, as last revised at Paris 24 July 1971, and amended 28 September 1979) 1161 UNTS 30 (hereafter Berne Convention); Paris Convention for the Protection of Industrial Property (opened for signature 14 July 1967, entered into force 26 April 1970, as last revised at Stockholm 14 July 1967, and amended 28 September 1979) 828 UNTS 305 (hereafter Paris Convention); Agreement on Trade-Related Aspects of Intellectual Property Rights, Marrakesh Agreement Establishing the World Trade Organization, Annex 1C (opened for signature 15 April 1994, entered into force 1 January 1995) 1869 UNTS 299 (hereafter TRIPS Agreement). See about the forces and developments leading to the TRIPS Agreement
Susan Sell , Private Power, Public Law—The Globalization of Intellectual Property Rights (Cambridge University Press 2003)
and about the impact of the WTO trade regime context for IPMatthew Kennedy , WTO Dispute Settlement and the TRIPS Agreement: Applying Intellectual Property Standards in a Trade Law Framework (Cambridge University Press 2016)
On the effects of bilateral trade and other treaties on IP, see the contributions in
Josef Drexl , Henning Grosse Ruse-Khan , and Souheir Nadde-Phlix (eds), EU Bilateral Trade Agreements and Intellectual Property: For Better or Worse? (Springer 2014)