Intellectual Property Rights

Intellectual Property Rights (IPR) have been defined as a  “category of intangible rights protecting commercially valuable products of the human intellect. The category comprises primarily trademark, copyright, and patent rights, but also includes trade-secret rights, publicity rights, moral rights, and rights against unfair competition.”[345]

Intellectual property comprises all those things that come from the human intellect, whether they be ideas, inventions, words (fact and fiction), music, theatre or art. There are certain clearly defined types of intellectual property, enshrined in different pieces of legislation, such as Patents Acts, Trade Mark Acts, Copyright Acts and Registered Design Acts.  IPR gives the owner a right to prevent third parties from using or copying the intellectual property without permission[346].

There are public policy implications of the monopoly right.  Monopolies can be abused by charging high prices for permissions, or simply refusing third parties to exploit the IPR.  Another public policy problem is that ownership of information may conflict with laws of free speech or of the human right to access information.

In practice, different governments approach these issues by employing differ­ent ‘strengths’ of protection. These differences include the penalties for in­fringement and the different tests and hurdles that one must overcome if one is to protect one’s intellectual property. This ranges from no formality at all (e.g., copyright in most countries) through to a long, expensive and difficult legal procedure (such as obtaining patents).

The monopoly rights are also hedged with safeguards. This is because governments in free market economies are reluctant to allow legalised monopolies without some means of preventing abuse (e.g., the owner of the intellectual property charging outrageous prices or deliberately producing small quantities). These safeguards include a limitation on the time the intellectual property right is retained (typically ranging from 20 years for patents via 70 years for copyright, through to no time limit for trade marks).   Another safeguard is that allowing a limited amount of copying or use under certain restricted circumstances – a good example are the so-called ‘exceptions to copyright’. By erecting lower or higher barriers to obtain the intellectual property right – by changing the fees payable to obtain the rights, by increasing or decreasing the rights the owner has, by increasing or decreasing the exemptions or exceptions non-rights owners have – governments can subtly encourage or discourage the intellectual property rights individuals and corporations can possess.

However, governments can only do this within some tight constraints.  They are somewhat restricted in their freedom to amend their national intellectual property laws because they are usually parties to international conventions on these laws. Membership of such conventions or adherence to such agreements means that the government in question agrees to abide by certain minimum standards in its law. In the case of EU member states, the wording of relevant EU Directives further restricts them. What this all means is that intellectual property laws are similar, but not identical, in all the major countries of the world.  There are no international IPR laws at present, though work is on-going to try to develop them.

The major types of intellectual property are patents for in­ventions, copyright, rights linked to copyright (such as public lending right, performers rights and moral rights), breach of confidence, passing off, Registered Trade Marks, character merchandising, registered designs, plant varieties protection, and various less important rights, some of which are unique to one country or another.

New forms of intellectual property arise from time to time.  A good example is the database right introduced by an EU Directive. A more contentious issue is the application of a well-established type of intellectual property (patents) to an area it was not originally intended to cover (software).

All IPR laws involve a tension between those who wish to gain a monopoly and those that wish to exploit the IPR in some way or another.  This tension has been most acute in copyright.  The primary battle-ground is in the music industry, where cases such as the Napster case have emphasised the major differences in attitudes between those who wish to access intellectual property, and those who wish to control its exploitation.  The Napster case has highlighted a fundamental clash of cultures between Internet users and the copyright industries.  There is much copyright infringement taking place (especially on the Internet) and, at present, little is or can be done to prevent it.  Copyright owners have responded to this challenge by adopting one or more of four approaches. The first is to lobby for a strengthening of copyright law. The second is to develop technical measures to prevent copyright abuse (and have laws in place to make the by-passing of such devices without authority a criminal offence). The third is to lock users into contracts that prevent abuse.  The final method is to sue high-profile and readily identifiable alleged infringers (or  alleged enablers of infringement such as Napster) to send a strong message to the user community.  Despite these efforts, however, the Internet environment continues to encourage attitudes amongst users that are opposed to copyright.  In this chapter we consider only how governments have responded to the pressures put on them to strengthen and/or update their copyright (and also other IPR) laws, but it is worth stressing that owners of IPRs are not relying solely on such Government-introduced changes.

This is an area where Court cases can have as much, or more significance, than primary legislation or government initiatives.  Nonetheless, because of lack of time  to complete the research, we have ignored Court cases. Thus, interesting subject areas such as the legality of caching, linking and framing, and domain name disputes receive little attention in this chapter.

International Agreements

Most types of IPR are the subjects of one type of international agreement or another.  These international agreements ensure that the laws relating to IPRs are similar from country to country, and that reciprocal protection is available, i.e., that a national of one country can enjoy the fruits of his or her labour through the IPR of another country. Much of the important development work in IPR law relates to changes to these international agreements rather than changes in the law of any particular country (other than changes to ensure that the particular country is able to fulfil its international obligations).

These international agreements are the responsibility of WIPO[347], the World Intellectual Property Organisation,  a United Nations special agency. It is responsible amongst others, for the administration and updating from time to time of the Berne Convention on copyright and the Paris Convention on patents. WIPO has been, and continues to be actively involved in the development and updating of the international treaties it is responsible for.  However, such updating is often difficult to achieve, as it requires consensus from member countries, and frequently the attempts to update are controversial.  Over the period under review, WIPO itself has not completed any major changes to its IPR responsibilities.  However, its Diplomatic Conference of 1996 resulted in proposals for updating the Berne Convention (on copyright) to take into account digital developments.  The agreed texts from that Conference has resulted in changes in the law in many countries. Two treaties[348] resulted from the 1996 Diplomatic Conference: the WIPO Copyright Treaty, and The Performances and Phonograms treaty.

These two treaties address the issues of copyright protection in the digital environment, including the contentious issue of the legal liability of ISPs[349].  A third proposed Treaty, on databases, was withdrawn when it was clear agreement could not be reached.

The Berne Convention was first established in 1886. It has been revised and amended a number of times since. The text of the current version can be found in[350]

The pressure for change to copyright laws has come from the software, film and music industries.  These industries believe they have been particularly hard hit by Internet piracy, and wish to have copyright law strengthened appropriately.   However, because it is in practice impossible to distinguish the different media in an electronic environment, electronic information of all types has been swept up into the changes.

There is another important agreement that WIPO is not solely responsible for, and that in many ways has become more important than the well-known Berne and Paris Conventions (on patents).  The TRIPS (Trade Related Intellectual Property Rights) Agreement[351], which came into effect in January 1995, is arguably the most comprehensive multilateral agreement on intellectual property in the world. The agreement provides a series of transitional arrangements, timetables and reviews to enable countries to eventually comply fully with its provisions. The provisions include a five year agreed suspension, (starting January 1995) on the filing of non-compliance complaints against developing countries. The five-year suspension gave developing countries time to bring their laws and practices into line with TRIPS. 

The TRIPS Agreement is a minimum standards agreement.  In this regard, it is no different than the Berne Convention, say.  TRIPS allows Members to provide more extensive protection of intellectual property than the minimum if they so wish. Members are left free to determine the appropriate method of implementing the provisions of the Agreement within their own legal system and practice. The TRIPS Agreement is an attempt to narrow the gaps in the way these rights are protected around the world, and to bring them under common international rules.

The original General Agreement on Tariffs and Trade (GATT) provided the basic rules of the multilateral trading system from 1 January 1948 until the World Trade Organization entered into force on 1 January 1995.  The original GATT is no longer in force and was updated to GATT 1994, which sets out the main World Trade Organisation (WTO) rules that bear specifically on trade in goods.  The WTO regulates world trade with respect to goods, services and intellectual property.

With an increasing share of knowledge-intensive products in international trade and the inclusion of trade-related IPRs on the agenda of the WTO, IPRs have become an important trade issue. Political economy considerations, as reflected in TRIPS, favour high standards of IPR protection.

WIPO and WTO launched an initiative on 14th June 2001 to help less-developed countries maximise the benefits of intellectual property protection. They have until 1 January 2006 to comply with the TRIPS Agreement. They have to have brought their laws on copyright, patents, trademarks and other areas of intellectual property into line with TRIPS by then. They also have to have developed provisions for enforcing the laws effectively to deal with piracy, counterfeiting and other forms of intellectual property infringement. This new agreement is similar to that of the WTO and WIPO joint agreement to help developing countries launched in 1998.  The role of WIPO, and other developments in copyright law, are well reviewed in[352] .

TRIPS requires that parties comply with the obligations of the main conventions of WIPO: the Paris Convention (for the Protection of Industrial Property, in relation to patents and trademarks) and the Berne Convention (for the Protection of Literary and Artistic Works, i.e., for copyright). The crucial difference between TRIPS and these other intellectual property treaties is that failure to comply with TRIPS can lead to WTO trade sanctions. Perhaps the most important potential sanction is that the USA refuses to give the country in question favoured nation treatment.  This last resort has been used on a number of occasions to address issues, such as the Greek Prosecutors’ failure to deal with pirate radio stations that were playing unlicensed pop music, and China’s refusal to close down factories producing pirate CDs on a large scale.

The International Conventions incorporated into the TRIPS agreement are:

Paris Convention for the Protection of Industrial Property (1967)

Berne Convention for the Protection of Literary and Artistic Works (1971)

International Convention for the Protection of Performers, Producers of Phonograms and Broadcasting Organizations (the Rome Convention) (1961)

Treaty on Intellectual Property in Respect of Integrated Circuits (1989)[353]

The TRIPS Agreement provides a series of transitional arrangements, timetables and reviews to enable countries to eventually comply fully with its provisions. The provisions include a five year agreed suspension, (starting 1st January 1995) on the filing of non-compliance complaints against developing countries.  When there are trade disputes over intellectual property rights, the WTO’s dispute settlement system is now available.

Another significant area for international agreement is dispute resolution procedures for domain names.  ICANN is a global non-profit corporation that has adopted Rules for Uniform Domain Name Dispute Resolution[354].  Arbiters accredited by ICANN administer the procedures for domain name conflict resolution.  WIPO is currently the major arbiter, but there are others, and the choice appears to be that of those in dispute.   Either one or three panellist hears the dispute, according to the parties’ wishes.   The arbiters adjudicate on the dispute, but have no power to award damages or costs.  Nonetheless, the decision is binding, though either party can appeal to the Courts if it so wishes. It only has ten days to do so, and if it fails to appeal, it must abide by the decision and implement the necessary changes within those ten days.  The ICANN procedure, which was agreed in October 1999, rendered redundant the previous dispute procedure run by NSI.

The major forms of IPR that are considered in this Chapter are copyright, Moral Rights, patents and trade marks.

A particular part of trademark law that has come to the fore in recent years is that of domain names (see, for example, Chapter 4 in [355]). Domain names are one of the most important means of identification for companies and businesses on the Internet. A domain name, which mirrors a company name, is a valuable corporate asset because it facilitates communication with the company's customer base.  To prevent duplication of Second Level Domains, one body must be responsible for the co-ordination of the Domain Name System (DNS). This body is the Internet Assigned Numbers Authority (IANA), which controls both the allocation of IP addresses and of domain names. Constraints of intellectual property law and only recently have efforts been made to restrain the registration and use of legally problematic domain names. There can be conflict between Domain Names and Trade Marks as many domain names are the names of companies, which in turn are often registered trademarks. The use of trademarks within a domain name allows for the easiest means of identification of a company's business for an Internet user. Some Internet browsers allow users to find a company's home page simply by typing in the name of the company or its trademark, and the browser adds the rest of the URL.  A short, easily identifiable domain name that includes a company's trademark ensures that its Web site is easy to find.   However, domain names cannot necessarily be equated with trademarks because of the different purposes they serve. Trademarks are signs used to distinguish goods or services dealt with or provided in the course of trade.  They facilitate identification of the sources of merchandise and are important vehicles for the creation of business goodwill in relation to particular commodities.  Domain names on the other hand serve multiple purposes, one of which is as a postal address.  In general, domain name issues have been dealt with by means of Court cases rather than by new primary legislation of by Government initiatives. 

Australia

The Copyright Act of 1968[356]  was updated by the Copyright Amendment Act (No.1 & 2) 1998.[357]  The amendment was intended to deal with the electronic environment[358].  However, it clearly was insufficient, for subsequently, the Copyright Amendment (Digital Agenda) Act 2000 was passed. This Act came into operation in March 2001. [359]  This has led to the most comprehensive reform to Australian copyright law in thirty years.  It updates the old law to take into account technological developments such as the Internet and cable TV.   The passage of this Act means that Australia is now able to ratify the WTO Copyright Treaty and the WIPO Performances and Phonograms Treaty (WPPT). Australia has not yet signed or ratified either treaty.

The major changes introduced by the Digital Agenda Act are in the areas of:

·        Digital Copyright for Creators

·        Digital Copyright for Libraries, Archives, Galleries and Museums

·        Digital Copyright for Web Publishers

The moral rights of Australian creators are now protected. This follows the Copyright Amendment (Moral Rights) Act 2000 being passed by Parliament in December 2000. The legislation came into effect in the same month. This brings Australia into line with many other countries, and with the Berne Convention, by giving creators the standard rights of paternity and integrity.

In 1997, the Australian Domain Name Administration (ADNA) was established. Its purpose is to assist in the development of policies for the administration of Internet domain names within the <.au> domain.

The Prime Minister's 1997 Statement, Investing for Growth[360], made a commitment to developing guidelines to assist the information industry commercialise intellectual property (IP), developed in relation to Commonwealth Government information technology (IT) contracts.

Canada

In 1997, the Canadian Patents Database was posted on the Canadian Intellectual Property Offices (CIPO) Web site[361], allowing the public to conduct searches of issued and applied-for patents from October 1, 1989, to the present date. In the same year the Canadian Trade-marks Database was posted on Canadian Intellectual Property Offices (CIPO) Web site, allowing the public to conduct searches of all pending and registered trademarks in Canada.

The Canadian Copyright Act was reformed in 1988 and 1997. The 1997 Act was passed so that Canada could ratify the treaties resulting from the 1996 WIPO Diplomatic Conference.  In addition, Canada was then able to ratify the Berne Convention.

For Canada to continue its presence in the digital economy, the Copyright Act may need to be amended in future to ensure that it continues to be meaningful, clear and balanced. In particular, the examination of key digital copyright issues is considered by the Canadian Government to be necessary to fully realise its priority of promoting the dissemination of new and interesting content online, for and by Canadians.

Earlier in 2001, the Department of Canadian Heritage introduced a new fund called the 'Electronic Copyright Fund'[362] and is part of the 'Digital Cultural Content Initiative'. It provides financial support to organisations to improve digital copyright management and simplify copyright clearance mechanisms. The main objective of the Fund is to provide assistance in the development and implementation of an online copyright licensing system. The system has to address the needs of various types of users and uses of the proposed system. It will operate preferably via a single window model where copyrighted works, including works where multiple ownership arrangements exist (such as music and video) can be cleared through a single clearance system; and to facilitate access to and the exploitation of any existing copyrighted work through streamlined copyright clearance mechanisms[363].

Any organisation including associations or collectives, private and non-profit organisations are eligible for funding from the funding process. The funding is supported by a wide range of Canadian partners from the copyright sector such as copyright collectives, agencies and/or producers mandated to administer rights on behalf of rights holders.

European Union

The European Union has long been active in passing legislation on intellectual property.  It believes that anomalies in copyright law between Member States are inhibiting the development of the single market. It believes that a strong intellectual property regime is necessary for its vision of an information society to come about. It also believes that the European information industry can compete more effectively in the world market with clear and unified copyright laws to assist it to sell its products both within the EU and outside.

The EU has passed a number of important copyright-related Directives in recent years.  For example, it passed a Directive on software copyright in 1991[364], which, because of its age, is not considered in detail here.    A 1993 Directive[365] extended the lifetime of copyright from life plus 50 to life plus 70 years.  Again, this is not considered further here.  A 1996 Directive on Rental and Lending[366] is also not considered further because of its age.  The text of all these Directives can be found in [367].

There have been two recent Directives that deserve further consideration.  These are the Database Directive, and the Directive on Copyright and Related Rights.  The former is close to the wording of the proposed change to the Berne Convention that failed to get agreement at WIPO in 1996; the second reflects the agreed changes to the Berne Convention at that same Diplomatic Conference.

The database Directive[368] gives databases  two overlapping sets of protection – copyright, and database right. The Directive introduced a special type of literary work called a ‘database’. This is a collection of independent works, data or other materials that are arranged in a systematic or methodical way and are individually accessible by electronic or other means, each of which may or may not be subject to individual copyright. The definition covers what are generally understood to be databases, such as online databases, abstracting services and real time information, all the way through to a newspaper, a journal, even a library, whether in print, in electronic form.  It also seems to cover the World Wide Web. Database protection applies irrespective of whether there is or is not copyright the constituent parts of the database. Thus, we have two possibilities to start with: database protection plus copyright (if the individual bits are copyright) or database protection alone (if the individual bits are non-copyright – say they are facts or out-of-copyright materials).

The type and level of protection afforded to the database depends on another criterion. If by reason of the selection or arrangement of the database contents there is an intellectual creation, then the database enjoys full copyright protection plus database right.  If, on the other hand, there is nothing creative or intellectual about the way the database contents have been selected or arranged, but there has been significant investment in creating the database, then they get the database right alone.  Finally, in the unlikely event that there is nothing intellectual about the database and if there is no significant investment, no database protection is available. In practice, this leads to a very confusing set of rights for various kinds of databases.  These are discussed in[369]   

The database right is NOT copyright, but  a special sui generis (“unique” or “one of a kind”) right, which only applies to databases and to nothing else.   In developing this novel right, the European Commission chose to ignore the advice of virtually all the experts it consulted.  The experts were unanimous that copyright alone should suffice for the protection of databases.  The new right lasts for 15 years, but can be renewed if there is significant further investment in updating the database. In theory, the database right could last longer than the copyright and could offer protection for an infinite period of time. 

The Directive has changed the law for databases in a number of respects:

•          Databases are explicitly recognised in EU law for the first time.

•          There is a clear statement of the level of intellectual creativity to gain copyright in databases.

•          For the first time the level of exceptions to copyright is made uniform throughout the EU.

•          For the first time there is a possibility of a type of protection lasting for ever – the new database right, if the database keeps being updated

In 2001, after a long and difficult gestation, the Directive on “the harmonisation of certain aspects of copyright and related rights in the information society”[370] was approved by the European Parliament. Despite the great efforts of the rightsholders (led by the music industry, and to a lesser extent the software industry and the publishing industry) on the one hand, and consumers and library groups on the other, the final text was little changed from the common position adopted by the European Commission nine months earlier. 

Overall, it strengthens the rights of copyright owners, but not by as much as they were hoping for.  The new communication to the public right clearly brings distribution of copyright materials over the Internet into the range of restricted acts.   The revised reproduction right helps clarify its meaning in an electronic environment.   The new distribution right really only confirms common practice in the EU already.   The new protection for technical systems such as Digital Rights Management (DRM) or Electronic Copyright Management Systems (ECMS) that act as anti-copy­ing devices and for rights management information appears at first sight to be important.  For the first time, deliberately by-passing, removing or inactivating them for the purpose of infringement (or concealing infringement) becomes a criminal offence.  On the other hand, the protection for technical devices is, in effect, largely neutralised by the requirement that such devices must permit bona fide users to enjoy the exceptions to copyright they are entitled to.  This implies a level of “intelligence” for such devices that is surely beyond them at present.  How is an ECMS to know if this copying is to be done for the purposes of reporting current events, or for piracy?  However, the Directive requires that if the technical device cannot let bona fide users enjoy their exceptions, then the Member State can introduce rules to disable the technical device.  It’s really not clear to me that the copyright owners are much further forward than they were before the Directive. 

The redefined reproduction right gives copyright owners the right to authorise or prohibit direct or indirect, temporary or permanent reproduction by any means and in any form, in whole or in part, of their work. It appears to make browsing something on a screen a restricted act. A new and important communication right gives copyright owners the right to authorise or prohibit communication to the public by any means (including networks) of their works. The Directive also introduces new criminal offences against the manufacture, distribution or use of devices to circumvent technological measures to protect copyright; against the removal or alteration of any electronic rights management information; or the distribution or communication of copyright material from which electronic rights management information has been removed to induce or facilitate copyright infringement.

The proposed exceptions include a compulsory exception (in other words, all Member States must enforce this) and a long list of optional exceptions.  The compulsory exception is to the reproduction right and applies where reproduction is caused by the technology and has no separate economic significance (for example, copying into a computer’s memory for the purpose of display and the display of the material on the screen).

The major surprise of this Directive is the long list of possible further exceptions.  This means that the Member States are invited to consider including them in their own interpretation of the Directive.  This is contrary to the purpose of the Directive, which is to get a level playing field for copyright law throughout the EU.  These optional exceptions  include reproduction by individuals for private non-commercial use, reproduction made by publicly accessible libraries, museums and other similar establishments, use for the sole purpose of  “illustration” for teaching or scientific research, use for visually or hearing impaired people, reporting current events and for public security.

Unusually, Member States only have 18 months to put this Directive into effect, rather than the two to three years that is normal.   This is to ensure that in the fast-moving area of technological changes, the law is reasonably up to date.

Article 6 protects DRM, but provides for the important exception (Article 6(4)1) that, if the rightsholders themselves to do not make arrangements for it, then Governments shall impose laws permitting people to take advantage of the statutory exceptions of copyright.  It is perhaps surprising that this exception survived the intense lobbying of the rightsholders.

Does the Directive achieve its objectives?  The answer has to be “no”.  We are no closer to achieving harmonisation of EU copyright law than before.  Where the law has been strengthened in favour of rightsholders, there is an increased risk that users will simply ignore or flout the new laws.  The long list of possible exceptions invites further lobbying and controversy.   Too many of the Articles are ambiguous. All told it is a typical compromise, that ends up satisfying no stakeholder.  There is no question that the Directive shifts the law quite significantly in favour of rights holders and against users.

The other major Europe-wide development in IPR has been the work towards a Community Patent.  At present, one can either obtain a patent by means of a national Patent Office, or apply for a European patent at the European Patent Office, and designate which of the contracting states one wishes to have patent protection in. The proposed Community Patent Convention would provide for a single patent-issuing authority covering the whole of the European Union.  Applicants would no longer have a choice of countries to cover – they would automatically have cover in the whole of the EU.  The idea of a single Community Patent (which would be the first genuine international law in IPR) has been around for 30 years, but recent announcements indicate that it is now likely to be implemented in the next few years.

The EU has been responsible for funding the successful and well-respected IPR-Helpdesk for the past two years.  This is funded by DGXIII-D[371].  The funding is now coming to an end, and the future of the Helpdesk, and in particular, its useful IP-Wire newsletter[372], is uncertain, though it does appear that it will continue in some form from 2002 onwards.  The newsletter and the Helpdesk were created for use by SMEs, but it appears it heaviest use was by experienced patent professionals.

EU Member States

The principal activities of EU Member States have been to implement the various EU Directives in copyright.  In addition, many Patent Offices have undertaken initiatives to ensure that patent information is readily available to SMEs and individuals.  Some countries have introduced, or are considering the introduction of “petty patent” systems.  These provide a cheap, but not particularly effective method of protecting minor inventions.

Singapore

Singapore has proposed new changes to the current Copyright Act. The Copyright Amendments Bill 1999[373] was given Presidential assent in August 1999. This represented part of Singapore’s ongoing efforts to strengthen its IPR regime. The amendments introduced seek to update Singapore’s copyright laws to keep pace with developments in the digital medium and with new ways of exploiting works on the Internet.  The amendments to the Copyright Act:

·        address various issues arising from the use of copyright material in a digital environment, such as:

·        clarify that copyright protection is applicable also to electronic and temporary copying;

·        clarify the liability of network service providers; and

·        extend certain existing concepts in the Copyright Act to make them applicable in the digital environment;

·        give greater rights to performers in relation to performances under the Act; and

·        improve the position of rights holders in relation to their re-broadcasting rights and re-transmission rights.

The Government claimed that it would continue to monitor technological developments to ensure that copyright laws continue to be responsive to the changing needs arising from evolving technologies. These amendments aim to ensure that intellectual property laws in Singapore are compatible with the principles in the WIPO Copyright Treaty and Performances and Phonograms Treaty.

The Act also aimed to:

·        Improve copyright protection

·        Enforce measure for copyright owners

·        Promote the use of the Internet for business

·        Provide legal certainty in the usage of the Internet

·        Clarify the legal rights and obligations of copyright owners

Singapore recently acceded to the Berne Convention. Works first published in Singapore will be entitled to copyright protection in more then 100 countries, which are parties to the Berne Convention; this also includes works created by citizens and residents of Singapore.

On the 15th February 2001 the Patents (Amendment) Rules 2001[374] came into effect.

On 12th January 2001, The Intellectual Property Office of Singapore Bill (Bill No. 1/2001) was introduced in Parliament by the Minister for Law. This Bill seeks to incorporate the current Government department, the Intellectual Property Office (IPO) of Singapore, into a statutory board of the same name ("IPOS"). The Ministry of Law on 9 November 2000 had announced that IPOS would be converted into a Statutory Board. Like any other statutory board, IPOS will be capable of owning property and enter into contracts on its own behalf.

Under the Bill, the proposed statutory board undertakes all the current functions of the existing Government Department and some other new functions, principally, administer the systems of protection of intellectual property in Singapore (particularly the registration of trade marks, patents and designs) and provide administrative support to the Copyright Tribunal. Although the Copyright Tribunal will remain separate from the statutory board, but IPOS will provide administrative support for the Tribunal to perform its functions. The board will be responsible for maintenance and dissemination of intellectual property information and documentation. Also will be required to represent the Government internationally on intellectual property matters and advise the Government on intellectual property policies.

Singapore introduced a new piece of legislation called the Geographical Indications Act [375]1998, which came into force on 15 January 1999. Geographical Indications refer to the indications that identify a good(s) as originating in a place where a given quality, reputation or other characteristic of the good(s) is essentially attributable to its geographical origin.  Examples of geographical indications include Champagne, Bordeaux and Chianti. Like copyright, the owner of a geographical indication enjoys automatic protection for the geographical indication.

In Singapore, protection is limited to geographical indications of a country or territory, which is a member of the World Trade Organisation (WTO), a party to the Paris Convention for the Protection of Industrial Property, or one designated in the Government Gazette by the Minister as a qualifying country.  Prior to the enactment of this Act, geographical indications were protected under the Consumer Protection Act. They could also be registered as trademarks under the Trade Marks Act The Act seeks to prevent the use of misleading geographical indications;  the registration of misleading geographical indications as trademarks; and  the use geographical indications which would constitute an act of unfair competition within the meaning of the Paris Convention.

Additional protection is provided for wines and spirits under the Act in accordance with TRIPS Agreement. The Act prohibits the use of a geographical indication for wines and spirits not originating from the place indicated by the geographical indication even if the true origin of the goods is indicated.

 The Registered Designs Act (Commencement) Notification 2000 came into operation in November 2000. The new Registry of Designs  accepted applications for the registration of designs from November 2000.  Design owners who wished to protect their new designs in Singapore as well as in the United Kingdom after November 2000 had to lodge separate applications in both these jurisdictions.  Designs that had been registered in the United Kingdom before the 13 November 2000 continue to enjoy 25 years protection, if they are renewed in Singapore when their renewal in the United Kingdom is due. Applications lodged at the United Kingdom Designs Registry before the 13 November 2000, will upon their registration in United Kingdom also be protected in Singapore.

South Africa

In 1999 the Intellectual Property Law Amendments Act, which sought to revise and update some laws dealing with Intellectual Property Rights in South Africa, was passed.  However, it addressed only a few minor issues to do with the liability of Internet Service Providers, and was not an all-encompassing piece of new legislation. 

Issues have been raised about the Business Names Act 1960, the Trades Masters Act 1993 and the Copyright Act of 1978, which do not accommodate the facilities offered by the e-commerce industry.

At present, South African IPR Law is not equipped to accommodate the Internet or e-commerce.

In October 1998, South Africa was the host to a regional consultation of the WIPO. This consultation involved several other African countries and focused upon domain name issues, and the concerns of developing countries in the areas of e-commerce.

Sweden

On November 25, 1998 Sweden passed legislation amending its intellectual property laws to give judges authority in civil cases to order unannounced searches of a defendant's property to preserve evidence of infringements of intellectual property rights.  The legislation, intended to comply with the requirements of TRIPS Agreement), went into effect on January 1, 1999.[376]

USA

On 5 June 1998, the US Department of Commerce released a White Paper titled Management of Internet Names and Addresses.[377]

The US has accomplished little in legislation relating to IPR in recent years, despite efforts of many in Congress to introduce new Bills in the field. An initiative introduced late in the 106th Congress was a bill (H.R. 5364) designed to improve the Patent and Trademark Office's handling of patent applications for "business method" inventions[378]. Another Bill passed was a "tech transfer" bill (Pub. L. No. 106-404, H.R. 209) updating the 20-year-old statutory mechanism for licensing of government-owned inventions.  A "work for hire" measure (Pub. L. No. 106-379, H.R. 5107)[379] undid a controversial Copyright Act amendment enacted in 1999. The 1999 amendment revised the list of works deemed to be works made for hire at Section 101(2) of the Copyright Act by adding sound recordings to the list.

The United States Patent and Trademark Office (USPTO) offers a Web site called 'TEAS' - the Trademark Electronic Application System[380]. The site has been effective since July 2001. The TEAS system allows the user to fill out a form and check it for completeness over the Internet. Using e-TEAS the user can then submit the form directly to the USPTO over the Internet, making an official filing on-line. Alternatively the user has the option to use the facility called 'PrinTEAS' thus enabling the user to print out the completed form for mailing to the USPTO. It gives the users the option of E-signature or hand written. Although running the system still has its limitations for usage, the specifications of a system are limited to the Netscape Browser or Internet Explorer.

The USPTO Trademark Law Treaty Implementation Act of 1998[381] became effective in October 1999. The main objective of the Act is to lessen the requirements for obtaining a filing date. An application now only needs to include the name of the applicant, the name and corresponding address, a clear drawing of the trademark, including a list of the goods and services and a filing fee for a least one class of the goods or services at the time of filing the application and then provide further information when required. Whereas prior to the introduction of this Act, an applicant had to include a stated basis for filing, dates of use and specimens for use-based applications. The applicant also had to provide a genuine statement of intent for the use of the mark for trade. These are still required, but not at the time of the application, prior to the Act if any of these requirements where omitted, the filing would be refused. In addition to this, the verified documents filed with the Trademark Office need not be signed by an officer of the applicant company, but can now be signed by an person who is properly authorised by the applicant, a person with legal authority, or a person with the knowledge of the facts and authority to act on behalf of the applicant

In October 1998, 'The Digital Millennium Copyright Act' (DMCA)[382] was signed into law by President Clinton. The legislation implements the two 1996 WIPO treaties.  The DMCA also addresses a number of other significant copyright-related issues, such as limiting Internet Service Providers from copyright infringement liability for simply transmitting information over the Internet. It also states explicitly that nothing shall affect the rights, remedies, limitations or defences to copyright infringement, including fair use.  The DMCA has recently been in the news because of the use of one of its provisions, making it an offence to by-pass or de-activate ECMS, to arrest a visiting academic who was promoting  just such a means.  It is possible that in the future, this particular part of the DMCA will be struck down for restricting the right to free speech.

Attempts to reach agreement between publishers and users on what is, or is not “fair use” in an electronic environment have failed.  As a result, there is continuing tension between copyright owners and users in the USA.

There have been a number of key cases regarding copyright in the USA, some of which have reached the Supreme Court (e.g., Tasini v New York Times; Feist v Rural).  The implications of these cases is discussed in[383].

Conclusions

The dominance of international bodies such as WTO and WIPO, and the EU in developing copyright law means that there are virtually no interesting initiatives in copyright emanating from individual Governments, and therefore no particular best practice to follow.

One area where there IS considerable divergence in approach is the question of patenting of software[384].  Most patent laws do not permit the patenting of copyrightable matter.  Legislators world-wide intended that the patent system and the copyright system should be kept mutually exclusive, and yet there has been a dramatic growth in the numbers of patents in the software field, led by the USA, in recent years.

In recent years, then, the approach of the USA has moved well away from that of the UK and Europe. The UK and Europe still in principle do not permit the patenting of software unless there is a clear improved  “technical effect” or “technical contribution” e.g., on a manufacturing process.  However, the USA patents are permitted for software irrespective of such effects, as long as they are new and involve an inventive step.  Therefore, in theory, in the UK and Europe you cannot get a patent on software merely for the fact that it runs.  If software is applied to a process and as a result has an appreciable, new and desirable effect, then it is patentable.  In the USA, you can get a patent if the software is new, and not obvious from existing knowledge.

There have been many high profile patent cases in the USA where after years of laying low, a patentee will demand royalties for a well established method of doing business, such as Amazon.com’s  “One Click” system.   The usual reaction has been one of outrage, and concern that software patents could inhibit the growth of e-commerce[385]. Interestingly, there has been little comment on the philosophical basis for extending patenting to software, but much on the fact that the USPTO has been granting patents that should never have been granted, as the invention was not novel.

In contrast, in the UK and Europe, the debate has been at a far more philosophical level, namely, should patents be allowed at all for software and business methods? The UK Patent Office recently (2001) undertook a consultation exercise and study on whether UK patents should be granted for computer software and for new ways of doing business. For computer software it reaffirmed the principle that patents are for technological inventions and that software should not be patentable where there is no technological innovation, and technological innovations should not cease to be patentable merely because the innovation lies in software. On whether so-called "business method" patents should be allowed in the UK, it decided that it was opposed to the concept. The UK Government is now committed to trying to persuade its European partners to take the same view.  Thus, there is a gap in approach between UK (and maybe the rest of the EU) and USA looming.  The issues raised by this problem are discussed in.[386].  One of the authors, Durrell, goes so far as to suggest that a completely new form of IPR is needed for software.

The contrast in approaches on either side of the Atlantic is probably temporary.  Pressures, such as those from TRIPS, will surely lead to harmonisation of practice sooner or later.  The world-wide trend is clearly to permit software within the ambit of patentable subject matter, but to ensure that the standards of examination for novelty and obviousness are maintained at a far higher level than currently employed at the USPTO.  Indeed, there is a general perception, as with copyright, that the strength of protection should increase so as to ensure a strong software industry locally.

Other than the Canadian initiative to assist the development of copyright-protecting devices and awareness of copyright generally,  and the EU’s efforts to promote the role of IPR to SMEs through research and the use of newsletters and help desks, we found no initiatives that particularly excited us in this subject area.