Designing a Global Intellectual Property System Responsive to Change: The WTO, WIPO, and Beyond

" Designing a Global Intellectual Property System Responsive to Change: The WTO, WIPO, and Beyond ," 46 Hous. L. Rev. 1187 (2009) (with Graeme B. Dinwoodie) Abstract In recent years, it has become clear that the TRIPS regime is in trouble. Although lawmaking in the World Trade Organization (WTO) has essentially stalled, there is a continuing need to recalibrate the rules applicable to knowledge production. In theory, the problems facing WTO members could be resolved through new lawmaking within that institution. For a variety of reasons, however, this has not materialized. The WTO’s adjudicatory system has compensated somewhat for the lack of activity in the Ministerial Conference and the General Council. But for a number of reasons, it is not a substitute for a well-functioning “legislative body.” Indeed, some of the activity in this field has shifted back from the WTO to the World Intellectual Property Organisation (WIPO). Although this regulatory competition might currently be leading to a suboptimal global regime, the move to WIPO is intriguing. It suggests an institutional design that could make the international intellectual property system more responsive to changing needs. Indeed, the TRIPS Agreement contemplates a formal tie between the WTO and WIPO. Unfortunately, however, the nature of the lawmaking relationship between these two organizations has yet to be fully elucidated. TRIPS incorporates provisions of two WIPO instruments (the Paris and Berne Conventions), and references others. Still, it is not evident whether (or how) the WTO should be taking account of WIPO’s view of these commitments. Nor is it clear how (or when) new developments within these conventions should affect WTO obligations. This essay takes up the institutional design question of how to create an intellectual property system responsive to changing circumstances by examining how the WTO can best make use of WIPO’s experience and expertise in intellectual property matters. After considering the intellectual property cases decided to date by the WTO dispute settlement body and determining the ways in which they have relied on the text and negotiating histories of, and other materials relevant to, WIPO conventions to elucidate TRIPS obligations, we suggest some revisions to interpretive approaches pursued thus far by dispute settlement panels. We point out methodologies that would leaven and cabin the trade perspective, and thus allow the WTO to capitalize on WIPO’s experience and on WIPO developments that cope with the dynamic nature of intellectual property and the changing landscape of knowledge production. Our analysis is also meant for broader application, for developing a design that permits productive input from all the international institutions that have interests touching on intellectual property norm development.

"Designing a Global Intellectual Property System Responsive to Change: The WTO, WIPO, and Beyond," 46 *Hous. L. Rev.* 1187 (2009) (with Graeme B. Dinwoodie)

									Abstract

In recent years, it has become clear that the TRIPS regime is in trouble. Although lawmaking in the World Trade Organization (WTO) has essentially stalled, there is a continuing need to recalibrate the rules applicable to knowledge production. In theory, the problems facing WTO members could be resolved through new lawmaking within that institution. For a variety of reasons, however, this has not materialized. The WTO’s adjudicatory system has compensated somewhat for the lack of activity in the Ministerial Conference and the General Council. But for a number of reasons, it is not a substitute for a well-functioning “legislative body.” Indeed, some of the activity in this field has shifted back from the WTO to the World Intellectual Property Organisation (WIPO). Although this regulatory competition might currently be leading to a suboptimal global regime, the move to WIPO is intriguing. It suggests an institutional design that could make the international intellectual property system more responsive to changing needs. Indeed, the TRIPS Agreement contemplates a formal tie between the WTO and WIPO. Unfortunately, however, the nature of the lawmaking relationship between these two organizations has yet to be fully elucidated. TRIPS incorporates provisions of two WIPO instruments (the Paris and Berne Conventions), and references others. Still, it is not evident whether (or how) the WTO should be taking account of WIPO’s view of these commitments. Nor is it clear how (or when) new developments within these conventions should affect WTO obligations. This essay takes up the institutional design question of how to create an intellectual property system responsive to changing circumstances by examining how the WTO can best make use of WIPO’s experience and expertise in intellectual property matters. After considering the intellectual property cases decided to date by the WTO dispute settlement body and determining the ways in which they have relied on the text and negotiating histories of, and other materials relevant to, WIPO conventions to elucidate TRIPS obligations, we suggest some revisions to interpretive approaches pursued thus far by dispute settlement panels. We point out methodologies that would leaven and cabin the trade perspective, and thus allow the WTO to capitalize on WIPO’s experience and on WIPO developments that cope with the dynamic nature of intellectual property and the changing landscape of knowledge production. Our analysis is also meant for broader application, for developing a design that permits productive input from all the international institutions that have interests touching on intellectual property norm development.

Rochelle C. Dreyfuss & Graeme B. Dinwoodie, Designing a Global Intellectual Property System Responsive to Change: The WTO, WIPO, and Beyond, 46 Hous. L. Rev. 1187 (2009)

Rochelle C. Dreyfuss
Graeme B. Dinwoodie

there is a continuing need to recalibrate the rules applicable to knowledge production. For developing countries, entry into the WTO was a compromise. When intellectual property lawmaking was centered in the World Intellectual Property Organization (WIPO), these nations resisted attempts to increase the level of protection. That changed, however, with the inclusion of intellectual property in negotiations over trade; in return for access to markets in the developed world, developing countries were required to enact and enforce new intellectual property laws. While the TRIPS Agreement tried to ease their conversion to greater protection, the transitional provisions it included proved to be largely illusory: the time periods for compliance were too short; the promises of technology transfer and technical assistance, inadequately realized. 4 Furthermore, the Agreement paid little attention to the problem of providing access to the training and educational materials that would allow these countries to advance to the intellectual frontier. 5 Paradoxically, for some WTO, WIPO, AND BEYOND 1189 developing countries, the WTO regime can also be insufficiently protective: TRIPS rights are structured for the types of knowledge goods generated in the North, but do not cover the traditional knowledge, folklore, and natural endowments that constitute much of the informational wealth of the South. To be sure, the Doha Declaration and subsequent actions dealt with a few of the concerns of developing countries, 6 but unless more radical accommodations are found, many WTO members may languish in a social and economic backwater, paying high prices for information products without the ability to fully exploit their own creative capacities. In developed nations, the problems are not very different, for there as well TRIPS now offers both too much and too little protection. The Agreement was, after all, crafted for a particular era-an era that largely predated Internet commerce in trademarked goods, distribution of digitized copyrighted materials, and the informatics revolution within the patent industries. 8 The explosion in global marketing puts pressure on the territoriality principle embedded in TRIPS, 9 arguably leading to underprotection, particularly of works distributed electronically. At the same time, however, the emergence of new intellectual opportunities and enterprises alters the economics of information production. The TRIPS Agreement's strong commitment to a particular vision of proprietary rights-and, on the patents side, to technological neutrality-makes it difficult to revise the law to deal with such matters as the thickets of rights created in the software and biotechnological sectors, open source innovation, and new opportunities for serial and collaborative production. reasons, it is not a substitute for a well-functioning "legislative body." It cannot replicate the top-down approach of an international agreement on substantive norms because, under the Understanding for Dispute Settlement (DSU), 16 the decisions by the Dispute Resolution Board (DSB) may not "diminish the rights and obligations provided in the covered agreements." 17 And the institutional character of the DSB does not encourage disregard of this formal limit on judicial activism. 18 These constraints, both formal and institutional, appear to allow the DSB to complement a bottom-up approach because the TRIPS Agreement ostensibly leaves members with substantial room to maneuver. 19 Members can, for example, increase the level of domestic protection. 20 But as we have explained in other writings, the DSB has interpreted TRIPS flexibilities so narrowly that member states cannot otherwise adapt their laws to new circumstances. 21 open questions on which of the other organs of the WTO are failing to act); Claus 503-18 (2000) (rejecting an activist interpretive philosophy in resolving WTO disputes). Whether this constraint holds in the long term might depend in part on whether a sufficient number of intellectual property disputes reach the Appellate Body, whose legally binding reports more closely resemble judicial decisions than the reports of dispute settlement panels (whose reports have a more political or diplomatic resonance). There are other confounding factors. Countries are showing signs of giving up on the WTO. Some have begun to use bilateral agreements to enhance the level of protection. 22 Others are engaging in forum shopping at the multilateral level ("regime shifting"). 23 Claims to the knowledge embedded in natural resources are moving to negotiations over the Convention on Biological Diversity; 24 some intellectual property issues have been restructured as human rights claims; 25 and a new criminal enforcement regime is under contemplation. As Peter Yu suggests in his contribution to this volume, what is emerging is an "international IP regime complex," consisting of institutions such as the World Health Organization; the Secretariat of the Convention on Biological Diversity; the Food and Agriculture Organization; the United Nations Educational, Scientific and Cultural Organization (UNESCO); and the United Nations Conference on Trade and Development (UNCTAD). 27 In part, the focus has even shifted back, from the WTO to WIPO. Although, in theory, regulatory competition could enrich international innovation policy, the early indication is that asymmetries in bargaining power, coupled with the overlap in lawmaking authority, are leading to a suboptimal global regime: thickets of rights, 28 conflicting demands, 29 disputes that However, the move to WIPO is intriguing, for it suggests an institutional design that could make the international intellectual property system more responsive to changing needs. WIPO and its predecessor, the United International Bureaux for the Protection of Intellectual Property (BIRPI), were established to consolidate the international intellectual property regime and WIPO agreed that, as part of its mission, it would consider the impact of intellectual property protection on the developing world. 32 Although WIPO's early attempts at resolving the problems of the South largely faltered, it recently renewed its commitment to a "Development Agenda" and has even taken up questions about overprotection in the North. 33 WIPO has a governance structure that potentially permits more diverse input than the WTO and greater flexibility in voting. It has restructured its norm development processes to enable it to respond expeditiously to new issues through the adoption of soft indications and trademarks); Mitchell Smith, The Relationship Between TRIPs and the CBD: A Way Forward? 3-6 (May 11, 2009) (unpublished manuscript, on file with Houston Law Review) (discussing conflicts between TRIPS and the Convention on Biological Diversity). See, e.g., Anheuser-Busch Inc. v. Budejovicky Budvar N.P., [1984] FSR 413 (CA) (U.K.) (one national component of a multi-territorial dispute between Anheuser-Busch, an American brewer, and a Czech brewery dating back to the early 1900s 34 As a result, it is also not suffering as badly from the lawmaking problems confounding the WTO. Post-TRIPS, it has held conferences and issued influential reports on emerging issues; 35 it has also successfully concluded negotiations over several new intellectual property instruments. Significantly, the TRIPS Agreement contemplates a formal tie with WIPO. The two organizations have entered into an agreement "to establish a mutually supportive relationship" 37 and enjoy a host of informal connections. 38 In theory, then, WIPO could serve as a vehicle for keeping WTO law abreast of the evolving demands of both producers and consumers of innovation, as well as the varied needs of the WTO's membership. With WIPO's greater receptivity to emerging issues and the WTO's capacity to enforce compliance, some of the impasses caused by regime shifting would hopefully abate, along with the other problems associated with overlapping regulatory authority. Greater input from WIPO would be beneficial for another reason as well. Because the focus of the WTO is trade, the TRIPS Agreement tends to view intellectual property very much as a commodity. Lost in the drafting process was the sense that intellectual property embodies cultural values, that it WTO, WIPO, AND BEYOND 1195 encompasses the building blocks of education and future technological development, or that it protects goods essential to social welfare. 39 Although WIPO's stated mission is to "promote the protection of intellectual property throughout the world" 40 and its contributions to the WTO have tended to reflect that proprotection ethos, 41 its institutional structure-which requires member states to enter into intellectual property agreements without the possibility of side payments in the form of concessions on unrelated matters-has always forced it to strike a balance between access and proprietary interests. 42 Furthermore, in most intellectual property areas, its standards lend themselves to greater flexibility than do the more comprehensive requirements of TRIPS. Indeed, WIPO has begun a process of examining just how flexible these instruments are. In short, the organization, along with the agreements it administers, brings to the table an intellectual property sensibility that is currently lacking in the WTO. Unfortunately, however, the nature of the lawmaking relationship between these two organizations has yet to be fully elucidated. There are other agreements within the WTO framework that rely explicitly on the expertise of non-WTO organizations: they reference standards enunciated by international bodies with relevant expertise, 45 or establish joint oversight in areas where there are potential conflicts. 46 In contrast, the WTO's relationship with WIPO is opaque. TRIPS incorporates provisions of two WIPO instruments (the Paris and Berne Conventions), 48 and references others. 49 Still, it is not evident whether (or how) the WTO should be taking account of WIPO's view of these commitments. 50 Nor is it clear how (or when) new developments within these conventions should affect WTO obligations. 51 The Agreement permits the TRIPS Council to "consult with and seek information from any source it deems appropriate" to carry out its obligations, 52 but at best WIPO enjoys observer status at meetings. 53 Furthermore, the current WTO/WIPO Agreement is 47. This might not be surprising. On the eve of the conclusion of TRIPS, scholars and policymakers seriously debated whether the new international intellectual property system would develop in the WTO or WIPO. WTO, WIPO, AND BEYOND 1197 limited to legal and technical assistance-to providing the WTO with copies and translations of domestic legislation and to assisting WTO members in meeting their obligations. This Article takes up the institutional design question of how to create an intellectual property system responsive to changing circumstances by examining how the WTO can best make use of WIPO's experience and expertise in intellectual property matters. After considering the intellectual property cases decided to date by the WTO dispute settlement body and determining the ways in which they have relied on the text and negotiating histories of, and other materials relevant to, WIPO conventions to elucidate TRIPS obligations, we suggest some revisions to interpretive approaches pursued thus far by dispute settlement panels. We point out methodologies that would leaven and cabin the trade perspective, and thus allow the WTO to capitalize on WIPO's experience and on WIPO developments that cope with the dynamic nature of intellectual property and the changing landscape of knowledge production. Our analysis is also meant for broader application, for developing a design that permits productive input from all the international institutions that have interests touching on intellectual property norm development. In suggesting that the WTO adopt a broader perspective, we are cognizant of the well-honed argument that the WTO should confine its attention to trade law and that to incorporate principles developed outside of the WTO would sacrifice goals of legitimacy, uniformity, and predictability. 56 While we do not 54. WTO/WIPO Agreement, supra note 37, arts. 2, 4. In the Doha Round, the TRIPS Council was asked to explore the relationship between the TRIPS Agreement and the Convention on Biological Diversity (CBD), but there is no formal agreement between the Council and the CBD Secretariat to date. advocate that the WTO Agreement become a world constitution, we nonetheless believe that there are consequences to the decision to link trade to other interests. This is particularly true when the linkage is to an area as dynamic as intellectual property, and that has such a strong potential impact on economic welfare. As lawmaking continues to shift from sovereigns acting alone to states acting in concert, the international organizations they form must increasingly take on the tasks once left to sovereigns, including the duty of finding ways to accommodate each others' needs and to maximize joint interests. WTO, WIPO, AND BEYOND 1199 interpretive sources are appropriate. TRIPS refers to "customary rules of interpretation of public international law" 59 -generally taken to mean the Vienna Convention on the Law of Treaties. 60 But, formally, the Vienna Convention discusses prior and subsequent treaties; it does not deal with agreements incorporated by reference. 61 The following Part explores the problems created by incorporation and how they have been resolved to date. In theory, the incorporation of WIPO measures into the TRIPS Agreement should be straightforward and lead to a successful amalgamation of intellectual property values with trade objectives. Articles 2.1 and 9.1 of the TRIPS Agreement state that WTO members must comply with the principal articles of the Paris and Berne Conventions. At the same time, TRIPS makes clear how far incorporation extends; Article 9.1 disincorporates Berne Article 6bis (which addresses moral rights), and Article 2.2 states that there is nothing in the substantive provisions of the TRIPS Agreement that derogates from the obligations incurred under the Paris, Berne, or Rome Conventions, or the treaty on integrated circuits. 63 illustrates how the incorporation strategy can work to preserve the balances struck by the WIPO conventions. In that case, the European Communities (EC) challenged a departed from the interpretations suggested by these preeminent commentaries. See Panel Report, United States-Section 110 (5) -as well as the Washington Revision Conference of 1911. It also consulted a well-known treatise on the Paris Convention. 65 In the end, it concluded that "the drafters of the Paris Convention did not intend" the result propounded by the EC, either when the Convention was first concluded or in its subsequent revisions. In other words, even under Paris and TRIPS obligations, states remain substantially free to regulate the registration of trademarks under national law, so long as there is no interference with their form. The opinion is at least as significant for what the Appellate Body did not do as for what it did. The EC had criticized the Panel that initially resolved the dispute for resorting directly to the negotiation history of the Paris Convention instead of relying first on the rules of the Vienna Convention, 68 which, per Article 32, would have required an ambiguity before resort could be made to background materials. 69 Had the Appellate Body adopted WTO, WIPO, AND BEYOND 1201 this circuitous approach, the meaning of the TRIPS Agreement would have been determined in the first instance through a trade lens: if a term appeared unambiguous when seen from that perspective, that trade-oriented meaning would have automatically prevailed, regardless of its impact on creative production. 70 By instead allowing decisionmakers to consider the Paris Convention and its associated materials directly, this approach ensured that the sensibilities of intellectual property were brought into play. Since intellectual property is aimed at striking a balance between the demands of right holders and other national interests, the Appellate Body's direct approach leaves WTO members with greater latitude to tailor their law to their domestic intellectual agendas (so long, of course, as their policies are consistent with the explicit provisions of TRIPS and the trade objectives of the WTO agreements). The simplicity of this direct approach can, however, be deceptive. For one, there are situations in which TRIPS sets out a rule that, while attempting to incorporate the WIPO instruments, appears inconsistent with them. 72 But even here, DSB adjudicators have often found techniques that valorize intellectual property values. To stay with the trademark example, Havana Club identified several potential discontinuities between TRIPS and the Paris Convention. 73 First, because all provisions of the TRIPS Agreement -including the incorporated Articles 1-21 of the Berne Convention (1971) -entered into force at the same point in time."). 70. Moreover, most of the panelists serving on dispute panels and on the Appellate Body are trained as experts in trade law, not intellectual property law. See WTO, Appellate Body Members, http://www.wto.org/english/tratop_e/dispu_e/ab_members_ bio_e.htm (last visited Sept. 25, 2009). See, e.g., Appellate Body Report, India-Patent Protection for Pharmaceutical and Agricultural Chemical Products, WT/DS50/AB/R (Dec. 19, 1997) [hereinafter India-Pharmaceuticals]. The Appellate Body Report in India-Pharmaceuticals, which concerned the transitional provisions of the TRIPS Agreement, leaves states with maximal flexibility. The Appellate Body rejected claims that India's obligations should be augmented by the expectations of other WTO members. Id. ¶ ¶ 45-48. Furthermore, it held that "[m]embers . . . are free to determine how best to meet their obligations under the TRIPS Agreement within the context of their own legal systems." Id. ¶ 59. The China-Enforcement Panel also recognized China's substantial discretion to order border measures that balanced right holders' interests and public needs. See China-Enforcement, supra note 65, ¶ ¶ 7.240-.374, 7.481, 7.602. We deal separately below with cases where TRIPS clearly and intentionally imposes greater obligations on member states. TRIPS was a Berne-plus and Paris-plus convention, so these are to be expected. See infra text accompanying notes 113-127. A similar impulse to avoid exploiting textual ambiguities to insert a wedge between the trade and intellectual property conventions can be seen in EC-GI, supra note A second question in Havana Club-on ownershippresented something of the opposite question. The EC contended that the TRIPS Agreement's references to the "undertakings" of trademark holders set out rules on ownership, even though the Paris Convention did not appear to cover the matter. 77 Clearly, the TRIPS Agreement does contain instances where it expressly augments or elaborates on the obligations of the earlier WIPO conventions. Here, in contrast, the EC's contention would have required the Panel to imply an enhancement that was not clear on the face of TRIPS. This time, notwithstanding that the claim appeared to rest on the meaning of TRIPS alone, the Panel looked first at the Paris Convention, asking whether it addressed 29. In that case, the United States alleged that the EC's regime for the protection of geographical indications violated a number of national treatment obligations, including, inter alia, Article 3 of TRIPS and Article 2(1) of the Paris Convention (incorporated by Article 2.1 of TRIPS). However, Article 3 of TRIPS is textually slightly different than Article 2(1) of Paris: Article 3 of TRIPS parrots trade-treaty formulations and talks of offering "treatment no less favourable" to foreign nationals, TRIPS, supra note 1, art. 3.1, while the Paris Convention (like the Berne Convention) refers to ensuring for foreign nationals "the advantages that . . . laws now grant, or may hereafter grant" to domestic producers. Paris Convention, supra note 58, art. 2(1). Although the Panel set out to treat these provisions separately, it declined to reach a conclusion on the Paris Convention claim because "further findings on this claim would not provide any additional contribution to a positive solution to this dispute. Id. ¶ 338. Of course, it is not implausible that certain parts of the Paris and Berne Conventions were not made subject to TRIPS enforcement mechanisms. For example, this was true of Article 6bis of the Berne Convention. And the statement in TRIPS that the obligations set out in the new agreement not derogate from the WIPO conventions presupposes the possibility that a WIPO obligation may continue post-TRIPS even though not covered by TRIPS. But when the member states wished to exclude a WIPO treaty obligation from the WTO enforcement mechanism, they did so expressly. See TRIPS, supra note 1, art. 9. As with our interpretation of Article 6quinquies, here, too, we recall that Article 6(1) of the Paris Convention (1967), which has become a WTO provision by incorporation through Article 2.1 of the TRIPS Agreement, reserves to each country of the Paris Union the right to determine the "conditions" for filing and registration of trademarks in its domestic legislation. 83 As yet, there are no Appellate Body decisions on the relationship between the TRIPS Agreement and the Berne Convention, which imposes many more substantive requirements than does the Paris Convention. However, the Panel Report in the US-110 (5) case suggests that here too, efforts will be made to interpret TRIPS in a manner that preserves the flexibilities inherent in the antecedent intellectual property conventions. The issue in that case was whether the United States, which permitted certain establishments to make unauthorized usages of musical broadcasts, had violated its obligations under Articles Using the negotiation history of the TRIPS Agreementincluding a document the Negotiating Group asked the International Bureau of WIPO to prepare in order "to facilitate an understanding of the existence, scope and form of generally internationally accepted and applied standards/norms for the protection of intellectual property" 87 -the Panel reasoned that absent an indication in the TRIPS Agreement that it intended to eliminate the minor exceptions doctrine, the "entire Berne acquis" was incorporated into the TRIPS Agreement. 88 The Panel concluded that it was important to "adopt the meaning that reconciles the texts of different treaties and avoids a conflict between them." 89 Although TRIPS claims to be about trade-related aspects of intellectual property, a large part of the rationale for its inclusion in the WTO regime is that the effective enforcement machinery of trade law provides a mechanism for hardening (WIPO-generated) intellectual property norms. These different analyses can be read to suggest that where a complaint is in essence an effort to enforce an intellectual property norm found in a WIPO Convention through the opportunity for dispute settlement within the WTO framework, panels will respect the intellectual property origins of the dispute. In some cases, WIPO treaties utilize terminology similar to that used in the TRIPS Agreement. Where the meaning in the WIPO instrument is clear, it can be consulted to infuse the TRIPS Agreement with an intellectual property perspective. The EC-GI case provides an example. One issue in that case was whether the EC's rules on protecting geographic indications violated the national treatment provision of the TRIPS Agreement by applying different rules to geographic indications pointing to territories outside the EU. The EC argued that the differential rules did not amount to a discrimination based on "nationality" because certain foreign nationals had, in fact, acquired protection under the challenged EC Regulation. 90 The Panel rejected the argument on the ground that these rights were derived through subsidiaries located in the EC. To buttress its conclusion that TRIPS treated discrimination according to residence and establishment as close substitutes for nationality-based discrimination, the Panel looked at how the terms were used in other pre-existing intellectual property instruments. Relying on WIPO conventions in this manner is, however, fraught with possibilities for mistake. Importantly, the EC-GI Panel relied on the connection between TRIPS and the Paris Convention because the interpretation the Panel proposed was consistent with the purposes of the TRIPS Agreement. Elsewhere in its report, the Panel rejected efforts to incorporate from the Paris Convention definitions of terms used but undefined in TRIPS. 93 The Panel thus showed some sensitivity to when (and when not) to use analogous terms in the pre-existing conventions. Attention must also be paid to the historical context in which the various agreements were negotiated. Otherwise, the attempted analogy can seriously misfire. One example of this type of miscalculation can be seen from the way in which the TRIPS Agreement's own attempts to achieve a measure of balance have been interpreted. Thus, each of the principal intellectual property areas covered by TRIPS includes a provision on "exceptions." 94 Although they are all different, their formats are similar: a multi-(usually three-) part test that allows members to limit intellectual property rights so long as they do not overly conflict with normal exploitation of the protected work or unreasonably prejudice the legitimate interests of the right holder. 95 Except for the copyright test, all explicitly permit adjudicators to also consider the interests of third parties. There have been three panel decisions interpreting the exceptions: (1) the aforementioned US-110( 5); (2) Canada-Pharmaceuticals, which challenged Canada's decision to permit generic drug makers to test pharmaceuticals and stockpile them prior to patent expiration; 96 and (3) the part of the EC-GI dispute in which the United States claimed that the EC's protection for geographic indications impinged on trademark rights. In these cases, adjudicators left members with leeway to reconcile conflicting TRIPS obligations (e.g., the conflict between GIs and trademarks, which are both protected by TRIPS) and to prevent right holders from benefiting from exclusive terms in excess of those mandated by TRIPS (e.g., to exploit the de facto exclusivity available to pharmaceutical companies by reason of the need for premarket clearance). At the same time, however, the decisions severely hamper the states' ability to accommodate national interests in any manner that constitutes a true exception-that is, a genuine intrusion into a TRIPS obligation. The panels ignored the domestic rationales for the challenged legislation, 97 they considered the various parts of the tests cumulatively (which meant that the interests of third parties were not reached), 98 and they largely refused to interpret terms 94. See TRIPS, supra note 1, arts. 13 (copyrights), 17 (trademarks), 26.2 (industrial designs), 30 (patents). The patent provisions of the Agreement also permit exclusions from protection for certain important public purposes. See id. arts. 27.2-.3. Article 31 gives a modicum of authority to offer compulsory licenses. 95. The trademark provision is only a two-part test because it does not consider normal exploitation of the work. See id. art. 17 (allowing for limited exceptions provided they take account of the legitimate interests of the trademark owner and third parties). There are also differences in wording among the other three provisions. For example, the copyright exception test, like the Berne Convention, uses the term "special." See TRIPS, supra note 1, art. 13; Berne Convention, supra note 58, art. 9(2). That could have been used to examine the justification for the measure; instead it was taken to mean "clearly defined." US-110 (5) WTO, WIPO, AND BEYOND 1207 like "normal," "legitimate," "prejudice," and "unreasonable" normatively. Instead, adjudicators did little more than mechanically count the number of rights within the bundle affected by the challenged provision, or the number of situations in which the exception was applicable. Every right received equal weight, no matter how small the impact on the right holder's market. 100 Markets the right holder had never utilized were counted equivalently to those that it had. Economic effects were regarded as paramount, and estimates of loss were extremely generous. 101 At the end of the day, Canada and the United States were not permitted to make allowances for user interests. What appears to have happened is that the panels relied too heavily on the provenance of these tests. All are based on a threepart exceptions test found in Article 9(2) of the Berne Convention, 102 and the panels may have assumed that because the tests derived from a WIPO instrument, they would automatically balance user and producer interests appropriately. Apparently, the panels did not appreciate how radically the context changed when these provisions were adapted for TRIPS. See, e.g., Jane C. Ginsburg, Toward Supranational Copyright Law? The WTO Panel Decision and the "Three-Step Test" for Copyright Exceptions, 187 REVUE INTERNATIONALE DU DROIT D'AUTEUR 3, 17 (2001). To be sure, the Canada-Pharmaceuticals Panel considered the practices of other states to determine the patent holder's legitimate interests, and it was not persuaded that they demonstrated a consensus position. Canada-Pharmaceuticals, supra note 38, ¶ ¶ 7.78-.82. Likewise, the EC-GI Panel made good on the assertion of the Canada-Pharmaceuticals Panel that "legitimate interests" could only make sense as "a normative claim calling for protection of interests that are 'justifiable' in the sense that they are supported by relevant public policies or other social norms." EC-GI, supra note 29, ¶ 7.663 (quoting Canada-Pharmaceuticals, supra note 38, ¶ 7.69). Although its determination of the relevant social purposes was drawn largely from TRIPS, the Panel did take notice of the differences between Article 17 of TRIPS and the Berne Convention Article 9 antecedent. See id. ¶ 7.671. It also took into account the broader principle of discretion regarding precise implementation found in Article 1.1 of TRIPS. See id. ¶ 7.682. 100. To be sure, Canada-Pharmaceuticals rejected the idea of simply counting rights. Canada-Pharmaceuticals, supra note 38, ¶ 7.32. But it refused to consider whether some rights are more important than others and in fact appeared to do no more than count rights. See id. ¶ 7.33-.34. For example, the US-110 (5) Panel found that EC copyright holders could lose as much as $53.65 million per year. US-110 (5), supra note 58, ¶ 6.253. Later, an arbitrator found the amount was only € 1,219,900 per year (this at a time when a dollar and a euro were close to parity). Award of the Arbitrators, United States-Section 110 (5) of the US Copyright Act, Recourse to Arbitration Under Article 25 of the DSU, ¶ 5.1, WT/DS160/ARB25/1 (Nov. 9, 2001). 102. Article 9(2) of the Berne Convention provides: "It shall be a matter for legislation in the countries of the Union to permit the reproduction of such works in certain special cases, provided that such reproduction does not conflict with a normal exploitation of the work and does not unreasonably prejudice the legitimate interests of the author." Berne Convention, supra note 58, art. 9(2). The Berne Convention test was formulated to protect only the reproduction right. Because, for most works, copyright holders make the bulk of their profits through control over reproduction, it is not surprising that Berne might be read to impose firm limits on interferences with the exploitation of that right. 103 The panels failed to consider the ramification of transposing the measure into TRIPS, where it applies to all user activities, to all markets, and to all of the principal intellectual property regimes. The language of Article 9(2) of the Berne Convention was altered and tailored to each regime; the panels might have accorded some significance to those changes. The opportunity to consider this issue actually arose in the US-110( 5) case, where the EC asked the Panel to consider how Article 13 of TRIPS, the copyright test, applied to rights-like the rebroadcast right-that were not within the ambit of Berne's exceptions test. 104 Consistent with the desire to reflect prior intellectual property conventions discussed above, the Panel rather easily concluded that "the TRIPS Agreement need not lead to different standards from those applicable under the Berne Convention." 105 However, in arriving at that conclusion, it considered only half the question. As framed by the EC, the issue was whether TRIPS should be read to narrow the ambit of exceptions. The Panel never seriously addressed the question of whether TRIPS had adapted the exceptions to deal with new situations. Had the Panel done so, it might well have reached a different conclusion. After all, the Panel claimed that it was reconciling Article 13 with the minor exceptions doctrine. 106 Yet, the minor exceptions that it identified-use of music by religious, military, and educational institutions 107 -were surely uses the right holders could have otherwise exploited. If the Panel had conducted the thought experiment of applying its interpretation of Article 13 to these uses, it might have seen the fallacy in its analysis and realized that when individual rights are considered in isolation, without giving any thought to their significance within the copyright "bundle" or to the impact of a use on the total potential revenue of the right holder, members are straightjacketed. Rather than grandfathering in existing practices, the Panel might have understood the need to develop normative 103. See The simplistic importation of the Berne approach to exceptions into TRIPS also ignores differences in the intellectual property traditions of the WTO membership. The Berne Convention was largely a product of the "droit d'auteur" approach to protecting works of authorship; common law countries tend to have a more utilitarian view. The United States, for instance, did not join the Berne Convention until 1988, and it never fully complied with all of its requirements (which is why Article 6bis of the Berne Convention was excluded from TRIPS). 109 The United States also has an open-ended approach to unauthorized uses. Like the three-step test, its key exceptions provision uses a factors approach. 110 Significantly, however, the factors are evaluated on a sliding scale. 111 Thus, it is almost inconceivable that U.S. negotiators understood themselves to be agreeing to the cumulative approach adopted by the US-110 (5) and Canada-Pharmaceuticals Panels. 112 Had DSU adjudicators considered the traditions of the WTO membership, they might have been less eager to understand use of the Berne framework for exceptions as license to import its interpretive regime into TRIPS. They might thus have arrived at a more accommodating view of the three-step tests. Instead, the Panel decision was a rather bare vindication of intellectual property rights as nothing more than commodities to be traded. The Panel looked to antecedent intellectual property sources, but it did not 108. The Canada-Pharmaceuticals case is somewhat similar. The Panel in that case also canvassed the laws of other countries. Although it held that "the subsequent acts by individual countries did not constitute 'practice in the application of the treaty which establishes the agreement of the parties regarding its interpretation' within the meaning of Article 31.3(b) of the Vienna Convention," Canada-Pharmaceuticals, supra note 38, ¶ 7.47, it did appear to consider them when determining the legitimate interests of right holders. Although the previous sections demonstrated that relying on WIPO instruments will often serve as a way to preserve intellectual property values, more intractable problems arise in situations in which TRIPS expressly adds to the requirements of the WIPO agreements. This is especially true with regard to patents, where the Paris Convention did little more than facilitate seriatim patent applications and establish limits on certain types of compulsory licenses. 113 In contrast, the TRIPS Agreement requires protection of inventive developments in all fields of technology, sets a minimum term of protection and minimum rights, and further restricts compulsory licensing. 114 Even for copyright and trademarks, TRIPS goes beyond the WIPO instruments. For trademarks, the subject matter of protection is elucidated and the scope of trademark rights is expanded; 115 the provisions on copyright and related rights mandate new protection for computer programs and rentals, phonograms, and performances. 116 Furthermore, TRIPS establishes obligations regarding other forms of intellectual property, including geographic indications, 117 industrial designs, 118 and trade secrets. 119 In all these areas, TRIPS also adds norms of enforcement. The Appellate Body's decision in the Canada-Patent Term case illustrates what can occur when a dispute concerns one of these new areas, where by definition there is no ready WIPO source to which a panel can refer. In that case, the United States claimed that Canada had violated Article 33 of the TRIPS Agreement by failing to extend the terms of patents that had issued before the Agreement had entered into force, but which continued to subsist afterwards. Canada claimed that Article 70, which required the protection of existing subject matter, was not relevant to "acts" that transpired before the Agreement appliedincluding the "act" of awarding a patent for a specific term of years. 121 Had the issue of retroactivity arisen in a WIPO negotiation, the problem might have been conceptualized as balancing accessibility interests against the claims of those holding pending patents. Because these right holders had sunk all their investments under the prior regime in reliance on the rewards that would be generated during an (arguably) shorter time period, the negotiators might well have decided not to require the retroactive extension of patent terms. 122 But the Paris Convention did not deal with patent duration. Accordingly, its negotiators never had occasion to consider the retroactivity issue. 123 The Appellate Body was thus left with nothing but definitions in the intellectual property component of a trade agreement. It duly consulted the Paris Convention as well as a WIPO treatise to determine the meaning of "acts." 124 But without apparently weighing the interests involved, the Appellate Body concluded that the length of the term was a "right" and not the result of the "act" of granting a patent; it thus held the TRIPS term to apply retroactively. 125 The adjudicators were equally undeferential to Canada's own weighing of the interests-the Panel rejected Canada's argument that its term (seventeen years from issuance, as opposed to the TRIPS Agreement's twenty years from filing) was effectively compliant with TRIPS. 126 Canada was thus left with no flexibility to protect the public from windfall gains by right holders. 123. Significantly, the Berne Convention does contain a provision on the retroactivity issue-a complex provision that makes retroactivity turn on whether the work remains protected in its country of origin. Id. ¶ ¶ 80-101. 127. Article 28 of the Vienna Convention, which sets out a rule of non-retroactivity with respect to acts and facts predating a treaty, might have also furnished the Appellate Body with a vehicle for giving Canada the flexibility to strike this balance on its own. However, the adjudicators instead used Article 28 to reject Canada's position by reasoning that a rule that refers to a "situation which ceased to exist" could not apply to subsisting patents. Id. ¶ ¶ 72-79. Arguably, the Canada-Pharmaceuticals Panel's decision to consider There is yet another reason why the full range of relevant intellectual property values cannot be integrated into TRIPS merely through the incorporation of the WIPO instruments: as we noted at the outset, social, economic, and technological situations change. The WIPO conventions that we have discussed thus far were adopted prior to the conclusion of TRIPS. But new rights are needed to respond to evolving technological conditions (such as the delocalization of digitized works), and new exceptions are necessary to accommodate new practices (such as open innovation). Furthermore, as developing and emerging nations begin to cope with intellectual property protection, they are finding approaches to interest-balancing that are different from the methods traditionally utilized by the developed world. While TRIPS leaves members free to increase the level of their own domestic protection, many of these developments require a collective response. Under current conditions, these responses are taking place outside the WTO, including in WIPO, thus raising the question whether new (or newly modified) WIPO instruments should also be factored into the interpretation of the TRIPS Agreement. To many commentators, the answer is clearly no. Article 31 of the Vienna Convention permits the use of a treaty or rule of international law to interpret another agreement, but only when all of the parties have agreed to both measures or accept that there is an interpretive relationship between them. Because the parties to the WTO are not all signatories of the WIPO instruments, strict application of the Vienna Convention would suggest that evolution in WIPO cannot affect TRIPS; that the only way to change the rights and obligations in TRIPS is to renegotiate it. 129 But another response is conceivable. While membership in the WIPO agreements and the WTO are not coextensive, there are very few countries that do not belong to both. For example, most of the states that are in WIPO WTO, WIPO, AND BEYOND 1213 for purely political reasons. 130 Furthermore, because the WIPO agreements constitute the backbone of TRIPS, the existence of some relationship between these instruments was evident to all WTO members. Neil Netanel, who addressed this question in the copyright context, thus concluded that, at least with respect to copyright agreements negotiated almost contemporaneously with TRIPS, new developments should be taken into account: TRIPS drafters must have been well aware [that] the Berne Convention is a dynamic instrument . . . and [that] the rapid development of copyright-related technology require[s] an ongoing process of interpretation and reinterpretation within the framework that Berne sets forth. 131 Under Netanel's approach, WIPO's elucidations of the terms of the instruments it administers would be immediately incorporated into TRIPS, either because WTO members should be regarded as having agreed to an evolving interpretation of the Agreement or because each new interpretation represents a "subsequent agreement between the parties" within Article 31.3(a) of the Vienna Convention. 132 At least one panel seems to have agreed about the relevance of such post-TRIPS developments. In the US-110( 5) case, the United States argued that the WIPO Copyright Treaty (WCT), which was largely designed to deal with the special problem of protecting works in a digital era, along with the statements made during the negotiation of the WCT, shed light on the meaning of the exceptions test in the TRIPS Agreement. 133 Although the Panel was careful to note that the WCT (which at the time had very few signatories) did not formally constitute a subsequent agreement within the meaning of Article 31.3, "the wording of the WCT, and in particular of the Agreed Statement thereto, nonetheless supports, as far as the Berne Convention is concerned, that the Berne Union members are permitted to provide minor exceptions to the rights provided under Articles 11 and 11bis." 134 The Panel went on to say that because the WCT In a sense, it is no wonder that the DSB has taken this line. As noted in the Introduction, the "right" rules for intellectual property are something of a moving target. As countries become increasingly developed, they encounter competition from emerging nations; as they cope with the challenges and opportunities of new technologies, needs change. The accommodations that were appropriate in the 1990s, when TRIPS was negotiated, are unlikely to be appropriate forever. To the extent that WIPO is more nimble than the WTO-more adept at finding coordinated responses to new developments-its input is invaluable. The impasse in WTO lawmaking, coupled with the relatively few intellectual property cases adjudicated by the DSB-and by the Appellate Body in particular-present both a problem and an opportunity. Until WTO lawmaking becomes more robust, nations will have difficulties accommodating changing circumstances. They will undoubtedly require new intellectual property legislation to deal with new challenges but will often be required to live with the uncertainly of not knowing whether these laws comply with their international obligations. 136 Furthermore, nations must deal with a distorted political economy. 137 Because TRIPS is a minimum standards regime, those interested in strong intellectual property protection can cite TRIPS in support of their legislative agendas and can use the threat of a TRIPS challenge to block moves intended to safeguard the public interest. At the same time, however, the fluidity of the current regime makes this a good time to ponder the interpretive approaches that are best able to maintain a productive creative 135. TRIPS Council reviews can, of course, provide some (non-authoritative) guidance on laws that have been enacted. See Paul Vandoren, The Implementation of the TRIPS Agreement, 2 J. WORLD INTELL. PROP. 25, 29 (1999). However, it does not provide advice formally through existing review mechanisms on whether proposed legislation is compatible with TRIPS. 137. For example, Indian law aimed at preventing evergreening has been heavily criticized on TRIPS-compatibility grounds. See Posting of Tushar Dhara, Thoughts on the Gleevac Controversy, to India Unplugged (Mar. 14, 2008), http://arthedains.com/ indiaunplugged/2008/03/14/87 (outlining the objections of pharmaceutical companies to the Indian Patents Act on the grounds that the statutory provision was vague and ambiguous and contrary to the requirements of the TRIPS Agreement and the Indian constitution). WTO, WIPO, AND BEYOND 1215 environment in the face of changing needs. As we previously suggested, generous and informed use of the intellectual property expertise at WIPO (and, by extension, other international organizations with an interest in intellectual property) is a necessary part of the solution. But encouraging panels to put TRIPS in its historical (Berne/Paris-derived) context and to take account of post-TRIPS international developments will not be enough in and of itself, as existing panel reports show. As the WTO thinks through the problem of interpreting the Agreement in new contexts and incorporating intellectual property values into a trade framework, it will hopefully address the following issues. One problem that emerges clearly from studying the existing case law is that a strategy for balancing interests and responding to change that relies solely on the bare text of the incorporated WIPO conventions is likely to fail. Despite the valiant efforts of the Appellate Body in Havana Club (and in other cases as well 138 ) to preserve flexibility for member states by relying on WIPO conventions for guidance, there are too many inconsistencies, differences, and transpositional errors for this strategy to fully succeed. Significantly, however, TRIPS furnishes its own guidance, quite apart from the multi-part exceptions tests discussed earlier. The Objectives of the TRIPS Agreement are stated in Article 7 as the use of intellectual property rights to promote innovation "to the mutual advantage of producers and users . . . in a manner conducive to social and economic welfare." 139 Furthermore, Article 8 (Principles) permits members to adopt measures that protect public health and promote sectors of vital interest to their economies and to technological development (so long as they are consistent with the Agreement). 140 So far, these provisions have not played an important interpretive role. Indeed, the Canada-Pharmaceuticals Panel essentially wrote them off, rejecting the claim that they should be used to determine whether Canada's policies on behalf of generic competition fall within the patents exception provision. See, e.g., supra note 71 and accompanying text (discussing India-Pharmaceuticals). Some panels have been similarly conciliatory, as the China-Enforcement case demonstrates. Id. ( While the Panel agreed that the sentiments expressed in the Objectives and Principles had to be "borne in mind," it also warned against using these provisions to alter the deal struck in the Uruguay Round. As Peter Yu so convincingly argues, that reluctance to impose a purposive gloss must change. 142 The Doha Declaration on the TRIPS Agreement and Public Health specifically stated that "each provision of the TRIPS Agreement shall be read in the light of the object and purpose of the Agreement as expressed, in particular, in its objectives and principles." 143 The status of the Declaration is not entirely clear (it too is a post-TRIPS development that arguably should be taken into account in interpreting the Agreement). 144 What is clear, however, is that the commitments expressed in the Objectives and Principles would go a long way toward providing a normative dimension to the exceptions test that was absent in both the US-110( 5) and the Canada-Pharmaceuticals cases. 145 A perspective informed by these provisions would be similarly useful in considering other issues, such as the structural relations between the various parts of the Agreement The national treatment and most-favored nation obligations are structural, in that they apply to all the forms of intellectual property protection coming within the scope of the TRIPS Agreement, even if the protection accorded is in excess of that mandated by the Agreement. See EC-GI, supra note 29, ¶ ¶ 7.130 (national treatment), 7.702 (mostfavored nation). In that case, the Panel subjected Canada's research exemption, which had been held valid under the three-part exceptions test, to a separate analysis under Article 27.1, which requires technological neutrality. See Canada-Pharmaceuticals, supra note 38, ¶ ¶ 7.84-.104. As we have previously explained, treating technological neutrality as substantive (as outside the reach of the exceptions test) makes it very difficult to draft an exemption limited enough to qualify for an exemption under Article 30. See Dinwoodie & Dreyfuss, Diversifying, supra note 21, at 449. It also makes it hard for states to deal with the divergent interests of, say, the information technology, financial services, biotechnology, and pharmaceutical industries. A different view on the exceptions test may not, however, have saved Canada's stockpiling provision as the Panel added another constraint on members' freedom of action. It treated the nondiscrimination provision in Article 27.1 as structural-as a requirement that is not subject to exceptions. Article 1 of the TRIPS Agreement, on the Nature and Scope of Obligations, could also play an anchoring role, for it leaves members "free to determine the appropriate method of implementing the provisions of [the] Agreement within their own legal system and practice." 149 This restates a fundamental assumption of the international intellectual property system: international norms confine national policy choices, but they do not define them. So far, the reach of this provision is unclear. In China-Enforcement, for example, the Panel emphasized, on the one hand, that Article 1.1 does not justify derogations from basic obligations. 150 At the same time, it considered the provision in connection with the question whether China was doing enough to keep counterfeit goods out of channels of trade and ensuring that they did not harm trademark holders' reputations. After examining how China used these goods to serve public welfare interests, it held that China was "free to determine the method of implementation of its obligations under Article 59 [on remedies] in accordance with Article 1.1 of the TRIPS Agreement." 151 Further development of Article 1.1 jurisprudence could help panels take better account of the varying traditions of its members, such as the difference between droit d'auteur and utilitarian approaches discussed above. 152 Similarly, explication of Article 1.1 would provide guidance to states about the areas where they have most latitude regarding means of implementation. In addition to a more nuanced intellectual property perspective, and a more purposive reading of the TRIPS agreement, adjudicators could also better preserve the balance needed in intellectual property law by viewing the TRIPS Agreement with its trade-related character consciously in mind. Currently, adjudicators tend to look mainly at how states treat intellectual property within their borders, largely ignoring effects on international trade. Admittedly, the drafters of TRIPS were heavily focused on local infringement. Negotiations over intellectual property moved to the WTO because WIPO was 149. See supra notes 109-12 and accompanying text. 153. The TRIPS Agreement itself already identifies enforcement measures as an area where states are to be given particularly generous room for maneuver. See TRIPS, supra note 1, art. 41.5. ( For example, in China-Enforcement, on the issue of whether China was taking strong enough action to remove infringing goods from the channels of commerce, the Panel used a single reference in Article 51 (on border measures) to claim that members' obligations extend only to preventing the importation of infringing goods. 156 Even though other provisions in the Agreement explicitly refer to exportation, 157 and the Decision of the General Council implementing the Doha Declaration paid particular attention to exports, 158 the China-Enforcement Panel found that states have no duty to prevent their territories from becoming information havens-hubs for international infringement operations. This is not surprising in light of the WTO's origins, which focused on barriers to the entry of goods into members' markets. However, those concerned with trade in 154. See SUSAN K. SELL, PRIVATE POWER, PUBLIC LAW: THE GLOBALIZATION OF INTELLECTUAL PROPERTY RIGHTS 46 (2003) (explaining that developed countries disfavored WIPO because it "lacked enforcement powers and was dominated numerically by less developed countries"); Jerome H. Reichman & Rochelle Cooper Dreyfuss, Harmonization Without Consensus: Critical Reflections on Drafting a Substantive Patent Law Treaty, 57 DUKE L.J. 85, 100-01 (2007) (noting that developed countries could "exchange higher intellectual property standards for trade concessions in other areas" under the WTO framework). See Frankel, supra note 61, at 390-91. Of course, the reformulation of trade theory as grounded in comparative advantage (as opposed to the mere free flow of goods) has allowed international regulation a more ready justification for intruding upon purely local conditions. See Dinwoodie, supra note 13, at 78-80. But it should not be taken as a given that theories of comparative advantage have wholly displaced traditional justifications for a trade regime. Courts or other adjudicators charged with effectuating traditional trade objectives by ensuring the free movement of goods may in fact view territorial intellectual property rights with much greater suspicion. WTO, WIPO, AND BEYOND 1219 intellectual property need to be concerned about flows in both directions. A contrast between the US-110( 5) case and the stockpiling portion of Canada-Pharmaceuticals provides an illustration of how requiring a trade nexus might affect the extent to which the TRIPS Agreement circumscribes national intellectual property lawmaking. Although the complainant won each of the cases, the challenged measures were factually different. The United States had been permitting rebroadcasts of music in small establishments within the United States. 159 Since there was no possibility of re-rebroadcast abroad, the potential loss of trade was extremely limited. It consisted only of the claim that without the exemption, the establishments in question would have paid licensing fees for the relevant rebroadcasts. In contrast, Canada was apparently permitting generic drug companies to stockpile drugs for sale around the world; 160 thus, Canada's laws had a serious potential impact on trade in goods. Perhaps the cases should have come out as they did, but had the adjudicators mandated that closer attention be paid to impacts on world trade, they would have left states with more room to maneuver. In particular, emerging economies would benefit from such an approach. They could provide their populations with easier access to educational materials and training opportunities by raising the inventive step, taking novel approaches to the scope of intellectual property rights, or adopting new defenses to infringement. Because their manufacturing capacities are modest, the activities thus permitted would be unlikely to affect world trade in a meaningful way (and this would be especially true if they made efforts to confine distribution to interstate trade). 162 Accordingly, such activities might not be regarded as TRIPS violations, even if substantially similar actions by developed countries would be. See US-110 (5), supra note 58, ¶ 2.5-.6. 160. See Canada-Pharmaceuticals, supra note 38, ¶ 2.1. 161. The proposed Anti-Counterfeiting Trade Agreement (ACTA) furnishes an interesting contrast. 163. Dreyfuss, supra note 7, at 5-7. For another example of where this issue arises, consider the controversy over the EU's seizure of Indian generic drugs bound for a market where they were not protected. To put this another way, instead of using trade as a lens through which to filter the scope of international obligations imposed by the eponymous TRIPS Agreement, the Appellate Body and the panels have largely subsumed the international intellectual property system as a whole within the trade apparatus. Thus, as noted above, the treatment by panels of discrepancies between TRIPS and WIPO conventions suggests that it is well understood that intellectual property was incorporated into the WTO system in order to take advantage of the latter's enforcement machinery. But this was a purely strategic move. For reasons we have discussed elsewhere, the coupling of intellectual property and trade is an uneasy one. The relationship is under-theorized in the literature (partly because intellectual property was treated exceptionally under Article XX(d) of the old GATT regime), and neither the Appellate Body nor the TRIPS panels have fully explored the interaction. 164 If trade-relatedness were made a criterion for determining TRIPS compatibility, nations would have more room to adapt their laws to domestic needs and to make them responsive to local changes in circumstances. Our short survey of the TRIPS cases reveals that the panels and Appellate Body have on occasion taken an eclectic approach 164. Any doctrinal exploration that has occurred had been formalistic and motivated largely by a desire to maintain internal coherence in the enforcement of TRIPS norms. For example, the Appellate Body in Havana Club and the Panel in EC-GI each subjected challenged national laws to analysis under the separate national treatment obligations in both GATT Article III and TRIPS Article 3, rejecting the contention that compliance with one (for example, the GATT provision with its generous exclusion) would automatically result in compliance with the other. See EC-GI, supra note 29, ¶ 7.184. And there are important differences between the two obligations. GATT national treatment prohibits unequal treatment of goods, GATT, supra note 45, art. III, while TRIPS focuses on the treatment of nationals. TRIPS, supra note 1, art. 3. And, most significantly, the obligations are subject to different exceptions: TRIPS to provisions taken over from prior intellectual property conventions, and GATT to the exclusion of laws "necessary" for protection of intellectual property under Article XX(d). TRIPS, supra note 1, art. 2; GATT, supra note 45, art. XX(d). But these approaches are largely grounded in making the incorporation of WIPO conventions real and in maintaining internal coherence in the enforcement of TRIPS norms. For example, subjecting intellectual property laws to both (different) national treatment obligations is important if the incorporation of the national treatment obligations of the WIPO conventions is to have any effect; if compliance with GATT were sufficient, incorporating the national treatment commitments of Berne and Paris would have been unnecessary. Likewise, the EC-GI Panel correctly noted that if it allowed the scope of Article 3 of TRIPS to be affected by the potential applicability of GATT Article III, it might result in the non-uniform application of Article 3 of TRIPS to other intellectual property rights that were not inherently linked to the territorial origin of a product. See EC-GI, supra note 29, ¶ 7.184. WTO, WIPO, AND BEYOND 1221 to the materials they use to interpret the TRIPS Agreement. For example, the adjudicators in Havana Club and the US-110 (5) cases consulted the 1883 Final Protocol to the Paris Convention, materials from the 1911 Paris Revision Conference, the General Report and materials of the diplomatic conferences leading to the inclusion of broadcast rights in the Berne Convention, as well as learned treatises interpreting the conventions. 165 To be sure, some reports place undue reliance on the dictionary, 166 and references to WIPO materials without proper regard for history and context can undermine the intellectual property values at stake. Unfamiliar materials must be handled with care. However, unless WTO lawmakers are open to a variety of sources, intellectual property norm development will be incomplete. Furthermore, the cacophancy and recycling created by the emerging "international IP regime complex" will persist. Instead, ways must be found to integrate developments from a multiplicity of sources. In particular, the Vienna Convention allows practices of states to be considered in determining the meaning of TRIPS. 167 So too might other bilateral and multilateral international agreements be taken into account. WTO panels should view these sources of law broadly to ensure the most intellectual property sensitive reading of the TRIPS Agreement. And they should be willing to innovate procedurally to optimize their awareness and appreciation of these broader materials. 1. National Practices. Article 31.3(b) of the Vienna Convention permits interpretation to be shaped by subsequent practices by the parties that reflect on an agreement's meaning. In the context of TRIPS, there are two time periods to consider: practices adopted under the WIPO conventions and practices adopted only subsequent to TRIPS. While the Canada-Pharmaceuticals Panel was reluctant to take account of practices in the first time period, even in determining the legitimate expectations of patent holders, 168 these practices would appear to be extremely relevant. They reflect not only on the meaning of underlying Paris and Berne obligations, they also shed light on what the states thought they were agreeing to when they joined the TRIPS Agreement (especially if these practices continued 165. See after TRIPS went into force). And, indeed, the US-110 (5) Panel was extremely attentive to how WIPO members viewed their Berne obligations: it made considerable use of exceptions found in different national laws to shed light on the meaning of the "minor exceptions" doctrine that it held to be part of the Berne acquis. 169 Furthermore, in EC-GI, the Panel's decision on whether the protection the EC offered geographic indications was unduly interfering with trademarks was importantly informed by the ways in which the EC had dealt with potential interferences in the recent past and by the paucity of confusing simultaneous registrations. 170 Although such regard might not, as a formal matter, satisfy the definition of state practice within the meaning of the Vienna Convention, 171 the Panel's flexibility toward the relevance of state practices ensured that the context of how international norms operate locally was fully taken into account. Among other things, this approach validates the freedom expressed in Article 1.1 to implement international obligations in ways appropriate to the national regime in question. Events post-TRIPS are relevant for many of the same reasons. Post-TRIPS practices also speak to a country's understanding of both its TRIPS obligations and the requirements of the underlying Paris and Berne Conventions. Consulting them contributes to a coherent understanding of the international intellectual property regime as a whole. EC-GI, supra note 29, ¶ ¶ 7.573 (on the Budvar issue), 7.667-.679 (on how EC handled applications), 7.674 (on instances of potential confusion). In its analysis of the trademarks exception test, the EC-GI Panel also drew significant support from the example of an acceptable practice included in Article 17 of TRIPS, which allows fair use of descriptive terms. Id. ¶ 7.655. When TRIPS lawmaking resumes, drafters should keep in mind how useful it is to provide adjudicators with such examples. Elsewhere in its report, the Panel also looked at implemented laws operating in other countries, a method of interpretation that more formally satisfies the understanding of state practice in the Vienna Convention. See id. ¶ 7.642. See Netanel, supra note 51, at 447 ("[S]tate practice under Berne should indeed be the fundamental starting point for interpreting Berne-in-TRIPS [the interpretation of the Berne provisions as incorporated into TRIPS], although the Berne provisions that are incorporated into TRIPS will necessarily be colored by TRIPS's state practice and overall object and purpose as well."). The panels appear to have avoided the problems of the preand post-TRIPS dichotomy in dealing with international materials. Thus, the Appellate Body has articulated the doctrinal difference between using the preparatory work for the TRIPS Agreement and relying on the negotiation history of the Paris and Berne Conventions: the former is subject to Article 32 of the Vienna Convention and can be used only in the case of ambiguity or unreasonableness; the latter is a constitutive part of the parties' understanding of their TRIPS commitments. See id. at 460 n.77, 469. However, since the relevant time to gauge this understanding is at the conclusion of the TRIPS Agreement, relevant sources include not only texts prepared in the run-up to the WIPO instruments, but also interpretive materials published prior to the conclusion of TRIPS. ( 173 Should similar economies adopt the same strategy, the emerging consensus should be taken into account in interpreting the reference in TRIPS to the "inventive step." 174 Similarly, widespread adoption of rules like Germany's on the scope of gene patents 175 might be interpreted as a response to upstream patenting, rather than as an attempt to treat the biotechnology sector specially, in violation of the nondiscrimination proviso of the TRIPS Agreement. 176 The Panel in US-110 (5) appeared alert to the danger of viewing international norms statically and specifically noted that minor exceptions were not "frozen in 1967" when broadcasting rights were added to the Berne Convention. 177 Being willing to consider national practices across time allows dispute settlement panels to decide cases based on the most refined conceptualization of available policy levers and in ways relevant to new social and technological developments. But as helpful as these national sources are, their use is not without problems (just as the same was true of a historical use of international treaties 178 ). First, there is no reason to believe that the parties to the Paris and Berne Conventions fully utilized the flexibilities available to them under those instruments. Indeed, the opposite is clearly true: developed countries have long had trademark and patent laws that vastly exceed the requirements of the Paris Convention. Accordingly, while laws that pre-existed TRIPS may identify practices that are allowable, no inference can be made about whether other measures should also be considered permissible. Second, care must be taken lest national norms adopted in a few countries be quickly consolidated at the international level, precluding reversal of any national experiments deemed unsuccessful. In recent years, the United States (and, to some extent, other developed countries) have embarked on a series of bilateral trade agreements, often with developing countries, which are intended to raise the level of intellectual property protection above the requirements of the TRIPS Agreement. Many fall on the heels of WIPO efforts to expand the Paris or Berne Conventions to cover new regimes, and they appear in part to be intended to convert WIPO's "soft law" into genuine obligations. 180 In effect, however, these agreements are pay-offs: they give one country greater access to the other's markets in exchange for raising the level of protection. 181 While many of them may be in the contracting parties' mutual trading interests, they should not be viewed as evidence of how the WIPO instruments or the TRIPS Agreement should be interpreted. Nations that have not received the quid pro quo should not be required to nonetheless accord higher levels of protection to intellectual products. Third, it is important to ensure that grandfathering-the practice of relying on pre-TRIPS practices and materials-does not end up privileging developed countries, which have evolved a considerable repertoire of practices under the Paris and Berne Conventions, over developing countries that are so new to intellectual property that they have never considered how to adjust their implementing legislation to their national interests. This problem of privileging the approaches of the developed world could be ameliorated simply by incorporating this historical understanding into any analysis of state practice or by states. See Dinwoodie, supra note 97, at 758. The same can be said of learned treatises: they may shed light on practices that states were using or had contemplated, but omissions do not constitute evidence that a practice is inconsistent with WIPO obligations. WTO, WIPO, AND BEYOND 1225 adapting the role of state practice as an interpretative device to require consensus across countries of different development. 182 2. Subsequent WIPO Material. The most straightforward way to keep TRIPS current with changes in the innovation landscape is to take post-TRIPS developments in international intellectual property lawmaking into account in interpreting the Agreement. Article 31.3(a) of the Vienna Convention allows resort to subsequent agreements among all of the parties, and, as we saw, the US-110 (5) Panel relied on the WCT to interpret the copyright exceptions test of the TRIPS Agreement. 183 It remains to be seen whether the Appellate Body will agree to this approach and, if it does, how much further it would go. 184 The US-110 (5) Panel was careful to note that the WCT was concluded only a year after TRIPS; 185 negotiators could not have anticipated agreements made much later. The WCT is also a completed treaty, although it had not entered into force at the time the Panel consulted it. 186 More informal WIPO actions, such as the Reports of Standing Committees, Model Laws, or the advice given by WIPO technical advisors to WTO members, present a very different situation. Finally, the WCT is an easy case because it deals with the same type of works that are covered by TRIPS, and it supplements (increases) the level of intellectual property protection. 187 Far more tenuous would be the incorporation of instruments that recognize rights in new kinds of subject matter-databases, folklore, genetic endowments, or traditional 182. Cf. Laurence R. Nonetheless, a strong case can be made for consulting many of these materials. Certainly, contemporaneity with TRIPS should not be dispositive. Indeed, the more distant from TRIPS, the more likely the measure will reflect members' efforts to cope with new developments in TRIPS-consistent ways. If one understands the interpretive project as avoiding the obsolescence of the system of international intellectual property rather than an historical inquiry designed to divine what negotiators thought appropriate in 1994, this argument is even stronger. 188 While many WIPO measures are not formal agreements, neither was the WCT at the time it was cited in US-110 (5). 189 Even when WIPO instruments are not destined to become formally binding, they represent the work of experts in the field and are open to input from state delegations. As such, they are somewhat akin to the internationally developed standards that other WTO framework agreements expressly take into account. 190 These materials demonstrate how the terms in the TRIPS Agreement are construed in new contexts, and what interested parties see as appropriate ways to resolve novel issues. 191 Of course, not every document issued by WIPO is subject to the kind of vetting that produces a balanced instrument, and many are not the product of genuine consensus among the WIPO membership (let alone the WTO). These issues should, however, go to the weight these materials are given in the interpretive process. 192 The nature of the measure-be it report, model laws, or resolution-should be taken into account, along with such matters as the degree of transparency accorded to interested parties (including civil society); the diversity of the input; the extent to which state delegations participated; how states, commentators, and practitioners reacted to the instrument; and 188. Cf. STEPHEN BREYER, ACTIVE LIBERTY: INTERPRETING A DEMOCRATIC CONSTITUTION 16 (2008) (noting that the drafters of the U.S. Constitution used the words "We the People" rather than "we the people of 1787"). See US-110 (5), supra note 58, ¶ 6.68. Admittedly, the parties to the dispute had both ratified it, but the Vienna Convention is usually interpreted as requiring ratification by the parties to the agreement at issue, not the dispute. 190. ). Thus, as we saw, the US-110(5) Panel took account of the WCT, even though that agreement had yet to enter into force. 194 Notably, the WCT was heavily debated in an exceedingly open process. In contrast, the China-Enforcement Panel, when considering what counted as "commercial scale" for determining whether China had breached its enforcement obligations, consulted how that term was used by the WIPO Committee of Experts on Measures Against Counterfeiting and Piracy and the Draft Model Provisions for National Laws set out in a memorandum by the International Bureau of WIPO. 196 However, the Panel ultimately decided not to use the explanatory material because there had been no agreement on them. According to the Panel, the materials should not be "elevate [d] . . . to the status of the proper interpretation of a treaty text that was negotiated in another forum and that was finally agreed." 197 The Panel did not specify what sort of agreement it was looking for. Were the WTO to consider the factors we have enumerated in determining how much deference to accord this material, there would be an interesting side benefit: WIPO negotiators would have a new incentive to make their deliberations more open and participatory. Interpretive canons of this sort thus not only allow for the updating of international norms, they can also alter the political and institutional economy in more structural ways. The Joint Resolution Concerning Provisions on the Protection of Well Known Marks, a 1999 document interpreting Article 6bis of the Paris Convention, furnishes an example of how this approach could work. 199 TRIPS was concluded before the Internet revolutionized global marketing. Consequently, the negotiators did not grapple with the ramifications of e-commerce, including the extent to which it increases the likelihood of consumer confusion and leads to interference between domain 193. See supra text accompanying notes 179-82 (noting the extent to which states have been forced into "TRIPS-plus" measures through bilateral agreements). 194. The Resolution provides rules for determining when a mark is well known and when a mark has priority over similar domain names. 200 Both of these issues had vexed the membership, and, in each case, most of the guidance (arguably) flows naturally from agreed norms on the role trademarks play in the marketplace. Should either the definition issue or the domain name question arise in dispute resolution, adjudicators ought to regard the Joint Resolution as highly informative of the meaning of Article 6bis. At the same time, however, the Joint Resolution also contains a provision protecting well-known marks from dilution. 201 This protection, which is independent of consumer confusion, was hotly contested and several members refused to join in the recommendation. 202 Accordingly, if the DSB were called upon to decide whether TRIPS requires dilution protection, adjudicators would have sufficient information to conclude that the Joint Resolution does not shed light on the issue. Skepticism is also appropriate for WIPO measures that recommend protection for new kinds of subject matter, such as databases, traditional knowledge, or publicity rights. While national intellectual property laws tend to be interpreted capaciously in order to encourage revolutionary advances, 204 the legitimacy of international instruments is strongly dependent on genuine agreement among the parties. There will be some close (1996), which was based on a study by the Max Planck Institute, and expands upon the meaning of Article 10bis of the Paris Convention. Although such publications have been criticized as exceeding the scope of WIPO's authority, see Cornish, supra note 50, at 338, that critique could be taken into account in their utilization. See China-Enforcement, supra note 65, ¶ 7.567 (declining to use the Report of the WIPO Committee of Experts on Measures against Counterfeiting and Piracy of April 1988 to clarify the meaning of "commercial scale" because the experts never agreed on a particular meaning); see also id. ¶ 7.586 (considering the Model Provisions but acknowledging that the lack of consensus negates much of their impact). The McManis account of ACTA suggests that it too is an instrument that should not be taken into account in interpreting the TRIPS Agreement. WTO, WIPO, AND BEYOND 1229 calls where the work of WIPO could be helpful in determining whether TRIPS covers the new subject matter; patent protection for software is an example. 205 But new kinds of intellectual property are likely to require new minimum standards. Thus, even when there is substantial activity in WIPO, extending coverage to new fields is best done through formal revision of TRIPS rather than through more ad hoc actions, such as adjudication. 206 So far, most WIPO developments tend to be in the direction of interpreting agreements to maximize intellectual property holders' rights. That could change with WIPO's new Development Agenda. If it does, then similar considerations should apply: in disputes over how TRIPS structures the balance between consumer and producer interests (or how much authority it leaves to member states), recommendations that are the product of expert views, that were subject to transparent procedures, are well-supported by members, and are clearly within the scope of WIPO's core expertise, ought to be consulted. Where there is evidence of disagreement or overreaching, or where the WIPO measure involves new types of rights, the WIPO instrument should not be used to construe the meaning of TRIPS and move international intellectual property forward too quickly. Expanding the sources to which panels might refer is part of a larger effort to understand the international intellectual property system as a broad regime with a number of constituent parts. The international intellectual property system has always been highly textured. In the past, it required regard for national developments and a web of bilateral agreements. 208 As previously noted, the current system is even more complicated, for many of the moving parts are now multinational in nature, compelling 205. See Dreyfuss & Lowenfeld, supra note 13, at 284-97 (noting that the Agreement only specifically requires copyright protection for software). 206. This is not to say that national protection for new subject matter might not be subject to existing international obligations that are more structural in nature. For example, the protection extended to databases by the European Union in its Database Directive arguably could have been conceptualized as protection against unfair competition and subject to the national treatment provisions of the Paris Convention. 209 these values into TRIPS will not only provide a normative dimension currently missing from trade law, but it will also make the decisions of the WTO more acceptable to a broad array of constituents. This enriched perspective would help panels to engage in the normative analysis that they declare relevant to decisionmaking but seem unable (or unwilling) to undertake. 210 And, to the extent that conformity with international norms should, as we believe, depend in part upon the relationship between a national law and its stated purpose, these sources should help panels to assess the policy justifications for different approaches. Collectively, these arguments represent a call for deciding international intellectual property cases on the basis of a richer factual and normative record. How is this to be achieved within the WTO dispute settlement machinery? It appears that the Appellate Body approves of the practice, initiated by the Havana Club Panel, of asking the International Bureau of WIPO for relevant information on the negotiation history of particular agreements and subsequent developments. This practice apparently follows one that the TRIPS negotiators used themselves; indeed, the document that the TRIPS Negotiating Group asked the International Bureau of WIPO to prepare was itself used in the US-110(5) case. 212 As we saw, WIPO does not have a seat at the table in the meetings of the TRIPS Council; asking it to provide its views during dispute resolution interjects 209. See Howse, supra note 57, ¶ 5 (suggesting "the 'mainstreaming' of the general normativity of human rights into the making and administrating of global economic and social regulation and policy"). 210. See, e.g., US-110 (5), supra note 58; Canada-Pharmaceuticals, supra note 38. 211. ( It may, however, be possible to build on these practices in ways that are helpful in addressing a pervasive problem-how to maintain the currency of international intellectual property law. As we suggested above, consulting only sources about the Paris and Berne Conventions that existed at the end of the Uruguay Round does not provide a mechanism for adapting the TRIPS Agreement to new circumstances. One idea is to continue to ask for input from WIPO's International Bureau. However, these requests could be broadened to include not only "factual information" about pre-TRIPS practices, 213 but also its opinions on implementation options and how to handle new problems. The technical assistance that WIPO is currently providing to TRIPS members gives it a window on the problems confronting developing countries and a unique position from which to devise TRIPS-consistent solutions. Pursuant to Article 67 of TRIPS, nations in the North are required to offer help to the countries of the South in implementing their laws; 214 as previously noted, the WTO has an agreement with WIPO to assist in this process. While there are continuing suspicions about the nature of the help thus offered (including claims that the North is using this duty to impose on emerging economies laws more appropriate for the developed than the developing world), both WIPO and the WTO have embarked on Development Agendas. If the organizations are true to the spirit of Article 67, the advice given should include information about the flexibilities in the Agreement and the steps these countries could take to promote their domestic interests. The practices resulting from this collaboration ought then to be regarded as strong evidence of the meaning of the TRIPS Agreement. 216 More radically, perhaps, WIPO could provide advice directly to adjudicators, playing a role not unlike the Advocate-General in the European Court of Justice. 217 213. See Howse, supra note 57; Matthews & Munoz-Tellez, supra note 4. 217. The use of devices such as Advocates-General might help to ameliorate the skewing of dispute panel jurisprudence depending upon the identity of the parties. See Dinwoodie, supra note 18, at 508-10. Generous permission for third party involvement has arguably already helped address some of these concerns. The DSU currently provides developing countries with legal assistance from the WTO Secretariat. See DSU, supra note 16, art. 27.2. Developing countries have long sought to increase that assistance, through such devices as a Permanent Defense Counsel to assist developing countries in proceedings brought against them. See Kim Van der Borght, The Review of the WTO Either of these ideas would, of course, confer on WIPO broader authority than currently exists. 218 And despite recent movements to embrace the Development Agenda, many groups remain skeptical of investing too much power in WIPO. But it might be possible to lift traditional restraints on the form of WIPO involvement if other institutional checks are put in place to ensure balance. If there are concerns about whether WIPO adequately represents the collective views of its members, then the WTO could predicate its willingness to solicit WIPO's opinion on the transparency of WIPO's deliberative process. 219 There is also an obverse concern: the WTO could perceive the requirement to seek information from other sources as a diminution in its power. To preserve its authority, the WTO could resist using this information to inject non-trade-based considerations into its decisionmaking. In national contexts, such problems are avoided through a variety of devices that exert control over agencies. 220 But because there is no source of such control in the international setting, the WTO could, in theory, decide to ignore input from other sources. Nonetheless, we believe that a practice of considering other sources could institutionalize over time. Use of outside materials in no way changes the WTO's authority; these materials merely aid in its decisionmaking. For example, the Objectives and Principles in the TRIPS Agreement are very general, as are the concepts of "normal exploitation" and "legitimate interest." 221 The absence of "judicially manageable standards" 222 may be one reason that panels are reluctant to rely on the former or to give meaning to the latter. 223 To the extent that other materials supply context 10 CARDOZO L. Graeme B. Dinwoodie, Trademarks and Territory: Detaching Trademark Law from the Nation-State, 41 HOUS. L. REV. 885, 955-66 (2004). 10. See Graeme B. Dinwoodie & Rochelle Cooper Dreyfuss, International Intellectual See Dinwoodie & Dreyfuss, supra note 10, at 435; Graeme B. Dinwoodie & 34.See Dinwoodie, supra note 13, at 80-84 (describing how WIPO has successfully employed mechanisms to produce soft law instruments such as the Uniform Domain Name Dispute Resolution Policy (UDRP) that may in practice turn out to be harder law).35.See, e.g., WIPO, Use of Trademarks on the Internet: Issues Paper, Ficsor, who served on the panel that resolved a patent dispute involving Canada. See Panel Report, Canada-Patent Protection of Pharmaceutical Products, WT/DS114/R (Mar. 17, 2000) [hereinafter Canada-Pharmaceuticals]. of the US Copyright Act, ¶ 6.41, WT/DS160/R (June 15, 2000) [hereinafter US-110(5)]. 59. DSU, supra note 16, art. 3.2. 60. Vienna Convention on the Law of Treaties, May 23, 1969, 1155 U.N.T.S. 331 (entered into force Jan. 27, 1980) [hereinafter Vienna Convention]; see Steven P. Croley & John H. Jackson, Appellate Body Report, United States-Section 211 of the Omnibus Appropriations Act of 1998, WT/DS176/AB/R (Jan. 2, 2002) [hereinafter Havana Club]. Havana Club, supra note 63, ¶ 19.69.Cf. US-110(5), supra note 58, ¶ 6.41 ("We note that Article 30 of the Vienna Convention on the application of successive treaties is not relevant in this respect, 1. 77. TRIPS, supra note 1, art. 15.1; Havana Club, supra note 63, ¶ 191. 79 See, e.g., Canada-Pharmaceuticals, supra note 38, ¶ ¶ 7.20-.21. PAUWELYN, supra note 44, at 265. The Panel in the Canada-

there is a continuing need to recalibrate the rules applicable to knowledge production. For developing countries, entry into the WTO was a compromise. When intellectual property lawmaking was centered in the World Intellectual Property Organization (WIPO), these nations resisted attempts to increase the level of protection. That changed, however, with the inclusion of intellectual property in negotiations over trade; in return for access to markets in the developed world, developing countries were required to enact and enforce new intellectual property laws.

While the TRIPS Agreement tried to ease their conversion to greater protection, the transitional provisions it included proved to be largely illusory: the time periods for compliance were too short; the promises of technology transfer and technical assistance, inadequately realized. 4 Furthermore, the Agreement paid little attention to the problem of providing access to the training and educational materials that would allow these countries to advance to the intellectual frontier. 5 Paradoxically, for some

See, e.g., Anheuser-Busch Inc. v. Budejovicky Budvar N.P., [1984] FSR 413 (CA) (U.K.) (one national component of a multi-territorial dispute between Anheuser-Busch, an American brewer, and a Czech brewery dating back to the early 1900s 34 As a result, it is also not suffering as badly from the lawmaking problems confounding the WTO. Post-TRIPS, it has held conferences and issued influential reports on emerging issues;

35 it has also successfully concluded negotiations over several new intellectual property instruments.

Greater input from WIPO would be beneficial for another reason as well. Because the focus of the WTO is trade, the TRIPS Agreement tends to view intellectual property very much as a commodity. Lost in the drafting process was the sense that intellectual property embodies cultural values, that it

In short, the organization, along with the agreements it administers, brings to the table an intellectual property sensibility that is currently lacking in the WTO.

Unfortunately, however, the nature of the lawmaking relationship between these two organizations has yet to be fully elucidated. There are other agreements within the WTO framework that rely explicitly on the expertise of non-WTO organizations: they reference standards enunciated by international bodies with relevant expertise, 45 or establish joint oversight in areas where there are potential conflicts. 46 In contrast, the WTO's relationship with WIPO is opaque.

WTO, WIPO, AND BEYOND 1197 limited to legal and technical assistance-to providing the WTO with copies and translations of domestic legislation and to assisting WTO members in meeting their obligations.

As lawmaking continues to shift from sovereigns acting alone to states acting in concert, the international organizations they form must increasingly take on the tasks once left to sovereigns, including the duty of finding ways to accommodate each others' needs and to maximize joint interests.

WTO, WIPO, AND BEYOND 1199 interpretive sources are appropriate. TRIPS refers to "customary rules of interpretation of public international law" 59 -generally taken to mean the Vienna Convention on the Law of Treaties. 60 But, formally, the Vienna Convention discusses prior and subsequent treaties; it does not deal with agreements incorporated by reference. 61 The following Part explores the problems created by incorporation and how they have been resolved to date.

In other words, even under Paris and TRIPS obligations, states remain substantially free to regulate the registration of trademarks under national law, so long as there is no interference with their form.

The opinion is at least as significant for what the Appellate Body did not do as for what it did. The EC had criticized the Panel that initially resolved the dispute for resorting directly to the negotiation history of the Paris Convention instead of relying first on the rules of the Vienna Convention, 68 which, per Article 32, would have required an ambiguity before resort could be made to background materials. 69 Had the Appellate Body adopted

B. Dealing with Potential Discrepancies Between TRIPS and the Incorporated Conventions

We deal separately below with cases where TRIPS clearly and intentionally imposes greater obligations on member states. TRIPS was a Berne-plus and Paris-plus convention, so these are to be expected. See infra text accompanying notes 113-127.

Convention through the opportunity for dispute settlement within the WTO framework, panels will respect the intellectual property origins of the dispute.

Relying on WIPO conventions in this manner is, however, fraught with possibilities for mistake. Importantly, the EC-GI Panel relied on the connection between TRIPS and the Paris Convention because the interpretation the Panel proposed was consistent with the purposes of the TRIPS Agreement.

Elsewhere in its report, the Panel rejected efforts to incorporate from the Paris Convention definitions of terms used but undefined in TRIPS. 93 The Panel thus showed some sensitivity to when (and when not) to use analogous terms in the pre-existing conventions. Attention must also be paid to the historical context in which the various agreements were negotiated. Otherwise, the attempted analogy can seriously misfire.

96 and (3) the part of the EC-GI dispute in which the United States claimed that the EC's protection for geographic indications impinged on trademark rights.

See TRIPS, supra note 1, arts. 13 (copyrights), 17 (trademarks), 26.2 (industrial designs), 30 (patents). The patent provisions of the Agreement also permit exclusions from protection for certain important public purposes. See id. arts. 27.2-.3. Article 31 gives a modicum of authority to offer compulsory licenses.

95. The trademark provision is only a two-part test because it does not consider normal exploitation of the work. See id. art. 17 (allowing for limited exceptions provided they take account of the legitimate interests of the trademark owner and third parties). There are also differences in wording among the other three provisions.

For example, the copyright exception test, like the Berne Convention, uses the term "special." See TRIPS, supra note 1, art. 13; Berne Convention, supra note 58, art. 9(2). That could have been used to examine the justification for the measure; instead it was taken to mean "clearly defined." US-110 (5)

WTO, WIPO, AND BEYOND 1207 like "normal," "legitimate," "prejudice," and "unreasonable" normatively.

Instead, adjudicators did little more than mechanically count the number of rights within the bundle affected by the challenged provision, or the number of situations in which the exception was applicable. Every right received equal weight, no matter how small the impact on the right holder's market. 100 Markets the right holder had never utilized were counted equivalently to those that it had. Economic effects were regarded as paramount, and estimates of loss were extremely generous.

101 At the end of the day, Canada and the United States were not permitted to make allowances for user interests.

What appears to have happened is that the panels relied too heavily on the provenance of these tests. All are based on a threepart exceptions test found in Article 9(2) of the Berne Convention, 102 and the panels may have assumed that because the tests derived from a WIPO instrument, they would automatically balance user and producer interests appropriately. Apparently, the panels did not appreciate how radically the context changed when these provisions were adapted for TRIPS.

¶ 7.671. It also took into account the broader principle of discretion regarding precise implementation found in Article 1.1 of TRIPS. See id. ¶ 7.682. 100.

To be sure, Canada-Pharmaceuticals rejected the idea of simply counting rights. Canada-Pharmaceuticals, supra note 38, ¶ 7.32. But it refused to consider whether some rights are more important than others and in fact appeared to do no more than count rights. See id. ¶ 7.33-.34.

For example, the US-110 (5) Panel found that EC copyright holders could lose as much as $53.65 million per year. US-110 (5), supra note 58, ¶ 6.253. Later, an arbitrator found the amount was only € 1,219,900 per year (this at a time when a dollar and a euro were close to parity). Award of the Arbitrators, United States-Section 110 (5) of the US Copyright Act, Recourse to Arbitration Under Article 25 of the DSU, ¶ 5.1, WT/DS160/ARB25/1 (Nov. 9, 2001).

The opportunity to consider this issue actually arose in the US-110( 5) case, where the EC asked the Panel to consider how Article 13 of TRIPS, the copyright test, applied to rights-like the rebroadcast right-that were not within the ambit of Berne's exceptions test.

The Canada-Pharmaceuticals case is somewhat similar. The Panel in that case also canvassed the laws of other countries. Although it held that "the subsequent acts by individual countries did not constitute 'practice in the application of the treaty which establishes the agreement of the parties regarding its interpretation' within the meaning of Article 31.3(b) of the Vienna Convention," Canada-Pharmaceuticals, supra note 38, ¶ 7.47, it did appear to consider them when determining the legitimate interests of right holders.

D. Coping with TRIPS Standards Expressly Different than the WIPO Conventions

124 But without apparently weighing the interests involved, the Appellate Body concluded that the length of the term was a "right" and not the result of the "act" of granting a patent; it thus held the TRIPS term to apply retroactively. 125 The adjudicators were equally undeferential to Canada's own weighing of the interests-the Panel rejected Canada's argument that its term (seventeen years from issuance, as opposed to the TRIPS Agreement's twenty years from filing) was effectively compliant with TRIPS.

126 Canada was thus left with no flexibility to protect the public from windfall gains by right holders. 123. Significantly, the Berne Convention does contain a provision on the retroactivity issue-a complex provision that makes retroactivity turn on whether the work remains protected in its country of origin. Id. ¶ ¶ 80-101. 127.

Article 28 of the Vienna Convention, which sets out a rule of non-retroactivity with respect to acts and facts predating a treaty, might have also furnished the Appellate Body with a vehicle for giving Canada the flexibility to strike this balance on its own. However, the adjudicators instead used Article 28 to reject Canada's position by reasoning that a rule that refers to a "situation which ceased to exist" could not apply to subsisting patents. Id. ¶ ¶ 72-79. Arguably, the Canada-Pharmaceuticals Panel's decision to consider

E. Using Post-TRIPS WIPO Developments to Inform TRIPS

While TRIPS leaves members free to increase the level of their own domestic protection, many of these developments require a collective response. Under current conditions, these responses are taking place outside the WTO, including in WIPO, thus raising the question whether new (or newly modified) WIPO instruments should also be factored into the interpretation of the TRIPS Agreement.

III. INTERPRETIVE APPROACHES AND RELEVANT SOURCES

TRIPS Council reviews can, of course, provide some (non-authoritative) guidance on laws that have been enacted. See Paul Vandoren, The Implementation of the TRIPS Agreement, 2 J. WORLD INTELL. PROP. 25, 29 (1999). However, it does not provide advice formally through existing review mechanisms on whether proposed legislation is compatible with TRIPS.

137. For example, Indian law aimed at preventing evergreening has been heavily criticized on TRIPS-compatibility grounds. See Posting of Tushar Dhara, Thoughts on the Gleevac Controversy, to India Unplugged (Mar. 14, 2008), http://arthedains.com/ indiaunplugged/2008/03/14/87 (outlining the objections of pharmaceutical companies to the Indian Patents Act on the grounds that the statutory provision was vague and ambiguous and contrary to the requirements of the TRIPS Agreement and the Indian constitution).

A. The Role of the TRIPS Agreement's Principles and Objectives in Interpretation

One problem that emerges clearly from studying the existing case law is that a strategy for balancing interests and responding to change that relies solely on the bare text of the incorporated WIPO conventions is likely to fail. Despite the valiant efforts of the Appellate Body in Havana Club (and in other cases as well 138 ) to preserve flexibility for member states by relying on WIPO conventions for guidance, there are too many inconsistencies, differences, and transpositional errors for this strategy to fully succeed.

Significantly, however, TRIPS furnishes its own guidance, quite apart from the multi-part exceptions tests discussed earlier. The Objectives of the TRIPS Agreement are stated in Article 7 as the use of intellectual property rights to promote innovation "to the mutual advantage of producers and users . . . in a manner conducive to social and economic welfare."

139 Furthermore, Article 8 (Principles) permits members to adopt measures that protect public health and promote sectors of vital interest to their economies and to technological development (so long as they are consistent with the Agreement).

140 So far, these provisions have not played an important interpretive role. Indeed, the Canada-Pharmaceuticals Panel essentially wrote them off, rejecting the claim that they should be used to determine whether Canada's policies on behalf of generic competition fall within the patents exception provision.

See, e.g., supra note 71 and accompanying text (discussing India-Pharmaceuticals). Some panels have been similarly conciliatory, as the China-Enforcement case demonstrates. Id.

( While the Panel agreed that the sentiments expressed in the Objectives and Principles had to be "borne in mind," it also warned against using these provisions to alter the deal struck in the Uruguay Round.

As Peter Yu so convincingly argues, that reluctance to impose a purposive gloss must change. 142 The Doha Declaration on the TRIPS Agreement and Public Health specifically stated that "each provision of the TRIPS Agreement shall be read in the light of the object and purpose of the Agreement as expressed, in particular, in its objectives and principles." 143 The status of the Declaration is not entirely clear (it too is a post-TRIPS development that arguably should be taken into account in interpreting the Agreement).

See supra notes 109-12 and accompanying text. 153.

The TRIPS Agreement itself already identifies enforcement measures as an area where states are to be given particularly generous room for maneuver. See TRIPS, supra note 1, art. 41.5.

WTO, WIPO, AND BEYOND 1219 intellectual property need to be concerned about flows in both directions.

160 thus, Canada's laws had a serious potential impact on trade in goods.

162 Accordingly, such activities might not be regarded as TRIPS violations, even if substantially similar actions by developed countries would be. See US-110 (5), supra note 58, ¶ 2.5-.6. 160.

See Canada-Pharmaceuticals, supra note 38, ¶ 2.1. 161.

164 If trade-relatedness were made a criterion for determining TRIPS compatibility, nations would have more room to adapt their laws to domestic needs and to make them responsive to local changes in circumstances.

Our short survey of the TRIPS cases reveals that the panels and Appellate Body have on occasion taken an eclectic approach 164.

Events post-TRIPS are relevant for many of the same reasons. Post-TRIPS practices also speak to a country's understanding of both its TRIPS obligations and the requirements of the underlying Paris and Berne Conventions. Consulting them contributes to a coherent understanding of the international intellectual property regime as a whole.

EC-GI, supra note 29, ¶ ¶ 7.573 (on the Budvar issue), 7.667-.679 (on how EC handled applications), 7.674 (on instances of potential confusion). In its analysis of the trademarks exception test, the EC-GI Panel also drew significant support from the example of an acceptable practice included in Article 17 of TRIPS, which allows fair use of descriptive terms. Id. ¶ 7.655. When TRIPS lawmaking resumes, drafters should keep in mind how useful it is to provide adjudicators with such examples.

Elsewhere in its report, the Panel also looked at implemented laws operating in other countries, a method of interpretation that more formally satisfies the understanding of state practice in the Vienna Convention. See id. ¶ 7.642.

181 While many of them may be in the contracting parties' mutual trading interests, they should not be viewed as evidence of how the WIPO instruments or the TRIPS Agreement should be interpreted. Nations that have not received the quid pro quo should not be required to nonetheless accord higher levels of protection to intellectual products.

WTO, WIPO, AND BEYOND 1225 adapting the role of state practice as an interpretative device to require consensus across countries of different development.

182 2. Subsequent WIPO Material. The most straightforward way to keep TRIPS current with changes in the innovation landscape is to take post-TRIPS developments in international intellectual property lawmaking into account in interpreting the Agreement. Article 31.3(a) of the Vienna Convention allows resort to subsequent agreements among all of the parties, and, as we saw, the US-110 (5) Panel relied on the WCT to interpret the copyright exceptions test of the TRIPS Agreement.

183 It remains to be seen whether the Appellate Body will agree to this approach and, if it does, how much further it would go. 184 The US-110 (5) Panel was careful to note that the WCT was concluded only a year after TRIPS;

185 negotiators could not have anticipated agreements made much later. The WCT is also a completed treaty, although it had not entered into force at the time the Panel consulted it.

186 More informal WIPO actions, such as the Reports of Standing Committees, Model Laws, or the advice given by WIPO technical advisors to WTO members, present a very different situation. Finally, the WCT is an easy case because it deals with the same type of works that are covered by TRIPS, and it supplements (increases) the level of intellectual property protection.

187 Far more tenuous would be the incorporation of instruments that recognize rights in new kinds of subject matter-databases, folklore, genetic endowments, or traditional 182.

Cf. Laurence R. Nonetheless, a strong case can be made for consulting many of these materials. Certainly, contemporaneity with TRIPS should not be dispositive. Indeed, the more distant from TRIPS, the more likely the measure will reflect members' efforts to cope with new developments in TRIPS-consistent ways. If one understands the interpretive project as avoiding the obsolescence of the system of international intellectual property rather than an historical inquiry designed to divine what negotiators thought appropriate in 1994, this argument is even stronger.

Cf. STEPHEN BREYER, ACTIVE LIBERTY: INTERPRETING A DEMOCRATIC CONSTITUTION 16 (2008) (noting that the drafters of the U.S. Constitution used the words "We the People" rather than "we the people of 1787").

See US-110 (5), supra note 58, ¶ 6.68. Admittedly, the parties to the dispute had both ratified it, but the Vienna Convention is usually interpreted as requiring ratification by the parties to the agreement at issue, not the dispute.

190. ). Thus, as we saw, the US-110(5) Panel took account of the WCT, even though that agreement had yet to enter into force. 194 Notably, the WCT was heavily debated in an exceedingly open process.

In contrast, the China-Enforcement Panel, when considering what counted as "commercial scale" for determining whether China had breached its enforcement obligations, consulted how that term was used by the WIPO Committee of Experts on Measures Against Counterfeiting and Piracy and the Draft Model Provisions for National Laws set out in a memorandum by the International Bureau of WIPO.

The Joint Resolution Concerning Provisions on the Protection of Well Known Marks, a 1999 document interpreting Article 6bis of the Paris Convention, furnishes an example of how this approach could work.

199 TRIPS was concluded before the Internet revolutionized global marketing. Consequently, the negotiators did not grapple with the ramifications of e-commerce, including the extent to which it increases the likelihood of consumer confusion and leads to interference between domain 193.

See supra text accompanying notes 179-82 (noting the extent to which states have been forced into "TRIPS-plus" measures through bilateral agreements).

WTO, WIPO, AND BEYOND 1229 calls where the work of WIPO could be helpful in determining whether TRIPS covers the new subject matter; patent protection for software is an example. 205 But new kinds of intellectual property are likely to require new minimum standards. Thus, even when there is substantial activity in WIPO, extending coverage to new fields is best done through formal revision of TRIPS rather than through more ad hoc actions, such as adjudication.

Expanding the sources to which panels might refer is part of a larger effort to understand the international intellectual property system as a broad regime with a number of constituent parts.

The international intellectual property system has always been highly textured. In the past, it required regard for national developments and a web of bilateral agreements. 208 As previously noted, the current system is even more complicated, for many of the moving parts are now multinational in nature, compelling 205.

See Dreyfuss & Lowenfeld, supra note 13, at 284-97 (noting that the Agreement only specifically requires copyright protection for software).

Collectively, these arguments represent a call for deciding international intellectual property cases on the basis of a richer factual and normative record. How is this to be achieved within the WTO dispute settlement machinery? It appears that the Appellate Body approves of the practice, initiated by the Havana Club Panel, of asking the International Bureau of WIPO for relevant information on the negotiation history of particular agreements and subsequent developments.

This practice apparently follows one that the TRIPS negotiators used themselves; indeed, the document that the TRIPS Negotiating Group asked the International Bureau of WIPO to prepare was itself used in the US-110(5) case. 212 As we saw, WIPO does not have a seat at the table in the meetings of the TRIPS Council; asking it to provide its views during dispute resolution interjects 209.

See Howse, supra note 57, ¶ 5 (suggesting "the 'mainstreaming' of the general normativity of human rights into the making and administrating of global economic and social regulation and policy"). 210.

See, e.g., US-110 (5), supra note 58; Canada-Pharmaceuticals, supra note 38. 211.

214 as previously noted, the WTO has an agreement with WIPO to assist in this process.

See Howse, supra note 57; Matthews & Munoz-Tellez, supra note 4. 217.

222 may be one reason that panels are reluctant to rely on the former or to give meaning to the latter. 223 To the extent that other materials supply context

10 CARDOZO L. Graeme B. Dinwoodie, Trademarks and Territory: Detaching Trademark Law from the Nation-State, 41 HOUS. L. REV. 885, 955-66 (2004). 10. See Graeme B. Dinwoodie & Rochelle Cooper Dreyfuss, International Intellectual

See Dinwoodie & Dreyfuss, supra note 10, at 435; Graeme B. Dinwoodie &

34.See Dinwoodie, supra note 13, at 80-84 (describing how WIPO has successfully employed mechanisms to produce soft law instruments such as the Uniform Domain Name Dispute Resolution Policy (UDRP) that may in practice turn out to be harder law).35.See, e.g., WIPO, Use of Trademarks on the Internet: Issues Paper, Ficsor, who served on the panel that resolved a patent dispute involving Canada. See Panel Report, Canada-Patent Protection of Pharmaceutical Products, WT/DS114/R (Mar. 17, 2000) [hereinafter Canada-Pharmaceuticals].

of the US Copyright Act, ¶ 6.41, WT/DS160/R (June 15, 2000) [hereinafter US-110(5)]. 59. DSU, supra note 16, art. 3.2. 60. Vienna Convention on the Law of Treaties, May 23, 1969, 1155 U.N.T.S. 331 (entered into force Jan. 27, 1980) [hereinafter Vienna Convention]; see Steven P. Croley & John H. Jackson, Appellate Body Report, United States-Section 211 of the Omnibus Appropriations Act of 1998, WT/DS176/AB/R (Jan. 2, 2002) [hereinafter Havana Club].

Havana Club, supra note 63, ¶ 19.69.Cf. US-110(5), supra note 58, ¶ 6.41 ("We note that Article 30 of the Vienna Convention on the application of successive treaties is not relevant in this respect,

1. 77. TRIPS, supra note 1, art. 15.1; Havana Club, supra note 63, ¶ 191. 79

See, e.g., Canada-Pharmaceuticals, supra note 38, ¶ ¶ 7.20-.21.

PAUWELYN, supra note 44, at 265. The Panel in the Canada-