By Catherine Jewell, Communications Division, WIPO
In November 2018, WIPO welcomed 120 judges from 64 countries to the inaugural session of the Intellectual Property Judges Forum at its headquarters in Geneva.
The event took place in the context of the Organization’s new orientation toward promoting the exchange of experiences and information among judges who handle intellectual property (IP) disputes, especially those related to the evolving business realities of the digital economy. Judges with many years of experience, as well as those with more recent exposure to adjudicating IP disputes, took part in the Forum.
On the sidelines of the Forum*, WIPO Director General Francis Gurry underlined the timeliness of this initiative. He noted that IP is now “a major factor in the economy all over the world so judiciaries around the world are confronting rather similar questions,” and that rapid technological change “is causing many new questions to arise and come before the judiciaries.”
“Our aim is to provide a forum for judges to be able to discuss some of these questions and challenges,” he explained, expressing the hope that the Forum will lead to “information sharing, experience sharing and even the identification of needs … to be addressed to ensure that we have an effective and balanced intellectual property system worldwide.”
This view was reiterated by Annabelle Bennett, Former Judge of the Federal Court of Australia and Chair of the WIPO Advisory Board of Judges, who noted that the Forum provided an opportunity for judges from both civil law and common law countries to “communicate with each other and talk about common problems that they can’t discuss outside the judiciary.”
In a series of interactive panel discussions, the Forum explored common themes that cut across jurisdictions, such as judges’ scope of discretion in granting remedies and handling public interest considerations as well as a range of emerging IP issues.
Many participants highlighted the value and importance of dialogue among judges. Colin Birss, Justice of the High Court of England and Wales, said that IP “is a completely international area.” He noted that there is a general expectation within the business community that IP rights, like copyright, have the same characteristics and work in the same way in all countries. “What we need is for judges to talk to each other” because they all “have the same problems and we can learn from each other.”
Notwithstanding the sovereign nature of a country’s decision to shape its own IP policies, Jeremy Fogel, Executive Director of the Berkeley Judicial Institute and Former Judge and Director of the Federal Judicial Center in the United States, said that bringing judges from different countries together created an opportunity for them to better understand how and why their IP policies and rules came into being. “If you understand why those differences exist, you can work with them. We’re not going to get people to change just because somebody else is doing something a certain way, nor should we, but we should talk to each other, we should understand each other’s values, reasons and policy choices and think about them.”
“I think judiciaries around the world have a lot to learn from each other. There’s actually a lot of information that judges have about judging, about decision making, and about policy that’s very helpful for us to exchange. We learn from each other; we get ideas that we can take back to our home countries and make things better,” he added.
Discussions affirmed the importance of exchanging information on landmark IP judgments, especially in the absence of statutes or legal precedent in a jurisdiction. The possibility to consult the logic and reasoning that underlies a ruling on a particular case was deemed of particular value to judges in formulating their own arguments. Notwithstanding the need to recognize the specificities of different legal systems, and to read judgments in their legal, technical and historical context, judges generally agreed that there is much to learn from the judgments of other countries and from the knowledge that others have tackled similar issues elsewhere. This was particularly relevant where parallel litigation on the same issue occurs in multiple countries.
Given the difficulties faced in accessing judgments from other jurisdictions, the judges called on WIPO to establish a database of landmark IP judgments from around the world.
Justice Bennett said that WIPO is “uniquely placed” to “put together a repository of judgments that people can access,” noting that the Organization “has the objectivity, the independence and the interest in the world of IP” to do this. This view was shared by many judges attending the Forum.
Participants also underlined the value of the Forum in enabling judges with limited experience in handling IP cases to get up to speed on IP and related laws. Irene Charity Larbi, Justice of the Court of Appeal in Accra, Ghana, noted that IP knowledge was rare among judges in her country. She said the Forum was an excellent opportunity for those new to the subject to learn more about emerging IP issues. “I’ve learned a lot,” she said. “I’m going to take it back to my country, hoping it will impact positively in developing our IP system.”
Max Lambert Ndéma Elongué, President of the Court of First Instance in Yaoundé-Ekonou, Cameroon welcomed the Forum, noting that “the scarcity of information in this field in Africa is a real problem.” He said the Forum offered an opportunity to “dig deeper into other systems for a better understanding of what is happening elsewhere and to share our experiences with colleagues who are coming from other horizons.”
He called on WIPO to establish a platform for judges to exchange information and views on decisions in their countries. Many judges echoed this request and underlined the importance and usefulness of such a platform in addressing emerging IP issues, in particular.
As companies seek to gain a foothold and expand market share in a highly competitive, technology-driven business environment, disputes, including over IP, are an inevitable part of life. When it comes to resolving those clashes, and enforcing IP laws, judges are in the front line. It is their role to examine the facts of a case, weigh the evidence and interpret relevant statutes and case law to determine appropriate legal remedies.
This is a daunting task, especially in a world in which the pace of technological development is far more rapid than the ability of policymakers to develop and adopt appropriate regulatory policies and legislation. As a consequence, more and more cases involving the use – and misuse – of IP rights end up in the courts. These cases often raise uncharted legal questions. And while judges operate within the confines of domestic laws, their decisions can resonate well beyond national borders. Why? Because the globalized and evermore interconnected nature of markets means that the infringement of IP rights covering goods and services that are global in their use can have an impact worldwide. In this context, the increasing uptake and use of IP rights around the world raises challenging questions – which is the relevant jurisdiction to hear a case, which laws are applicable, and whether foreign judgments on similar cases are valid, relevant or enforceable in a given jurisdiction? Judges everywhere are now routinely confronting such questions.
Amid the increasing volume and complexity of cases, courts are also facing mounting pressure from market players, in particular, to deliver judgments rapidly. This, in turn, is causing judiciaries to review, and where necessary, reform the architecture of their judicial systems. Some have established specialized courts to handle IP cases.
The Forum explored a broad range of emerging IP issues. In the area of patent law, questions about the patentability of new technologies, including difficulties in determining inventive step, attracted a lot of attention. The Forum also explored in some depth the challenges of balancing the rights of inventors with the public interest, such as in cases involving standard essential patents (SEPs) or compulsory licensing.
Discussions on trademarks focused on approaches to non-traditional marks, such as color, sound and olfactory marks and whether such marks can function as a trademark in terms of being able to distinguish the goods and services of one enterprise from those of another. The discussion revealed a wide range of approaches. In some countries, such marks can be registered if deemed to be inherently distinctive or to have acquired distinctiveness through use, while in others they cannot. The subjective nature of distinctiveness was also explored.
Some judges observed that there was a great deal of pressure in some quarters to extend trademark protection to non-traditional marks because trademark registration is a low-cost means of obtaining long-term protection. In some instances, they suggested, other categories of IP right might be a more appropriate means of protection. In this regard, they underlined the need to look at IP as a whole and the way in which each category of IP right fits into the overall system. Discussions also explored how different jurisdictions handle trademarks deemed to be offensive or contrary to public order.
The Forum also grappled with a range of copyright issues linked with the global uptake and use of digital technologies. Marie-Françoise Marais, Former Judge at the Court of Cassation in Paris, France, noted that the Internet had “changed everything. We lost our points of reference, we effectively changed practices and borders disappeared. As a judge, it is absolutely indispensable to understand how other judges respond, and to listen to what is happening in other countries and see how each one addresses this issue, which in the end unites us all.”
Issues of fair use, the liability of Internet service providers (ISPs), and ways to tackle and remedy online piracy were explored extensively. Judges acknowledged that the realities of the digital age are forcing a re-think of some copyright concepts. For example, can a non-human entity be considered an author in legal terms? What does private copying – a concept developed in the analogue world – mean in the digital world?
The judges recognized that technological developments are leading to new forms of interaction between humans and machines, as well as new business models and new types of infringement. In this context, they highlighted the need for holistic training programs to ensure judges are not only familiar with relevant laws but understand the real-world context in which IP disputes arise and their potential impact. They underlined the merits of practical, hands-on training and suggested that WIPO had a key role to play in facilitating such activity.
In summing up the value of the inaugural session of the IP Judges Forum, Justice Bennett said, “the rich exchanges that have taken place during the Forum show that there is strong demand for this platform and that judicial decision-making can be reinforced through such exchanges for the benefit of people and businesses around the world.”
The IP Judges Forum is an annual event. The next session will take place at WIPO’s headquarters in Geneva, Switzerland, from November 13 to 15, 2019.
*The WIPO IP Judges Forum operates under Chatham House Rule. Quoted commentary was gathered on the sidelines of the Forum.
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