Alongside this week’s meeting of the World Intellectual Property Organization committee on enforcement, an event featured a former South African Supreme Court judge presenting his views on IP enforcement. There is a need to go for the “big fish,” he said, and to bring balance in sanctions and enforcement procedures. He also described courts as finding that exceptions to copyright are a public right.

Justice Louis Harms, former deputy president of the Supreme Court of Appeal of South Africa gave a presentation on “A balanced approach to building respect for intellectual property and to IP enforcement in particular.” His remarks echoed some chapters of a WIPO publication he authored entitled, “The enforcement of intellectual property rights: A case book [pdf],” (3^rd edition 2012).

According to the book, the source of the international obligation to provide for criminal sanctions derives from the World Trade Organization Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS), in particular Article 61 (under section 5: Criminal Procedures). TRIPS flexibilities on enforcement for developing countries include waiving the obligation to have specialised IP courts, Harms said.

Limited IP Knowledge in Developing Countries

Harms said that in many developing countries, IP knowledge is still very limited. Law is about balance, he said, however sometimes laws may fail to provide proper balance, with unintended consequences which were not foreseen at the time of their drafting and adoption.

There are international norms, he explained, but the adoption of laws, their interpretation and enforcement mechanisms are subject to local law and customs. IP is still foreign for many societies, he said, and there is a lack of exposure, legal education, and experience.

Article 7 of TRIPS (Objectives) includes the need to balance rights and obligations. However, he said, the effect of Article 7 is not always seen in the developing world. In many countries, IP might create more false hopes and misplaced expectations than material benefits, he said.

The consequences of lack of balance include an “IP-phobia”, IP being considered as difficult, and enforcement perceived as out of balance. There is also the issue of “non-existent” rights being acknowledge with some confusion with generic medicines being considered as infringing IP rights, he said as an example. This stems from a lack of understanding of IP, he said. “A lack of boundaries invites a lack of respect,” he said

Right of the Public

In the area of copyright, he said, there is a growing approach that recognises the right of the public, rather than the conventional approach which considers that fair use exceptions are limited because the author’s rights are supreme.

He cited the United States fair dealing and fair use as being an example of a general approach, which may depart from the Berne Convention for the Protection of Literary and Artistic Works.

Some courts find that fair use is no longer an exception to copyright but is a public right, he said.

As an illustration, Harms cited the court case of Lenz v Universal Music in which Universal Music asked YouTube in 2007 to take down a video posted by a young mother featuring her son dancing to a song by the artist Prince. The Electronic Frontier Foundation (EFF) filed suit against Universal Music Publishing Group. According to the EFF, the US Court of Appeals for the Ninth Circuit ruled in September “that copyright holders like Universal must consider fair use before trying to remove content from the Internet.”

Go for the Big Fish

The target of criminal enforcement should move away from the “small fish,” he said, to turn its full attention to the big fish. There is a need to “target the mastermind.”

“One should not necessarily concentrate on counterfeiting,” and consider that the main counterfeiters are often active in other areas, such as fraud, tax evasion, racketeering and money laundering, and false labelling, said Harms. The idea is to see these crimes not in isolation but in a broader picture of crime in a country.

“Beware of abuse by IP right holders,” he said, citing as examples companies using the trademark register to stifle competition and not for its statutory purpose, giving intellectual property law a bad name.

Rights holders might also use the threat of criminal proceedings as leverage to obtain a civil settlement.

Too Severe Enforcement Counter Effective

On sentencing, he said that sentence levels and sentencing attitudes differ from society to society, but in general the deterring effect of sentences depends on the certainty of detection and conviction.

Citing Andreas Rahmatian, senior lecturer in Commercial Law at the University of Glasgow, he said “sentencing practice for trademark crimes should not neglect the issue of proportionality.”

Overly severe penalties may even encourage counterfeiting at a larger scale rather than deter it, he said, citing the same source.

Further citing Irina Manta, professor of law and director of the Center for Intellectual Property Law at Yale Law School, he said empirical data on norms and copyright infringement suggests that harsh sanctions, including criminal ones, may be ineffective in promoting lawful behaviour.

Strong-armed enforcement tactics induce strong anti-copyright aversion, he said, still citing Manta.

In conclusion, Harms said there is a need for a “change of centre of gravity,” consider IP enforcement in a social context, take into account legitimate public rights, and move away from “counter-productive” enforcement.

The 10th session of the Advisory Committee on Enforcement (ACE) is meeting from 23-25 November (IPW, WIPO, 24 November 2015).

Image Credits: Flickr Brian Turner