WIPO Enforcement Committee: Positive Sharing Of Experiences But Future Work Elusive

After two-and-a-half days of non-stop information sharing on ways to build respect for intellectual property and enforce IP rights, members of the World Intellectual Property Organization could not agree on the future agenda of the committee on enforcement.

A proposed item on WIPO enforcement-related technical assistance including a paragraph on how such assistance should help prevent abuse of IP rights enforcement procedures and encourage the use of flexibilities in the IP system was firmly opposed by developed countries, bringing discussions to a halt for now.

A summary by the chair [pdf] was also issued on the final day but could not be discussed and will have to be approved at the next session, said Amb. Thomas Fitschen, deputy permanent representative at the German mission and chair of the 9th session of the WIPO Advisory Committee on Enforcement (ACE), which took place from 3-5 March.

The future work of the ACE is a recurring issue as member states find it difficult to agree on the items that will be discussed, and on which presentations will be arranged by the WIPO secretariat. On WIPO enforcement-related technical assistance, developing countries have asked that the technical assistance is not solely focused on enforcement.

Earlier in the day, WIPO presented its recent activities [pdf] in the field of building respect for IP and said legislative assistance was provided on request and on a confidential basis. Legislative assistance, WIPO said, means to provide assistance on obligations under the World Trade Organization Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS), and flexibilities available under TRIPS.

Draft Future Work

After some time in informal consultations with regional coordinators on the final afternoon, Fitschen issued a draft work programme [pdf] for the 10th session of the ACE expected to take place in 2015. This draft document included elements of two initial proposals dating back from 8th session of the ACE: one from the Development Agenda Group (DAG), the other one from Group B, the developed countries’ group.

Group B and the European Union did not agree with this draft future work for the ACE proposed by the chair. Japan speaking for Group B said “building respect for IP should be interpreted in a comprehensive manner without shedding light on specific aspects in an unbalanced manner.”

In particular, Group B noted that the abuse of IP rights enforcement procedures and the use the flexibilities of the IP system were only part of the whole picture of IP enforcement or respect for IP. The group is concerned, the delegate said, that such specifications might send the wrong message to the outside that the ACE thinks those aspects are more important than others.

Egypt on behalf of the DAG underlined the compromise it had agreed to in the drafting of the draft future work programme compared to its original proposal, which was also noted by the chair. This was supported by Brazil, Pakistan and the African Group, which said that a balance in the understanding of IP was to be achieved.

Fitschen said everybody agreed on discussing technical assistance but the subject had already been repeatedly postponed. He proposed alternative language stripped of the controversial elements from his first proposal.

His proposal was that the paragraph relating to technical assistance be amended as follows: “3. Exchange of information and national experience on WIPO’s enforcement-related technical assistance, including legislative and administrative assistance, to build respect for IP, taking into account relevant Development Agenda Recommendations, and based on proposals and suggestions put forward by Member States.”

This new version attempted a broader approach than the original language, which included: “Exchange of information…. including legislative and administrative assistance which helps to prevent the abuse of IPR enforcement procedures and to use the flexibilities of the IP system.”

The DAG said it could not accept the new version of the text, a view supported by the African Group, South Africa, Iran, and Brazil.

Fitschen finally said that the DAG proposal, the Group B proposal, along with the Poland/United States/United Kingdom proposal on the Specialization of the Judiciary and Intellectual Property Courts, would be appear in the summary of the 9th session of the ACE to be taken up at the next session.

For the moment, the two items already discussed in this session of the ACE (“Practices and operation of alternative dispute resolution systems in IP areas” and “Preventive actions, measures or successful experiences to complement ongoing enforcement measures with a view to reducing the size of the market for counterfeited or pirated goods) will stand on the agenda for the 10th session.

“We had very substantive discussions with a lot of surprising information from the countries,” Fitschen told Intellectual Property Watch afterward. They showed “how inventive, how creative, how serious they are.”

“The general mood was good,” he said, noting that there was “a lot of interest” such as in the alternative dispute resolution presentations, because it is “a serious problem for many countries.”

Peru: Campaign against Piracy in National Interest

Earlier in the day, member states heard about the campaigns of the Copyright Directorate of Peru. A session document [pdf] was prepared by the National Institute for the Defense of Competition and Intellectual Property Protection (Indecopi).

Luz Caballero, the deputy permanent representative in Geneva, said the campaign against piracy is a national interest and Indecopi has a critical role to play in reducing and elimination illegal practices. In particular, she said Indecopi has promoted the legal use of software by small and medium-sized enterprises with very positive results, such as leading to an increase of 39 percent in the number of transactions in the licensed software marketing sector.

An “Anti-Piracy Crusade” was also led with representatives of the audiovisual industry, she said, to fight mass reproduction and distribution of copyrighted audiovisual works.

A national campaign “buy legal, buy original” was also launched, she said, through a website.

EU Commission: Rights Holders to Exercise Due Diligence

Jean Bergevin, head of unit, Fight against Counterfeiting and Piracy at the  European Commission (EC), presented preventive actions being developed by the Commission. The preventive actions are detailed in a session document [pdf].

The key objectives and approach of the EC in the field of IP enforcement are to optimise the incentives for innovation and maximise growth and sustainable job creation, Bergevin said.

Several factors are important, he said. Upstream, right holders have to exercise due diligence and ensure that providers and sub-contractors take appropriate measures to avoid that IP infringing products and services enter the market, he said. Some importers have been “less than careful in their practices,” he said.

Downstream, there is a series of intermediaries, such as shippers, retailers, wholesalers, and payment service providers. Their approaches have to be voluntary but have to be inclusive, he noted. Finally, consumers have to “buy into this,” he said. In general, he underlined, “consumers do not willingly go out to seek illicit products,” but they sometimes have a difficult time recognising what is legal or illicit on the market.

China’s Alibaba Vigilant on Counterfeit, Speaker Says

Ni Liang, senior director for the Security Department at the Alibaba Group (China), described IP protection practices of the group under an internet platform-based business model.

Founded in 1999, the Alibaba group started off with 18 members. It now employs 20,400 people. Its main business platform is Taobao.com, which is one of the most visited global websites, Ni Liang said.

The group sells an average of 48,000 products per minute and creates “massive employment,” he said, and has a strong IP rights protection team. Accoding to the session document [pdf], “According to a report recently issued by AliResearch and Tsinghua University School of Social Sciences, jobs directly and indirectly created by Alibaba’s retail e-commerce have reached 12 million.”

The group has a large team of volunteers composed of several thousand people, whose responsibility is to detect counterfeit products, he said. The total IP support team reaches 5,000 people, he said. “Alibaba has thus established a number of IP protection mechanisms that provide dispute resolution for complainants and respondents in an open, transparent, and timely manner,” according to the session document.

One such mechanism is the IP Platform, created in 2013, which offers a one-stop service for global right holders, he said.

Civil Society Requests More Transparency

Commenting on WIPO’s activities in the field of building respect for IP, the Third World Network said “it still remains unclear whether or not the content of WIPO’s activities are appropriate, in that [TRIPS] flexibilities are adequately addressed and development concerns given due weight.”

The group called for “an independent review of WIPO’s work on IP enforcement to be undertaken urgently to assess the orientation of its enforcement activities, as well as whether the essence of Recommendation 45 of the Development Agenda is being mainstreamed in its enforcement related activities.”

Recommendation 45 places IP enforcement in the context of broader societal interests and in particular development-oriented concerns.

The WIPO session document [pdf] presenting WIPO’s activity in the field of building respect for IP “clearly shows that the recipients of the technical assistance are judges, prosecutors, customs, police and numerous other policy makers. It is thus of utmost importance and urgency to ensure that the content being delivered by WIPO is appropriate and development oriented,” TWN said, asking for more transparency in WIPO’s activities on enforcement. They asked that presentations, background papers, and resource materials be available on WIPO’s website.

In another statement on the opening day of the session, TWN said, “A maximalist approach to IP enforcement hampers the technological catch up process of developing countries as well as legitimate business as was seen in the case of Apple.”

“After the US International Trade Commission ordered an import ban on iPhone 3GS, iPhone 4 and the 3G-capable first-gen iPad and iPad 2 on the grounds that Apple violated a Samsung patent,” the TWN representative said, “the US President intervened to protect the commercial interest of Apple. This is a good example of using flexibilities existing in national law to curb the harmful IP enforcement initiatives.”