IP Judges In Developing Countries Hand-Tied By Local Laws, Justice Says

Enforcement of intellectual property rights can be unbalanced in developing countries because local laws are crafted in a way that makes it difficult for judges to bring balance in their rulings, a former justice from South Africa told the World Intellectual Property Organization last week.

Justice Louis Harms, former deputy president of the Supreme Court of Appeal of South Africa and extraordinary professor at the University of Pretoria, gave a presentation during the 11^th session of the WIPO Advisory Committee on Enforcement on 7 September.

Harms, who participates in training sessions for the WIPO division called Building Respect for Intellectual Property, talked about the approach adopted during those training and information sessions. The summary of his presentation is in this document [pdf].

He said training sessions are provided at the request of member countries, and are mainly targeted at the judiciary, law enforcement officials, and custom officials. He has been involved in training in countries in Africa, the Caribbean, the Middle East, South Asia, and the Far East, he said.

It is important to remember, he said, that talking about enforcement cannot be done without talking about substantive issues, because enforcement is always dependent upon substantive issues.

He later told Intellectual Property Watch that the ACE is an enforcement seminar, it does not talk about substance, but balancing depends on substantive laws.

TRIPS-Plus Laws Affect Balance

One of the challenges is that IP laws differ from country to country, Harms said. Most developing countries are TRIPS-compliant [compliant with the World Trade Organization Agreement on Trade-Related Aspects of Intellectual Property Rights], he said, but a number of them are not TRIPS-compliant, and then some are based on TRIPS-plus basis, which affects the balancing issue.

“It is important for us to emphasise that law is about balance,” he said, adding “There is a balance between parties and there is a balance between the state and parties.”

Some laws are not balanced and if the laws themselves are not balanced, he said, the ability of the judiciary to provide some balance is restricted.

There are several reasons why law themselves may fail to provide proper balance, he explained, such as temporary political and economic issues, requirements in trade agreements, and sometimes unintended consequences from another piece of legislation.There is also in the IP field a legislative inertia, he said, which comes from the lack of interest of legislators to keep laws up to date and to see that they comply with TRIPS.

“There are international rules, but we always have to consider that the adoption, the interpretation and the enforcement are subject to local law,” said Harms. In many developing countries, IP is foreign or something new to society, and there is a lack of exposure to the judiciary, legal education, and experience, he said.

TRIPS says there must be a balance of rights and obligations, but “the point is TRIPS did not invent this idea,” he said. “At the opening speech of the Berne Convention for the Protection of Literary and Artistic Works in 1886, this was the point raised by the chair of that conference. So it is not a new idea. It is simply that is has not always been applied and is often being ignored.”

TRIPS requires criminalisation of counterfeiting and piracy, but some countries ciminalise patent infringement, he said. “We find developing countries that will have a provision in their law which criminalises all IP infringement – patent, trademark and copyright.”

For example, Harms told Intellectual Property Watch after his presentation, if a law indicates that for a first conviction of counterfeit the person should go to prison, it does not matter how serious the case is, the judge is bound to send the person to prison.

A country recently changed its copyright law to increase copyright protection to life plus 99 years, he said. This was made to accommodate one artist. But because of this national legislation, this also applies to all other foreign work, he added. How is the judge supposed to balance?  he wondered aloud.

In a small country, the law says that if a patent is infringed the sentence is that the infringer goes to prison. The judge has no leeway, no room to give some balance, he said.

As a further example of how implementation of international rules might impact the balance of rights, he told Intellectual Property Watch that for example, if the Berne Convention’s [pdf] so-called “three step test,” which determines the conditions under which some copyright exceptions might be granted, is applied in a very strict manner, the judge has very little room to manoeuver. Canada has a lax application of the convention and it gives room to the judiciary, he said.

The Berne Convention requests that “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,” which is usually described as the three step test.

IP Phobia, Recognition of Rights that do not Exist

During his presentation, Harms said there is some kind of “IP phobia,” and judges consider IP a difficult area and tend to avoid it, in particular if it involves technology, and enforcement might be out of balance.

Surprisingly, he said, in some countries rights that do not exist are recognised. In most judiciaries that he has been involved with, there is a belief that plagariam is a copyright infringement, or “they believe that generics infringe patent rights, which they don’t.”

It is important to understand what is infringing and what is not, because misconception can easily get enforcement out of balance, he said.

Many countries have prescribed sentences of IP crimes, which makes it impossible for the judiciary to balance. Over the years, there has been a change in the centre of gravity, he said, and “we do emphasise the question of justification of rights.”

“We invite people to consider IP enforement in a social context,” said Harms, and “to move away from counter-productive enforcement.”

One of the solutions to help enforcement unbalance, he later told Intellectual Property Watch, is to keep laws up to date. Because IP is not high on the agenda of some developing countries, or not even on their agenda, laws do not get changed.

 

Image Credits: WIPO