Hague Convention and IPR, CPT's January 12, 2001 comments to US Patent and Trademark Office

To: Elizabeth Shaw <elizabeth.shaw2@uspto.gov>
Jennifer Lucas <Jennifer.Lucas@uspto.gov>

cc: Jeffrey D. Kovar <Kovarj@ms.state.gov>
Manon Anne Ress <mress@essential.org>

From: James Love <love@cptech.org>
Consumer Project on Technology
http://www.cptech.org

Re: CPT's January 12, 2001 comments on IPR aspects of Hague Convention on Jurisdiction and Foreign Judgments in Civil and Commercial Matters

In June 2001, there will be an important diplomatic conference to consider a proposed Hague Convention on Jurisdiction and Foreign Judgments in Civil and Commercial Matters. This convention is the first major effort to address important jurisdiction issues for cyberspace, as they related to commercial matters. There are many important Internet related issues in the proposed convention, but perhaps non more vexing than those involving speech and intellectual property issues.

By making foreign judgments easier to collect, the proposed Convention will effectively extend the reach of national laws concerning patents, trademarks, copyright, trade secrets, unfair competition, libel, slander and of course nearly all other commercial matters. This can result in citizens of any country being impacted by laws in other countries. This will be true even for bad laws.

Governments who are involved in the Hague Convention negotiations are supposed to decide, by June 2001, if there will be a new global convention on jurisdiction and recognition of judgments, and if so, what will be the rules, and which areas of law will be covered. In the current draft, all aspects of civil and commercial law are covered, unless it is specifically exempted in Article 2. (It should be noted that the convention covers governments when they are engaged in civil or commercial disputes.)

The Convention is complex and the subject of several controversies, details of which are available here: http://www.cptech.org/ecom/jurisdiction/hague.html These comments will focus on only two important areas, the impact of the convention of free speech, and on the public's rights under intellectual property laws.

CPT asks that the convention be modified to explicitly protect free speech, and to exclude intellectual property, as it has for maritime, matrimonial, insolvency, wills and successions, and other areas of law.

In facilitating the collection of foreign judgments, the convention will increase the liability that citizen's face when publishing or receiving information or software, conducting business, or otherwise using the Internet. The reach and importance of foreign libel, patent, copyright, trademark and other laws will be expanded. Activities that are legal in one country can result in costly liabilities, so long as they constitute infringements or other civil liabilities in foreign countries.

Here are a few examples of areas where the proposed convention will present important problems:

1. Software and E-Commerce patents. At present there are national differences on the policies regarding the issuance of patents on software. Some countries, like the US, have opened the doors to patents on software, while others have not. Formally at least, patents on software are excluded from the European Patent Convention, and are a topic of considerable debate and controversy within Europe. There is also continual pressure for countries to accept patents on software. For example, some EU and World Intellectual Property Organization (WIP0) officials claim that Article 27.1 of the WTO/TRIPS accord requires countries to adopt software patents, arguing that software is a "field technology" that has an "industrial application." Whatever the merits of this argument, it at least presents the possibility that all countries that are WTO members will be required to grant software patents.

   While the USA is considered the most aggressive country in terms of issuing software patents, there is no reason to believe that this will be true in the long run, particularly if software patents are issued in countries that (a) have even worse systems for examining patents than the USA, or (b) seek to adopt an even more aggressive patent strategy in order to "tax" foreign e-commerce. By making it easier to collect foreign judgments, the Hague convention will shift the burden of paying for such patents to foreign citizens, giving every country an incentive to adopt anti-consumer policies. Foreign countries have latitude in determining how damages for infringement are calculated, and a wide range of activities can generate foreign infringement liability.

   Business Methods patents raise the same issues. Right now there is considerable controversy in the USA over the appropriateness of issuing patents on business methods, and indeed, even if one accepts the controversial notion that business methods are an appropriate topic for patents, there is ample evidence many such patents are of poor quality, for example due to inadequate research of prior art or poor judgments regarding standards for novelty. One can argue that this is a US domestic problem. But if the Hague convention on judgments covers patents, it will be a much larger issue. Why wouldn't one see foreign countries become very aggressive in terms of issuing business methods patents? And if they did, what recourse would we have under the Hague Convention? And what evidence do we have that foreign governments can do a better job than the US PTO on patent examination, or that the foreign courts will provide a competent and fair forum for evaluating business methods and software patent infringement claims?

2. Fair Use under copyright laws. There are large differences between countries with regard to copyright laws. Of particular concern to CPT are national policies on fair use. Many persons participate in Internet news groups and mailing lists, often redistributing portions of or even entire articles of selected stories in discussions of a wide range of topics. Teachers circulate information in classrooms for non-commercial use, including, for example, foreign video clips or articles from foreign web sites. NGOs and individuals provide hypertext links to articles from other web pages. Authors quote from other authors. Stories, books and movies explore ideas or themes used or developed earlier by others. Musicians sample music, or in various ways borrow or use from others. Software, telecommunications and computer engineers, pharmaceutical companies, automobile manufacturers and others use reverse engineering to understand how machines, software, drugs and other products are made, or how they can make interoperable products. Some of these activities are considered infringements, and others are considered fair use under various national legal systems. By including copyright infringement claims in the Hague Convention on foreign judgments, every author, every software developer, every musician, every student, and every citizen who uses or receives information, will have liability for foreign copyright laws. If there is an expectation that foreign copyright laws are more restrictive than domestic laws, then users lose rights. The public domain is reduced. This is our primary concern. We do not believe there is enough consensus regarding the scope and enforcement of copyright laws to rush toward a system to recognize foreign judgments for copyright infringement. On many of these areas, US law is considerably better in terms of protecting the public's rights than are at least some foreign laws. Indeed, with a large number of countries in the Convention, there will of course nearly always be some countries that have worse laws than the US, from the point of view of fair use. This provides opportunities for publishers to forum shop, and to litigate infringement claims in countries that are the least protective of the public's rights.

3. Free Software. The free software movement has created a large number of software programs that currently power the internet. Programs and distributions such as GNU/Linux, FreeBSD, Apache, sendmail, bind, gimp, GNOME, KDE, X- Windows, Emacs, and countless others are used throughout the world to run servers, create applications and provide services to businesses, non-commercial institutions and individuals. Microsoft sees the free software movement as its most important competitor in the server market, and this competition has kept the Internet more competitive and less monopolistic. Much of this free software is written by volunteers. If the Hague convention exposes these volunteers to new risks for foreign infringement suits, it may have a disastrous impact on the continued growth and development of the free software movement, and harm the Internet.

4. Sui generis IPR regimes. One particularly difficult area for the Hague Convention concerns the US liability for new sui generis IPR regimes, including those that do not exist in the USA. Some of these laws run counter to US legal traditions, are highly anticompetitive, or suffer from poor administration. An example of a problematic foreign sui generis regime is the new EU database protection laws.
5. Use of Government Copyright to suppress dissent or criticism. Many foreign governments claim copyright in government documents. For example, in the UK, the government has sued David Shayler, a former MI5 employee, and nine publications, over crown copyright claims in documents David Shayler had disclosed, that reveal official government wrongdoing. There is another UK case involving Nottinghamshire's County Council, where the government used the copyright law to suppress an embarrassing report regarding an investigation into child abuse. The Nottinghamshire government threatened copyright litigation against several parties for publishing this report on the Internet, including US web sites. According to recent news reports, Hitler attempted to use copyright laws to repress US circulation of materials he wrote. Under a new Hague Convention, one can imagine China, a Hague conference member that has a repressive government, using government copyright laws to suppress publication of information about government activities. US citizens have an interest in these issues, even when the enforcement of the foreign judgments take place in non-USA jurisdictions. For example, when sued, David Shayler was living in Paris, but the information he disclosed was of interest to the entire world, including to US citizens.

   (For more information regarding the Nottinghamshire case, see: http://samsara.law.cwru.edu/comp_law/index.html#Not
   http://www.users.globalnet.co.uk/~dlheb/Default.htm
   http://samsara.law.cwru.edu/comp_law/notts.txt,
   and for an analysis of the Shayler case, see: http://www.thenation.com/issue/000522/0522wiener.shtml)

These are only a few examples of a much large class of problems that are presented by inclusion of intellectual property in the Hague Convention on Jurisdiction and Foreign Judgments. CPT encourages the US government to hold public meetings to discuss the IPR aspects of the Hague convention.

As noted above, CPT's web page on the Hague Convention is here: http://www.cptech.org/ecom/jurisdiction/hague.html. CPT also asks that the US government find the resources to provide a web page on the Hague convention that is updated regularly with current information about the Convention, and provide information about how citizens can provide comments to governments who are participating in the Hague negotiations, or participate in important Hague meetings, including the June 2001 diplomatic convention.

Sincerely,

James Love
Director
Consumer Project on Technology
P.O. Box 19367
Washington, DC 20036
http://www.cptech.org