I. Overview

Because self-execution is a matter of national law and policy, to the extent that something can be characterized along the dimension of self-execution, it reflects the approach that each state takes to the role its international commitments play in domestic disputes. Some states consider international law to be part of the domestic regime. In these monist jurisdictions, treaties are generally considered to have direct effect. An example, cited by Martin Senftleben, is a 1999 decision of the German Federal Court of Justice.Footnote ¹ The decision, which required the Technical Information Library Hanover to pay the plaintiff equitable remuneration for its copying of scientific articles, was based directly on the three-step exceptions test in the Berne Convention, which permits certain unauthorized reproductions of protected works.Footnote ²

In theory, a monist system has several advantages. It can save legislative resources because there is no need for implementing measures.Footnote ³ Moreover, for countries new to the relevant field, adopting a self-executing treaty essentially imports a ready-made legal regime – often one that was drafted and adopted by countries with substantial experience in the area. A monist policy can also act as a signal that the country is prepared to adhere to the obligations set by the international community. For countries that see their future as enhanced by international cooperation and transnational business dealings, it can be highly beneficial to adopt what is essentially a pre-commitment strategy.Footnote ⁴ In bypassing the need for implementing legislation, a monist jurisdiction ensures that its international obligations will not be derailed by corrupt officials, local lobbyists, or legislators who wish to pursue other objectives. In some monist states international law may even trump later-enacted legislation.Footnote ⁵ Accordingly, a monist approach assures treaty partners that subsequent legislatures cannot easily undermine the nation’s commitments.

There are, however, countries that regard international and domestic laws as belonging to separate spheres. In these dualist systems, an international agreement is not internally binding until the national legislature transposes its provisions into domestic law. For example, under the UK doctrine of parliamentary sovereignty, Parliament must enact legislation to make a treaty domestically effective.Footnote ⁶ Thus, a court in the United Kingdom could never require one party to compensate another based solely on a provision of the Berne Convention.

A dualist approach has much to recommend it. It provides the legislature with a chance to reconsider the outcome of negotiations conducted in locations remote to its capital. Thus, at least in theory, a dualist approach promotes local accountability.Footnote ⁷ Furthermore, a dualist approach allows lawmakers to tailor the law to the specific circumstances of the country, to clarify the obligations set out in the instrument, and to put them into terms that can be more easily applied by judges and understood by lawyers and the laws’ consumers. Transposition also offers the opportunity to ensure coherence with other domestic legal regimes that use similar terminology or address related issues. Furthermore, making the change alerts the legislature that new administrative resources may be needed. When international and national measures are on a different footing, subsequent governments may retain more freedom to alter local law as needs change.

As the discussion of the advantages of monist and dualist systems suggests, both approaches also have disadvantages. The monist approach can be rigid. Moreover, circumventing the legislature can undermine democratic values. Since groups that can afford to lobby at the international level are often better heeled and more effectively organized than those that operate domestically, public choice theory suggests that a monist state’s legal regime will be more inclined than other systems to favor the rich over the poor and to favor concentrated business interests over the interests of dispersed consumers.Footnote ⁸ Dualist systems do not have this problem, at least not to the same degree. However, they may have a harder time in negotiations because they cannot be fully trusted to implement the agreements they sign or ratify.Footnote ⁹ And to the extent that their legislatures do fail to follow through and implement, they can find themselves in violation of international law.

Because of these problems, most systems are not entirely monist or dualist. For example, and as discussed further below, even monist systems do not generally regard the TRIPS Agreements as self-executing.Footnote ¹⁰ By the same token, some dualist countries may give direct effect to human rights agreements.Footnote ¹¹ Furthermore, many countries are neither monist nor dualist, but rather take a mixed approach to self-execution and examine a constellation of factors to determine whether a particular instrument (or provision) has a direct effect. The United States furnishes an example. Before relying on the Berne Convention to order a defendant to compensate a plaintiff, a US court would ask whether the Convention – or its three-step exceptions test – is self-executing.

Of course, the failure of a state to implement an agreement or regard it as self-executing will put that country in violation of international law. Nonetheless, even after a violation is found, local implementation will still be required. Experience suggests that this may not always be feasible. Consider, for example, the US-110(5) case in the World Trade Organization (WTO).Footnote ¹² Although a WTO panel held that the United States had violated the three-step exceptions test of the TRIPS Agreement,Footnote ¹³ the challenged exception remains good law in the United States. One reason may be that the provision was part of a legislative package: in exchange for extending the term of copyright generally, Congress enacted the challenged provision, which benefits certain access interests. To adhere to the WTO decision, the United States would have to unravel the sort of legislative compromise that is typical of democratic governance.Footnote ¹⁴

II. The Mixed Approach

For countries that take a mixed approach, determining which international measures have direct effect is not an easy task. The experience of the United States is illustrative. The Supremacy Clause of the US Constitution specifies that “Treaties … shall be the supreme Law of the Land; and the Judges in every State shall be bound thereby.”Footnote ¹⁵ While that language implies that the Founders adopted a monist approach, it was clear by the early nineteenth century that the clause would not be interpreted that way. In an 1829 decision, Foster v. Neilson, Chief Justice Marshall limited its monist effect, reasoning that “[a] treaty is in its nature a contract between two nations, not a legislative act. It does not generally effect of itself, the object to be accomplished, especially so far as its operation is infra-territorial; but is carried into execution by the sovereign power of the respective parties to the instrument.”Footnote ¹⁶

In that case, Chief Justice Marshall read the English language version of a land grant treaty between the United States and Spain as contractual and held that it was not self-executing. But as a subsequent case soon showed, Marshall’s analytic approach was unpredictable. The Supreme Court encountered the same treaty four years later, but this time it was presented with the equally authentic Spanish version. In that case, the Court found the agreement to be self-executing.Footnote ¹⁷

This indeterminacy went on for many years. Typically, the treaties that reached the Supreme Court were found to be self-executing.Footnote ¹⁸ For example, in a 1940 case, Bacardi v. Domenech,Footnote ¹⁹ Chief Justice Hughes held that a Puerto Rico statute prohibiting use of certain trademarks was preempted by the national treatment provision of the Inter-American Trademark Convention, which the Court considered self-executing. Following the Court’s lead, in its 1956 decision, Vanity Fair v. Eaton, the Second Circuit held that the provision of the Paris Convention on unfair competition was self-executing.Footnote ²⁰ But even though early Supreme Courts tended to interpret international agreements as having direct effect, lower courts did not understand the Court to have created a presumption in favor of self-execution. For instance, in Robertson v. General Electric, a patent case, the Fourth Circuit considered a provision of the instrument ending World War I that extended the time for acquiring a priority date under the Paris Convention. It found the provision was not self-executing.Footnote ²¹

To a degree, matters changed with the Supreme Court’s 2008 decision in Medellín v. Texas,Footnote ²² where the Court established a framework that focused on the instrument’s language and the events surrounding its adoption.Footnote ²³ The question in that case was whether Texas was required to reexamine the conviction of a Mexican gang member for rape and murder. The defendant contended the conviction was defective because Texas had failed to notify Mexico of the defendant’s detention, as required by the Vienna Convention on Consular Relations and by a decision of the International Court of Justice (ICJ) holding that the Convention was meant to preempt a Texas procedural rule that barred further review.Footnote ²⁴

To decide if the Vienna Convention or the ICJ decision had direct effect, Chief Justice Roberts began with the text of the agreement and looked for a “clear and express statement” that it was binding on courts.Footnote ²⁵ Because the agreement to submit to the jurisdiction of the United Nations system used the phrase “undertakes to comply,” he reasoned that the agreement did not function as a directive to the judicial branch.Footnote ²⁶ Rather, it called upon other arms of government to take specific actions.Footnote ²⁷ To shore up this view, Roberts considered the negotiation and drafting history as “aids to … interpretation”Footnote ²⁸ and analyzed the structure of the agreement as a whole. Under the UN Charter, a state aggrieved by noncompliance with an ICJ decision has, as its sole remedy, referral to the UN Security Council. Since the United States has a right to veto Security Council resolutions, the Justice reasoned it must not be automatically bound by the ICJ decisions.Footnote ²⁹ Furthermore, he considered that the principal purpose of the Charter was to resolve disputes between governments, not to provide remedies to individuals like Medellín.Footnote ³⁰ He also noted that in contrast to many of the agreements that have been found to be self-executing, this treaty raised questions that were primarily political in nature.Footnote ³¹ Finally, he expressed willingness to give the government’s own interpretation of the non-binding nature of its obligations “great weight,”Footnote ³² suggested that the negotiators’ understanding of what the United States had agreed to was relevant,Footnote ³³ and noted that the post-ratification behavior of other member states indicated that none of them considered decisions of the ICJ to be binding.Footnote ³⁴

In the last decade, the American Law Institute (ALI) revised its Restatement of Foreign Relations Law in light of Medellín and its progeny.Footnote ³⁵ Although Medellín took a skeptical view of self-execution, and in remarks made out of court, Justice Scalia voiced even more adverse views to what he termed allowing foreigners to govern,Footnote ³⁶ the ALI does not regard the United States as having moved into the dualist camp. Rather, it recommends courts consider whether the “treaty provision is sufficiently precise or obligatory to be suitable for direct application by the judiciary” and whether it was “designed to have immediate effect, as opposed to contemplating additional measures by the political branches.”Footnote ³⁷ Additionally, the ALI suggests that courts should defer to Senate resolutions at the time when advice and consent were given and that they should consider whether implementing legislation is constitutionally required. Thus, treaties requiring the appropriation of money – which can only be accomplished by Congress – would never be regarded as self-executing.Footnote ³⁸ In Comments, the Restatement goes on to caution that self-execution is distinct from the question whether the provisions of the treaty create rights and remedies.Footnote ³⁹ That is, once a provision is found to be self-executing, it remains necessary to decide whether a litigant can obtain remediation for a violation of a commitment.

While not every state will follow the US analysis, it is not unlikely that states that take a mixed (or even a largely monist) approach will consider a similar set of issues: (1) the text of the agreement, including what it directs the parties to do and how precisely it delineates the obligations imposed; (2) the structure of the agreement as a whole, including whether it appears designed to have immediate effect and whether it contemplates action by other entities; (3) the negotiation history, to the extent it reveals the intentions of the parties; (4) the subject matter of the agreement and the branch of government responsible for (or constitutionally charged with) its oversight; (5) statements by the executive and legislative branches at the time the agreement was considered; and (6) the subsequent behavior of the other parties regarding the effect of the agreement.

I. The TRIPS Agreement

Although there has been debate on the issue,Footnote ⁴⁰ the WTO Agreements are not generally regarded as self-executing.Footnote ⁴¹ An examination of the TRIPS Agreement shows why. The Agreement starts with the admonition that “Members shall give effect to … this Agreement.”Footnote ⁴² Although this language could have been inserted to deal with dualist regimes,Footnote ⁴³ the provision goes on to state that members may provide more extensive protection and can “determine the most appropriate method of implementing the provisions.”Footnote ⁴⁴ None of that language suggests that the parties intended the provisions to have direct effect.

The structure of the Agreement is consistent with this conclusion. It includes transition provisions for less and least developed countries, which appear designed to give those countries space to enact legislation suitable to their needs.Footnote ⁴⁵ It also requires developed countries to provide technical and financial cooperation, including “assistance in the preparation of laws and regulations on the protection and enforcement of intellectual property.”Footnote ⁴⁶ Moreover, it instructs the Council for TRIPS to “review the implementation of this Agreement.”Footnote ⁴⁷ There is also nothing in the negotiation history that suggests it is self-executing, and it is difficult to see how certain provisions – such as measures that envision examination of advances to determine their suitability for protectionFootnote ⁴⁸ – could be effective without the legislature intervening to establish administrative agencies and procedures. Significantly, at the time TRIPS went into force, virtually all countries enacted implementing legislation. The United States even included in its implementation measure a statement that “[n]o provision of any of the Uruguay Round Agreements, nor the application of any such provision to any person or circumstance, that is inconsistent with any law of the United States shall have effect.”Footnote ⁴⁹

II. The Paris Convention

The situation under the Paris Convention is not as clear as it is under TRIPS. In part, that is because the language of the Paris Convention has changed over the century and a half in which it has been in force, and in part, it is because each of the provisions of the Convention uses different language. Thus, each must be analyzed separately. For example, the provision on unfair competition reads: “The countries of the Union are bound to assure to nationals of [other Union] countries effective protection against unfair competition.”Footnote ⁵⁰ The phrase “bound to assure” suggests a binding commitment. Moreover, “effective” is the type of standard with which courts are familiar. Furthermore, affording protection does not require the intervention of an administrative agency. Similarly, the telle quelle provision states that trademarks of one country “shall be accepted … as is in the other countries of the Union.”Footnote ⁵¹ “Shall” implies immediate action. In contrast, the section on registration provides that the conditions for filing and registering “shall be determined in each country of the Union by its domestic legislation” and the well-known marks provision states that “[t]he countries of the Union undertake” to provide that protection.Footnote ⁵² In both cases, it would appear up to the state to implement the provision.

As important, especially in countries that consider what the negotiators expected, GHC Bodenhausen, then Director-General of the World Intellectual Property Organization (WIPO), which administers the Paris Convention, produced a guide to the Stockholm Revision of 1967.Footnote ⁵³ In it, he acknowledged that some provisions are addressed only to states and that others require national implementation.Footnote ⁵⁴ But there is a long list of provisions that, he noted, “may directly govern the situation at issue,” depending on the position the relevant member state takes to self-execution.Footnote ⁵⁵ Interestingly, the measures listed are not always the ones that recommend themselves as self-executing. To be sure, Bodenhausen included the telle quelle provision. However, he also included the provisions on well-known marks and the conditions of registration.Footnote ⁵⁶

Courts in the United States have gone both ways on questions concerning the direct effect of the Paris Convention.Footnote ⁵⁷ As noted earlier, in Vanity Fair, the Second Circuit held that the unfair competition provision was self-executing (but did not interpret the provision as providing the defendant with relief). Other courts disagree.Footnote ⁵⁸ For example, in In re Rath, the Federal Circuit denied direct effect to the telle quelle provision, in a decision that suggested that it was the job of Congress to implement the Paris Convention – and not the court’s role to fix congressional failure to comply with international law.Footnote ⁵⁹

The Supreme Court has yet to weigh in on the domestic effect of the Paris Convention, but a strong argument can be made that it is likely to agree with the Federal Circuit. As Justice Scalia’s comments about foreign rule suggest, views on self-execution have evolved and there is now considerably more skepticism about giving agreements direct effect than there was when the Paris Convention was promulgated and revised. Certainly, Medellín imposes a more stringent test than the one the Second Circuit applied in Vanity Fair. Moreover, experience under the Convention has demonstrated that the meaning of terms like “unfair competition” and “well known” vary quite significantly among jurisdictions.Footnote ⁶⁰ Given these differences, the terms are not likely to be regarded as “sufficiently precise … to be suitable for direct application by the judiciary,” as required by the Restatement Foreign Relations Law.Footnote ⁶¹

III. The Berne Convention

In the United States, the analysis of the Berne Convention is very different. The United States did not join Berne when it was first promulgated in the nineteenth century. By 1986, when it acceded, doubts about self-execution had grown (perhaps especially for an instrument closely associated with the droit d’auteur approach to protection with which the United States disagreed). Accordingly, in its implementation Act, Congress provided that “[t]he Convention for the Protection of Literary and Artistic Works, signed at Berne, Switzerland, on September 9, 1886, and all acts, protocols, and revisions thereto … are not self-executing under the Constitution and laws of the United States.”Footnote ⁶² Thus, there are no US courts that have given direct effect to any provision of the Berne Convention.

For countries that do not have the clear guidance provided by the US Congress, the Berne Convention may be more easily considered self-executing than Paris. Because it eliminates formalities, there is no need for administrative support.Footnote ⁶³ Moreover, the extension of protection to certain nationals of non-Berne Union countries suggests that at least some negotiators viewed authorial rights as natural, universal norms.Footnote ⁶⁴ Nonetheless, like the Paris Convention, the Berne provisions read differently from one another and thus require a measure-by-measure analysis. For example, the provision on moral rights states that “[i]ndependently of the author’s economic rights, … the author shall have the right to claim authorship of the work and to object to any distortion, mutilation or other modification of, or other derogatory action in relation to, the said work, which would be prejudicial to his honor or reputation.”Footnote ⁶⁵ (Again, a hint that human rights are at stake). But a provision on unauthorized uses provides that “[i]t shall be a matter for legislation in the countries of the Union to permit the reproduction … of articles … on current economic, political or religious topic ….”Footnote ⁶⁶ Some provisions, such as the one on rebroadcast rights, are extremely specific and provide enough detail for judges to apply; others, such as the measure on adaptation, are fairly abstract.Footnote ⁶⁷ As the German case about the Technical Information Library Hanover suggests, the three-step exceptions test is particularly difficult to parse. It leaves it to the legislation of each country to decide on exceptions, but specifies the limits of those exceptions in a way that lends itself to judicial action.Footnote ⁶⁸

Additionally, the rapid changes in technologies relevant to the use of copyrighted works can make direct judicial implementation of much of the Berne Convention extremely difficult. For example, the Convention uses the term “communication to the public” multiple times.Footnote ⁶⁹ Judges confronted with new technologies have had a hard a time parsing that phrase even when interpreting their own domestic law.Footnote ⁷⁰ It is not insignificant that after the TRIPS Agreement essentially incorporated the Berne Convention with few updates, several new technology-related multinational agreements were adopted.Footnote ⁷¹

IV. Free Trade Agreements

Many recent trade agreements include chapters that impose so-called TRIPS-plus obligations. These instruments arguably stand on a different footing from the TRIPS Agreement itself. To a large extent, they are directly aimed at clarifying ambiguities and open issues in TRIPS. Therefore, they tend to be extremely precise. For example, the TRIPS Agreement requires countries to protect data that is submitted for the clearance of pharmaceutical products for marketing purposes. The measure uses the terms “new chemical entities,” “considerable effort,” and “unfair commercial use,” none of which are defined.Footnote ⁷² In addition, the provision fails to say how clearances based on approvals elsewhere should be treated. In contrast, many FTAs either omit these terms or define them. For example, the agreement between the United States and the Dominican Republic and Central America (CAFTA) eliminates the term “considerable effort,” and instead of “unfair commercial use” it imposes a requirement of five years of exclusivity. It deals with the issue of foreign approval by requiring each country to accord its own five years of protection, irrespective of its basis for allowing a pharmaceutical to be marketed.Footnote ⁷³

Other examples abound. The TRIPS provision requiring patent protection for advances that involve an “inventive step” does not define that term, other than to say it is equivalent to “non-obvious.”Footnote ⁷⁴ This has led to considerable controversy over whether new uses of old materials can be excluded from patentability. The agreement between the United States and Korea (KORUS) clears up that point by requiring “that patents shall be available for any new uses or methods of using a known product.”Footnote ⁷⁵ As noted earlier, the Paris Convention and the TRIPS Agreement leave the meaning of a “well known” mark unclear; the Comprehensive and Progressive Agreement for Trans-Pacific Partnership (CPTPP) references WIPO’s Joint Recommendation on Well Known Marks, which provides a detailed definition and expands trademark rights to include dilution protection.Footnote ⁷⁶ As a textual and structural matter, these measures are therefore capable of having direct effect in all but the most dualist jurisdictions.

Admittedly, FTAs also contain language that suggests that implementation is required. For example, the intellectual property chapter of CAFTA and KORUS both state that “[e]ach Party shall, at a minimum, give effect to this Chapter.”Footnote ⁷⁷ Similarly, the CPTPP provides that “[e]ach Party shall give effect to the provisions of this Chapter.”Footnote ⁷⁸ That language suggests that legislative action is contemplated. However, the United States has developed an alternative to self-execution that may be equally effective at ensuring that the measures in an agreed instrument will be binding in the parties’ courts. That is, the United States chooses partners that it believes will implement the agreement, monitors how they plan to implement the agreement, and takes unilateral action when implementation fails to meet its expectations.Footnote ⁷⁹

More important, the United States sometimes conditions its own implementation on a trading partner’s demonstration that it has already implemented the agreement to its satisfaction. For example, the US Act implementing CAFTA provides that: “At such time as the President determines that countries listed … have taken measures necessary to comply with the provisions of the Agreement that are to take effect on the date on which the Agreement enters into force, the President is authorized to provide for the Agreement to enter into force with respect to those countries.”Footnote ⁸⁰ As Carlos Correa notes, the “certification” process entailed in making this determination not only ensures that right holders can seek relief in national courts but often also requires the other country to enact legislation that goes beyond the requirements of the agreement. In some cases, certification has led countries to provide right holders with more protection than is available to them under US law.Footnote ⁸¹

I. The Formation of OAPI

In 1962, the first regional IP organization in Africa, called Office Africa in et Malgache de la Propriété Industrielle (OAMPI) – the predecessor to OAPI – was formed, after twelve francophone African countries signed the Agreement Relating to the Creation of an African and Malagasy Office on Industrial Property (the Libreville Agreement).Footnote ⁵⁹ The French National Industrial Property Institute (INPI) and WIPO assisted former French colonies to create OAMPI. The Libreville Agreement, which was a replica of the extant French laws, protected patents, trademarks, and industrial designs. The agreement introduced threefold criteria for cooperation, which are still in force in the OAPI region to date: (a) the adoption of a uniform system of industrial rights protection based on uniform legislation; (b) the creation of a common authority to serve as the office for the protection of industrial property for each of the Member States; and (c) the application of common and centralized procedures, such that a single title issued by OAPI would be valid in all Member States.Footnote ⁶⁰

With this agreement, francophone African countries paved the way for delegating responsibility for IP administrative decisions to the regional level.Footnote ⁶¹ In 1977, OAMPI was renamed OAPI, after the adoption of the Bangui Agreement on the Creation of an African Intellectual Property Organization (Bangui Agreement) and withdrawal of the Malagasy Republic.Footnote ⁶² No domestic legal instrument is required to enact the Bangui Agreement as national legislation. What this means is that not only is there no need for national laws, but that national implementing laws are not conceivable, since only the regional rights may exist, which are based on regional legislation (at least for the types of IP rights covered). The only exception is in the area of copyright, where the regional agreement may coexist with national laws in each Member State.Footnote ⁶³ As the discussion below shows, legal and technical assistance from WIPO for the Bangui Agreement and its subsequent revision in 1999 guaranteed that this agreement was – and remains – one of the most TRIPS-plus pieces of legislation among developing countries, even though thirteen of its seventeen members are LDCs.Footnote ⁶⁴

The revised Bangui Agreement provides for the protection of ten categories of IP, as follows: Patents (Annex I), Utility Models (Annex II), Trademarks and Service Marks (Annex III), Industrial Designs (Annex IV), Trade Names (Annex V), Geographical Indications (Annex VI), Literary and Artistic Property (Annex VII), Protection Against Unfair Competition (Annex VIII), Layout-Designs (Topographies) of Integrated Circuits (Annex IX), and Plant Variety Protection (Annex X). The Annexes for PVP, which came into force in January 2006Footnote ⁶⁵ (discussed in Part D), and the protection of layout designs (topographies) of integrated circuits (not yet in force) are new additions that were not protectable in the OAPI countries beforehand.Footnote ⁶⁶

The agreement requires members to accede to twenty-three international conventions, including the WTO and allied TRIPS Agreement. Eleven of these treaties were added during the 1999 revision, whereas no such obligations exist in TRIPS.Footnote ⁶⁷ In addition, the agreement includes special protection for geographical indications (GIs) related to wines and spirits and extends the term of protection for copyright and patents. For example, regarding patents, the agreement not only has a low threshold for noveltyFootnote ⁶⁸ but also imposes more stringent conditions for the use of compulsory licenses by third parties or by governments than does the TRIPS Agreement, thus sacrificing the full use of flexibilities affirmed by the Doha Declaration.Footnote ⁶⁹ It demands a judicial procedure in national civil courts before licenses to third parties can be granted.Footnote ⁷⁰ Furthermore, the agreement expands the scope of patent protection, for instance, to pharmaceutical products – regardless of the decision of the TRIPS Council to extend the general transitional period for LDCs to implement the TRIPS Agreement until July 1, 2034Footnote ⁷¹ and for pharmaceutical products until January 1, 2033.Footnote ⁷² To be certain, the terms of the LDC extension by WTO prevent countries from reducing or withdrawing existing protections,Footnote ⁷³ thus locking countries into the revised Bangui Agreement, which otherwise states that any country can exit from their obligations under the treaty.Footnote ⁷⁴

The decision to extend protection to pharmaceutical products and to increase the term of patent protection rendered LDCs of OAPI vulnerable to higher prices and licensing costs for technologies some thirty-two years earlier than TRIPS required, and thirty-one years earlier in the case of pharmaceutical products.Footnote ⁷⁵ The consequences of such choices are overt. To date, African countries are net importers of medicinal and pharmaceutical products. The United Nations Economic Commission for Africa (UNECA) estimates that the continent covers 94 per cent of its pharmaceutical needs through imports.Footnote ⁷⁶ With the outbreak of COVID-19, many of the countries providing these pharmaceuticals were heavily disrupted, and in 2020, at least ninety-four countries in the world restricted their exports of medical supplies as part of their response to COVID-19.Footnote ⁷⁷ This scenario placed Africa in a perilous position in accessing essential supplies.

The outcome of the revised Bangui Agreement should not be surprising. The text of the revised agreement was written by a Cameroonian national, Denis Ekani, who served for nineteen years as the first Director General of OAPI, from 1965 to 1984.Footnote ⁷⁸ He worked closely with the OAPI Secretariat and the staff of WIPO, UPOV, and INPI, the latter of which also hired an external consultant to assist with legal drafting.Footnote ⁷⁹ Based on their training and professional networks, elites like Ekani tend to identify more closely with a network of international IP policy experts and officials – and with the objectives of WIPO – than with national governments or regional development objectives.Footnote ⁸⁰ Indeed, it should be remembered that OAPI Member States had (and still have) limited expertise on IP matters, and the few staff in their IP offices are usually the product of training by INPI, WIPO, and European or US universities – which transfer their own pro‐IP views regarding the importance of strengthened IP protection.Footnote ⁸¹ Hence, the perspective of staff on the technical aspects of TRIPS (and IP in general) tends to focus narrowly on compliance.Footnote ⁸²

Besides, governments within the region regarded IP decision-making as a technical domain, the legal details of which could be left to experts from OAPI or donor agencies such as WIPO or INPI, rather than a policy issue worthy of explicit integration into a broader national development policy.Footnote ⁸³ Thus, while accounts from the OAPI Secretariat stress that the Bangui revision went through several stages and formalities in the drafting and negotiation process,Footnote ⁸⁴ Carolyn Deere contends that:

This situation meant that any national participation in the Bangui revision process was left in the hands of a small group of staff at the OAPI Secretariat and national IP offices, who would bow to pressure from their financiers. The mainly agrarian-based and net technology importing OAPI countries mostly develop low-cost indigenous innovations and rely on traditional knowledge and practices for everyday activities.Footnote ⁸⁶ Africa’s rich agricultural resources, traditional knowledge, and cultural repositories afford it comparative advantages with GIs, PVP, traditional knowledge, and traditional cultural expressions. However, except for GIs and PVP, the OAPI IP framework does not extend to the rest. The revised Bangui Agreement, therefore, ought to have maximized the flexibilities permitted in TRIPS, for instance, by introducing IP systems that protect and promote farmers’ rights, access to medicines, and access to knowledge.

II. The Formation of ARIPO and the Reception of International Norms

More than a decade after the formation of OAPI, anglophone African countries established the Industrial Property Association for English-speaking Africa (ESARIPO), with the assistance of WIPO and UNECA. WIPO laid the foundation in a regional seminar on patents and copyright for nine anglophone African countries in Nairobi in 1972, which recommended the establishment of a regional industrial property organization.Footnote ⁸⁷ This agenda was moved forward when WIPO and UNECA responded to a formal request from anglophone African countries for assistance in establishing the regional organization in 1973. In line with this move, a series of meetings were held at the UNECA headquarters in Addis Ababa and WIPO in Geneva, which led to a draft Agreement on the Creation of the Industrial Property Organisation for English-speaking Africa.Footnote ⁸⁸ This agreement was subsequently adopted in a diplomatic conference held in Lusaka, Zambia, in 1976, thus deriving the name “the Lusaka Agreement.”Footnote ⁸⁹ UNECA and WIPO served jointly as the Secretariat of ESARIPO until 1981, when the organization established an independent Secretariat.Footnote ⁹⁰

The Lusaka Agreement established a regional system for the protection of industrial property, which sought to harmonize the national laws of Member States and promote cooperation.Footnote ⁹¹ In 2004, almost three decades after the formation of ESARIPO, the organization was renamed ARIPO to expand its mandate from industrial property to other categories of IP.Footnote ⁹² Unlike OAPI, which has a uniform IP structure outlined in the ten annexes to the Bangui Agreement, ARIPO advances a flexible IP structure. Beyond the Lusaka Agreement, which confers ARIPO membership, Member States are not automatically bound to any of its protocols. ARIPO has four protocols and Member States can choose which protocols to sign. The four protocols are the Harare Protocol on Patents and Industrial Designs (Harare Protocol), the Banjul Protocol on Marks (Banjul Protocol), the Swakopmund Protocol on the Protection of Traditional Knowledge and Expressions of Folklore (Swakopmund Protocol), and the Arusha Protocol for the Protection of New Varieties of Plants (Arusha Protocol).Footnote ⁹³ ARIPO also has a Draft Policy and Legal Framework for the Protection of Geographical Indications and a Model Law on Copyright and Related Rights.

Just like OAPI, the deference and reliance on WIPO, the European Patent Office (EPO), WTO, and UPOV, among others, for technical and financial support in developing its regional IP system and capacity-building has presented ARIPO with contradictory policy positions. For example, although ARIPO adopted the commendable Swakopmund Protocol, which recognizes the significant traditional practices of its Member States, it also adopted the UPOV 1991-styled Arusha Protocol, which undermines their traditional farming practices.Footnote ⁹⁴ Interestingly, while the Swakopmund Protocol protects traditional knowledge and expressions of folklore, ARIPO does not register traditional knowledge and expressions of folklore because Section 5 of the Swakopmund Protocol excises any formality for traditional knowledge.Footnote ⁹⁵

Concerning PVP, however, ARIPO is earmarked to conduct a formal and substantial examination of applications for plant breeders’ rights under the Arusha ProtocolFootnote ⁹⁶ – just as it does for patents, utility models, industrial designs (conducts only a formal examination), and trademarks. Considering the importance of traditional knowledge and expressions of folklore for African innovation and development, in contrast to the implications of a UPOV-plus PVP regime for Africa (discussed in detail in the next section), it is alarming to see that ARIPO does not register traditional knowledge but is rather assigned to register PVP.

While the regional legal regimes and institutional frameworks for francophone and anglophone Africa differed in important respects, in both cases their members delegated significant responsibilities to their respective regional secretariats, and WIPO served as their core source of financial, human, legal, and organizational support.Footnote ⁹⁷ The WIPO Secretariat, for instance, hosts the websites of both ARIPO and OAPI, and it provided staff training, drafted legal texts for their respective conventions, and was involved in shaping their strategic direction through regular “tripartite meetings” of the secretariats.Footnote ⁹⁸ Moreover, to increase its usefulness to the technological development efforts of their Member States, WIPO assisted in establishing a quadripartite agreement to promote cooperation between WIPO, OAPI, ARIPO, and the African Regional Centre for Technology.Footnote ⁹⁹ The center is overseen by a Consultative Committee, which exercises decisive leadership and influence on IP decision‐making and capacity in the region.Footnote ¹⁰⁰ To further bring its assistance programs closer, WIPO in 2019 and 2020 opened two external offices in Algeria and Nigeria respectively.

At present, WIPO administers twenty-six treaties (including the WIPO Convention) and provides technical and legal assistance to developing countries on the ratification and implementation of these treaties. This has led to the criticism that WIPO uses its technical assistance function to help promote uncritical ratification of existing international agreements and to further the upward harmonization of IP standards in ways that work against the interest of developing countries – Africa being an example.Footnote ¹⁰¹ In doing so, the development implications of proposed treaties, treaty accessions, or implementation options and alternatives are not often explored.Footnote ¹⁰²

As depicted in Table 12.1, OAPI is a member of UPOV, which it joined in July 2014 as its first intergovernmental member.Footnote ¹⁰³ All OAPI Member States are members of the Patent Cooperatioon Treaty (PCT) and the Paris Convention. For each OAPI Member State also party to the PCT, Article 3(2) of the Bangui Agreement provides that OAPI shall serve as “national office, designated office, elected office or receiving office.” Except for Comoros and Equatorial Guinea, all OAPI members are also contracting parties to the WTO Agreements.

All ARIPO Member States are contracting parties to the PCT. In addition, ARIPO can be designated as an international search authority under the PCT.Footnote ¹⁰⁴ Article 3bis (5) of the Harare Protocol states that the ARIPO Office shall act as elected Office under the Patent Cooperation Treaty concerning an international application where a Contracting State is elected for international preliminary examination under the Patent Cooperation Treaty. In addition, all ARIPO Member States are parties to the WIPO Convention, and all apart from Sao Tome and Principe, Somalia, and Sudan are parties to WTO TRIPS.

III. The Continental (African Union) Level

At the African Union level, policymakers appear eager to endorse “effective” IP systems for Africa, despite the organization churning out five instruments that set out Africa’s position in some areas of IP.Footnote ¹⁰⁵ This posture makes it look as though policymakers on the continent have adopted a half-in, half-out approach to IP administration that simultaneously insists on stronger IP rights and at the same time advocates for a balance regarding access, local innovation, and creativity. Technical assistance and capacity-building measures may best explain this dilemma.

In 2015, for example, a High-Level African Ministerial Conference organized by WIPO in cooperation with othersFootnote ¹⁰⁶ explored ways in which IP could promote creativity and spur growth by ensuring the development of sound innovation systems. The speakers and panelists, many of whom were chosen by the WIPO Secretariat, did not include the African Group in Geneva or pro-development civil society organizations.Footnote ¹⁰⁷ Among the many sessions at the conference,Footnote ¹⁰⁸ there was one on food and agriculture, under the theme “Promoting Research and Development in Food and Agriculture.”Footnote ¹⁰⁹ Speaking at this session was Mr Peter Button, Vice Secretary General of UPOV, who spoke on the topic “Promoting New Plant Varieties for Enhanced Agricultural Productivity and Food Security.” The content of the presentation was such that one cannot deny its partial and political tone. No wonder among the recommendations from the conference, Member States were encouraged to use all forms of IP in meeting the needs of the agricultural sector, and PVP was said to be a particularly important mechanism to promote the research and transfer of technology to farmers, thereby increasing productivity and value addition in agriculture.Footnote ¹¹⁰ Furthermore, UPOV membership was recognized as a key factor in maximizing the impact of PVP.

A key outcome of the conference was the Dakar Declaration.Footnote ¹¹¹ In the Declaration, the AU Ministers pledged to, among others, provide a conducive environment with dynamic IP systems that propel creativity, innovation, and inventiveness and effectively guide the promotion, acquisition, and commercialization of IP for sustainable growth and development and the well-being of African populations. They also pledged to take advantage of the opportunities available within WIPO technical assistance and capacity-building programs, and to consider joining relevant WIPO-administrated treaties to which they were not yet parties.Footnote ¹¹² An account has it that this declaration was negotiated behind closed doors and that African ministers of trade were not present at the time of its adoption – which raises doubts.Footnote ¹¹³ Ultimately, the event served as a forum for knowledge circulation and capacity-building in Africa, albeit lopsided toward the Western-centric corpus of IP systems that the sponsors favor.

The Science, Technology and Innovation Strategy for Africa (STISA-2024)Footnote ¹¹⁴ acknowledges the lack of technology readiness of the continent, which stands in sharp contrast to what is happening at the level of policy and legislation. Policymakers of the continent may well learn from the advanced countries. The history of the development of the advanced industrialized countries shows that they did not all start with strong IP laws. Countries such as the USA, Germany, and Japan, in the early stages of their technological development and catching-up, used instruments such as imitation, reverse engineering, sheer copying, or technology transfer, among others, to develop their innovation ecosystems; only when they had achieved considerable success did they begin to regulate IP strictly.Footnote ¹¹⁵ It is only when countries have accumulated sufficient indigenous capability, with an extensive science and technology infrastructure sufficient to undertake creative imitation, that IP rights become an important element in technology transfer and industrial activities.Footnote ¹¹⁶ This point is not often stressed in technical assistance and capacity-building projects.

It may come as no surprise, then, that central initiatives – both the African Model Legislation for the Protection of the Rights of Local Communities, Farmers and Breeders, and for the Regulation of Access to Biological Resources 2000 (African Model Law)Footnote ¹¹⁷ of the AU and the Swakopmund Protocol of ARIPO– have had little influence on the continent. Despite some criticisms against both instruments, it was expected that they would have an impact on the continent, but that has not been the case.Footnote ¹¹⁸ In practice, the African Model Law rejects the unconditional adoption of the UPOV 1991 model and patents for plant varieties,Footnote ¹¹⁹ rather embracing the sui generis option under TRIPS. It is anchored on the principle of balanced regional, subregional and national laws in Africa that cater to stakeholders’ divergent needs.Footnote ¹²⁰ It protects the innovations, technologies and practices of local communities, including farming communities and indigenous peoples who conserve and enhance biological diversity for the benefit of present and future generations, alongside commercial plant breeders who develop new plant varieties based on farmers’ varieties.Footnote ¹²¹ As the next section shows, instead of this model being applied, curiously, quite the opposite is happening in Africa.

I. WIPO’s Agreement with UPOV: An Uptick in Plant Variety Protection

In 1982, WIPO and UPOV formalized an existing arrangement on administrative and technical cooperation between the two organizations,Footnote ¹²² whereby the Director General of WIPO is designated as the Secretary General of UPOV, with the power to approve the appointment of the UPOV Vice Secretary General.Footnote ¹²³ Under this agreement, the UPOV Office was to be located in the WIPO building in Geneva, where UPOV meetings are also held. Hence, WIPO services the UPOV Office and manages the financial administration of UPOV, among other things.Footnote ¹²⁴ The agreement affirms the complete independence of the WIPO International Bureau and the UPOV Office in respect of the exercise of their functions. However, while UPOV is legally separate from WIPO, and is not part of the UN, the relationship that has ensued between UPOV and WIPO has led to the criticism that WIPO’s technical assistance for developing countries and LDCs is biased toward the UPOV 1991 regime.Footnote ¹²⁵ This criticism implicates the position of WIPO as a neutral voice in the area of IP.

For example, the WIPO Academy offers two advanced distance learning courses on PVP. One of them is on the “Examination of Applications for Plant Breeders’ Rights” (DL-305-UPOV).Footnote ¹²⁶ Additionally, WIPO frequently provides opportunities to make UPOV known. The UPOV Office has given presentations about plant variety and UPOV during the WIPO Summer Schools on IP and at conferences organized by WIPO (such as the African Ministerial Conference discussed above). Likewise, WIPO technical assistance programs often include references to UPOV and advice to UPOV non-members as to how to introduce UPOV-consistent PVP legislation.Footnote ¹²⁷ Rather than assessing each country’s specific needs and advising on how UPOV could best be applied to the applicant’s circumstances, the advice tends to consist of providing the applicant countries with the model UPOV legislation.Footnote ¹²⁸ Graham Dutfield, for example, has argued that some draft PVP legislation proposed through WIPO technical assistance contained a chapter on implementation, including provisions on enforcement and supervision that went beyond what is required under the UPOV Convention itself.Footnote ¹²⁹

The methodology of WIPO for the development of national IP strategies, which was approved by the WIPO Member States under the “Development Agenda Project,”Footnote ¹³⁰ has also not been without criticism. The project aimed to provide a coherent and harmonized approach, including a set of tools and mechanisms to guide the Member States in the development of national IP strategies. The methodology has four parts: The Process,Footnote ¹³¹ Baseline Questionnaire,Footnote ¹³² Benchmarking Indicators,Footnote ¹³³ and National IP Strategy Online Platform.Footnote ¹³⁴ It also sets the benchmarking indicators relevant for promoting PVP to include: (a) Plant variety protection office: legal status, autonomy, key functions and staffing; (b) Importance of breeders’ rights; (c) National agricultural policy or strategy; and (d) Plant breeding and seed associations.Footnote ¹³⁵ The South Center has criticized the benchmarking indicators for not stating the contributions that farmers have made – and continue to make – in the development of varieties adapted to local evolving conditions, and for failing to give any reference to sui generis systems (such as those adopted in India, Malaysia, and Thailand) that do not follow the UPOV model and which recognize rights over farmers’ varieties.Footnote ¹³⁶ Also, the methodology has often included a recommendation to the country receiving assistance to accede to UPOV 1991 and establish a PVP office as part of legislative and institutional reform.Footnote ¹³⁷

The UPOV Office has over the years been active in discouraging developing countries from adopting PVP systems that diverge from the UPOV norm, as has been documented concerning Asian countries,Footnote ¹³⁸ and in the specific case of Africa, as seen in the PVP laws of OAPI and ARIPO. The African Model Law, in particular, received opposition and criticism from WIPO and UPOV, OAPI, and the African Seed Trade Association.Footnote ¹³⁹ For example, WIPO rejected the principle of inalienability of community rights, which is one of the pillars of the Model Law,Footnote ¹⁴⁰ and further argued that the Model Law’s prohibition of patent on life forms was a violation of TRIPS Article 27.3(b), which requires patents on at least micro-organisms.Footnote ¹⁴¹ For its part, UPOV submitted a ten-page document criticizing and reworking more than thirty articles of the Model Law, recommending, among others, that farmers’ rights should be subject to or subordinate to plant breeders’ rights.Footnote ¹⁴² In 2001, the African Union sought to reconcile its differences with WIPO and UPOV, but to no avail.Footnote ¹⁴³ Importantly, however, the text of the current Model Law shows that the African Union did not implement those recommendations. Even so, the African Model Law was overlooked by regional IP organizations, RECs, and many African countries when they enacted plant variety laws.

II. The Protection of Plant Variety under OAPI

As noted earlier, the revised Bangui Agreement had as one of its outstanding features the inclusion of Annex X on PVP, which establishes a regional framework applicable to the members of OAPI. The WIPO, the UPOV Office, WTO, and INPI played key roles in this agreement. It started with a series of meetings and discussions between the UPOV Secretariat and WIPO about proposals for revising the Bangui Agreement and the need to include the creation of a PVP system in the OAPI region in 1996.Footnote ¹⁴⁴ In 1997, the UPOV Office consulted the French Ministry of Agriculture as well as Francois Burgaud, who was in charge of international relations within the French National Interprofessional Seed and Seedlings Grouping (GNIS), about providing technical assistance on PVP to francophone African countries, including providing a financial contribution for the organization of a regional seminar in Burkina Faso.Footnote ¹⁴⁵ There was also a meeting between the Director General of OAPI, Anthioumane N’Diaye, and UPOV officials to discuss the possible inclusion of PVP in the revised Bangui Agreement in September 1997.

With funding from the French government, UPOV organized the said regional seminar in Ouagadougou, Burkina Faso, on December 17–19, 1997, in cooperation with the Government of Burkina Faso and OAPI.Footnote ¹⁴⁶ The seminar focused on the nature and rationale for the protection of plant varieties and was attended by participants from Benin, Burkina Faso, Cameroon, Chad, Côte d’Ivoire, Gabon, Guinea, Mali, Mauritania, Niger, Senegal, and Togo.Footnote ¹⁴⁷ The UPOV also participated in a WIPO Academy session for French-speaking countries to lecture on UPOV and PVP.Footnote ¹⁴⁸ The UPOV further engaged the Head of the Seed and Plant Breeding Office in the French Ministry of Agriculture and Fisheries regarding the organization and financing of “roving seminars” in OAPI Member States. Earlier, in April 1997, the Director General of WIPO had sent to OAPI draft texts for the revision of the Bangui Agreement, which included a draft Annex relating to PVP drawn up by the UPOV Secretariat.Footnote ¹⁴⁹

According to the OAPI Secretariat, the draft text was submitted to governments for comments, suggestions, and further elaboration and also to other partners, such as WIPO, UPOV, the EPO, and INPI. This process was followed by meetings of experts from OAPI Member States and partners in Conakry (November 1997), Abidjan (February 1998), Ouagadougou (July 1998), and Nouakchott (November 1998).Footnote ¹⁵⁰ The definitive text was adopted by national IP officials at a further meeting in Nouakchott (Mauritania) at the end of December 1998.Footnote ¹⁵¹ On February 15, 1999, ten days before the diplomatic conference where OAPI members were scheduled to sign the revised Bangui Agreement, a joint UPOV–WIPO–WTO workshop was held for developing country delegates in Geneva to convey the message that UPOV 1991 would be the best option for implementing the PVP system required by Article 27.3(b).Footnote ¹⁵²

To be sure, a position paper by UPOV on the outstanding issue of the review of Article 27.3(b) before the WTO Council for TRIPS in 2002 affirmed this position when it stated that “the plant variety protection system established on the UPOV Convention meets the requirements of Article 27.3(b) of the TRIPS Agreement.”Footnote ¹⁵³ The statement further noted that “the introduction of a system which differs significantly from the harmonized approach based on the UPOV Convention will raise questions with regard to the implementation of the TRIPS Agreement.” As Graham Dutfield notes, “this statement gives the impression that UPOV membership is essential for TRIPS compliance, which is false. But for countries unsure of where their interests lie concerning IP protection in the field of plant breeding and anxious to avoid being criticized for failing to meet their TRIPS commitments, this is a powerful statement.”Footnote ¹⁵⁴ It appears that the TRIPS Agreement has been good for UPOV membership despite the flexibilities and special and preferential treatments for LDCs included in it. In the context of Africa, instead of advising the countries – especially the LDCs – on how to utilize the flexibilities and transitional arrangement inherent in the agreement for their economic and social development, the UPOV, WIPO, and developed nations like the European Union and the USA along with their seed industries, saw an opportunity to get these countries to join the UPOV Act 1991.

From February 22–25, 1999, the revised Bangui Agreement was opened for signature at a diplomatic conference in Bangui, with fifteen OAPI Member States signing. Before Annex X was adopted, the UPOV Council had to certify it in 2000 as complying with UPOV 1991, as required under Article 34(3) of the UPOV 1991 Convention. The UPOV Council has conducted this task over the years through a detailed examination of the legislation of would-be acceding countries, thereby strongly influencing the legal regime applicable to PVP. Countries that deviate from the rigid model established by the convention are not allowed to join.Footnote ¹⁵⁵ The revised Bangui Agreement came into force in 2002 for all OAPI members. However, Annex X was delayed due to a lack of capacity to implement PVP.Footnote ¹⁵⁶ Funding and technical support from the French government and the UPOV Office were directed toward capacity-building, especially regarding the establishment of the system for technical examination of plant varieties, identification of initial eligible genera and species for PVP, and the required personnel and institutional support.Footnote ¹⁵⁷

In January 2006, Annex X of the Bagui Agreement became operational, paving the way for OAPI and its Member States to deposit instruments of accession to UPOV.Footnote ¹⁵⁸ Key provisions of Annex X, modeled after the UPOV Act 1991, may be problematic for the region. For example, Annex X extends to “all botanical taxa” except wild species, that is, species that have been neither planted nor improved by man.Footnote ¹⁵⁹ This means that any variety that fulfills the required criteria may be granted protection.Footnote ¹⁶⁰ Critics contend that it is unnecessary to extend PVP to all genera and species in the OAPI region, not least because of the lack of experience and capacity concerning implementation; in addition, it may not be wise to develop procedures and extend protection to crops that offer no or limited commercial value to the country.Footnote ¹⁶¹ Furthermore, Annex X of the Bangui Agreement fails to include any flexibility for its members, not even the limited transitional arrangement contained in UPOV 1991 concerning scope and protection.Footnote ¹⁶² This goes beyond the UPOV Act 1991 and further ignores the TRIPS Agreement’s transitional arrangements – in essence, failing to consider the fact that OAPI member countries may need policy space in fulfilling their treaty obligations.

Concerning the duration of protection, Article 33(1) of Annex X states that a plant variety certificate shall expire twenty-five years after its date of issue. The duration of protection is more extensive than in both the UPOV 1978 and 1991 Conventions. In addition, the rights conferred by a plant variety certificate in Article 32 of Annex X are extensive as far as they cover harvested material obtained through the unauthorized use of the propagating material of the protected variety, unless the breeder has had a reasonable opportunity to exercise his right concerning the said propagating material.Footnote ¹⁶³ Moreover, Article 32(4) of Annex X further applies breeders’ rights to (a) varieties that are essentially derived from the protected variety, where the protected variety is not itself an essentially derived variety; (b) varieties that are not clearly distinguishable from the protected variety as provided in Article 6; and (c) varieties whose production requires repeated use of the protected variety.

The provision on essentially derived varieties (EDVs) – a concept introduced by UPOV 1991 – has become one of the most problematic provisions for interpretation and application by administrative authorities and judges.Footnote ¹⁶⁴ Further, of major concern is the extensive provisions dealing with infringement and other unlawful acts, which among others stipulate injunctions, civil damages, criminal sanctions, and seizures. According to Article 54 of Annex X, any person who knowingly commits an act of infringement under subparagraph (1) of Article 48 or an act of unfair competition within the meaning of Annex VIII commits an offense and is liable to a fine of between 5,000,000 and 15,000,000 CFA francs or imprisonment of one to six months or both of these penalties, without prejudice to civil damages. Considering that criminal sanctions are not required under TRIPS except in cases of willful trademark counterfeiting or copyright piracy on a commercial scale, it is excessive to include such provisions in an agreement allegedly concluded by some of the world’s most deprived countries.Footnote ¹⁶⁵ In most countries, including the developed countries, no criminal sanctions are provided for in the area of PVP or other areas of IP, such as patents.Footnote ¹⁶⁶

It is no wonder that, ten years after the entry into force of Annex X of the Bangui Agreement, a 2019 research paper by Coulibaly and colleagues revealed that only seven of OAPI’s seventeen members had used the PVP system – and “at great cost and the expense of public funds.” The authors added that the system has neither produced a substantial increase in plant breeding activities in the OAPI Member States nor resulted in the growth of the seed industry in the subregion. On the contrary, it has raised alarms about the misappropriation of farmers’ varieties.Footnote ¹⁶⁷

III. Plant Variety Protection under ARIPO and Others

Amid the African Union’s effort to promote a non-UPOV 1991 plant variety regime in Africa and its consequential call on OAPI to reconsider the provisions of Annex X of the revised Bangui Agreement, ARIPO pre-emptively announced in 1998 that it would stand by the AU position and not endorse any specific IP regime for plants.Footnote ¹⁶⁸ It may therefore come as a surprise that in 2015, ARIPO adopted a PVP regime along the lines of the UPOV Act 1991. It all started in 2009 when the ARIPO Council of Ministers requested the ARIPO Office to implement its decision to develop a regional legal framework for the protection of plant varieties.Footnote ¹⁶⁹ Based on this mandate, ARIPO initiated the process of developing a legal framework for plant varieties in collaboration with UPOV and WIPO. After consultations with the latter organizations, a first draft was drawn up in 2011. Further revisions to the first draft led to the release of a second draft in 2013.Footnote ¹⁷⁰ After further consultations and clarifications with UPOV on specific issues, the ARIPO agreed on a final text of the “Draft Legal Framework for Plant Variety Protection” in March 2014.

The last regional workshop on the Draft ARIPO Plant Variety Protocol was co-organized by ARIPO, UPOV, and the US Patent and Trademarks OfficeFootnote ¹⁷¹ – further showing the extent of the contribution and power of these international organizations in shaping the ARIPO development agenda through PVP. As the UPOV rules require, the draft instrument was sent to the UPOV Council for examination and approval. The UPOV Council replied, noting that:

Technically, this response qualified ARIPO to join UPOV. However, during the meeting of the Administrative Council to adopt the Arusha Protocol, ARIPO Member States opposed and rejected Article 4 of the Draft Plant Variety Protocol, which empowered ARIPO to grant PVP rights on behalf of its members without their consent.Footnote ¹⁷³ The amendment of this article meant that ARIPO could not become a member of UPOV 1991.Footnote ¹⁷⁴ However, according to the “Status in Relation to UPOV Report 2021,”Footnote ¹⁷⁵ ARIPO is still in the process of becoming a party to UPOV 1991. Attending the meeting of the ARIPO Administrative Council that adopted the Arusha Protocol were intergovernmental organizations and cooperating partners, including WIPO and UPOV.Footnote ¹⁷⁶ Similar to the case of OAPI, stakeholders – including representatives of farmer groups in Africa – were not invited to the processes and discussions leading to the draft legislation and the subsequent adoption of the Arusha Protocol.Footnote ¹⁷⁷

As it turns out, most of the concerns expressed about the Bangui Agreement, Annex X, of the OAPI apply here too. Article 3 of the Arusha Protocol extend the scope of protection under PVP to all plant genera and species. While its preamble acknowledges the need to fulfill the TRIPS Agreement Article 27.3(b), the protocol falls short of including the flexibilities inherent in the TRIPS Agreement or its transitional arrangements. Concerning the duration of protection for PVP, the protocol follows the UPOV 1991 order of twenty years from the date of the grant of the breeder’s right, excluding trees and vines, for which a breeder’s right shall be granted for a period of twenty-five years from the said date.Footnote ¹⁷⁸ The following Article 26(2) of the protocol, however, states that “[n]otwithstanding sub-paragraph (1), the term of protection may be extended for an additional five years by a notice in writing to the ARIPO Office in respect of specific genera and species.” The conditions for such an extension are not spelled out, thus making it possible to go beyond the UPOV standard.

Furthermore, Article 21.3(a) of the protocol, on the scope of a breeder’s right, extends to harvested material obtained through unauthorized use of the propagating material of the protected variety, unless the breeder has had a reasonable opportunity to exercise his right concerning the said propagating material. And just as in the case of OAPI, Article 21.4(a) of the Arusha Protocol stipulates that the breeder’s right extends to varieties that are essentially derived from the protected variety, where the protected variety is not itself an essentially derived variety. Finally, Article 22.1(a) of the protocol – on “Exception to Breeder’s rights” – allows farmers to use protected material only for “private and non-commercial use.” As there is no further definition, it is unclear which acts are covered by this exception. Disturbingly, a similar exception has been defined by UPOV as prohibiting the regular exchange and sale of seeds or propagating material of protected varieties, even in small amounts, among farmers. Article 22(2) of the protocol allows, in certain circumstances, for farmers to save protected seed for propagating purposes on their holdings, but this appears to be subject to payment of royalties, which many smallholder farmers will not be able to afford.

It is such concerns about the Arusha Protocol and the non-transparent and non-inclusive process by which the protocol was adopted that led the UN Special Rapporteur on the right to food, Hilal Elver, to write a special “Open Letter”Footnote ¹⁷⁹ to the Member States of ARIPO, expressing her concerns about the adoption of the Arusha Protocol in November 2016. The Arusha Protocol has not yet entered into force. It will do so once four states have ratified or acceded to it. It is said that because the ARIPO IP framework serves a harmonizing function, its protocols have a potentially less devastating effect as they might not be domesticated by the Member States.Footnote ¹⁸⁰

Similar to OAPI, thirteen of ARIPO’s twenty Member States are LDCs. With the benefit of hindsight, one would have thought that ARIPO would stick to the AU Model Law when developing its PVP regime. However, ARIPO did not, and that should not come as a surprise. Throughout Africa, to borrow from Hong Xue’s words, the West Wind has been blowing.Footnote ¹⁸¹ Xue, referring to poet Shelley’s masterpiece “Ode to the West Wind,”Footnote ¹⁸² argues that “in international political circles, anyone with basic knowledge of IP law knows that the West Wind is sweeping through the world. Namely, the developed countries are leading the trend toward greater IP protections and are aggressively pushing the developing countries to follow.” She worries that the developing countries are internally surrendering to the West Wind. Under the power of the West Wind, the developing countries are educated to believe that the West leads the way, by default, and that they should not only proceed along its prescribed path but should even go further than the West. As a result, the developing countries are losing, step by step, their internal capacity for normative innovation.

As demonstrated throughout the chapter, this seems to be the case in Africa. Besides OAPI and its Member States – who are all members of UPOV, currently Egypt, Ethiopia, Kenya, Morocco, Rwanda, South Africa, Tanzania, Tunisia, Zambia, and Zimbabwe all have national plant variety laws and offices.Footnote ¹⁸³ Moreover, Ghana recently adopted a PVP law after its parliament approved the Plant Variety Protection Bill 2020.Footnote ¹⁸⁴ The bill has, since December 29, 2020, received presidential assent. As of February 22, 2021, Ghana, Nigeria, Mauritius, and Zimbabwe are among the list of countries that have initiated procedures for acceding to the UPOV Convention.Footnote ¹⁸⁵

Finally, it bears mentioning that in May 2014, the Southern African Development Community (SADC)Footnote ¹⁸⁶ adopted a Protocol for the Protection of New Varieties of Plants, based primarily on the UPOV 1991.Footnote ¹⁸⁷ According to Article 44 of the protocol, it will come into force thirty days after signature by two-thirds (ten) of the SADC Member States. On June 29, 2020, Botswana became the ninth Member State to sign the SADC Protocol. Once it comes into force, the protocol will provide a regional system for PVP rights in the signatory states. Each Member State will need to have a national PVP for the protection to be effective. South Africa, arguably one of the most developed economies in Africa, is not a member of either ARIPO or OAPI but is a member of SADC. It is also a party to the 1978 UPOV Convention. If the SADC Protocol comes into force, it will effectively upgrade South Africa to UPOV 1991.Footnote ¹⁸⁸

I. Analysis of Domestic Legislation under WTO Rules

Another factor that can influence the design and implementation of domestic IP regulations is the way in which panels and the AB of the WTO interpret the TRIPS provisions. Narrow interpretations, in particular, may expose WTO Members to complaints and eventually trade retaliations by other Members. Although no direct evidence exists how this might have influenced the implementation of the TRIPS Agreement in Latin America, it can be presumed that it is a factor that regulators have considered in adopting the implementing regulations. One possible example is the fact that, except Brazil and Argentina, other Latin American countries have not maintained or introduced compulsory licenses on the grounds of lack of working of a patent, which may be attributed to the ambiguity of the TRIPS Agreement in this regardFootnote ⁴² and the risk of complaints under the DSU. As pointed out by Gazzini, the obligations deriving from Membership in the WTO

Hence, the violation of a WTO rule may affect or threaten to affect the legally protected interests of one or more – but not necessarily all – Members. As a rule, resort to the WTO dispute settlement system is open to Members whose trade has suffered, in actual or potential terms, from the violation of WTO obligations.Footnote ⁴⁴ However, Article 3(8) of the DSU introduces the presumption that violations of WTO obligations cause nullification or impairment of the benefits of the Members. The respondent can challenge such a presumption, and if the challenge is successful then adjudication is precluded.Footnote ⁴⁵

The possibility, and admissibility, of differences in the implementation of the provisions of the TRIPS Agreement are expressly recognized in Article 1.1 of the Agreement: “Members shall be free to determine the appropriate method of implementing the provisions of this Agreement within their own legal system and practice.” But such possible differences are subject to limits, as this provision only allows for choices regarding the “method of implementation” but not the substantive or enforcement standard as such.

In many cases, the space for different interpretations derives from general expressions or ambiguities in the text resulting from compromises reached in the negotiation of the Agreement. The room for different interpretations may also result from the absence of definitions. An example is the lack of one definition of the concept of “invention,”Footnote ⁴⁶ which differs among countries and allows WTO Members not to grant patents, for instance, on developments without a technical effect (such as under European law), or to grant or not grant patents on genetic materials as found in nature.Footnote ⁴⁷ Thus, the Brazilian patent law expressly excludes from the concept of invention the area of isolated genes,Footnote ⁴⁸ a provision that is absent from other laws in the region.

WTO jurisprudence has already established, through several decisions, the degree of scrutiny available to the DSB over a Member country’s domestic legislation. In particular, it has established that in order to determine whether the implementation of legislation is contrary to TRIPS Agreement, the DSB must analyze such provisions to determine the extent of a country’s violation.

A first significant distinction is whether the legislation that is the object of a complaint is mandatory or discretionary – meaning the law as such or the application of that law. Only legislation that mandates a violation of WTO obligations can be found as such to be inconsistent with those obligations. By contrast, legislation that merely gives discretion to the executive authority of a Member to act inconsistently with the WTO Agreement cannot be challenged as such. Thus, where discretionary authority is vested in the executive branch of a WTO Member, it cannot be assumed that the Member will fail to implement its obligations under the WTO Agreement in good faith. According to this approach, the test is whether or not the legislation in question allows the administrative authorities to abide by that Member’s WTO obligations.Footnote ⁴⁹

Another important issue, which may influence domestic implementation, is the extent to which WTO panels or the AB may interpret domestic law in order to establish a violation of the TRIPS Agreement (and other WTO agreements). In the India – Patents (US) case, the AB stated that “[i]t is clear that an examination of the relevant aspects of Indian municipal law … is essential to determining whether India has complied with its obligations under Article 70.8(a) [of the TRIPS Agreement]. There was simply no way for the Panel to make this determination without engaging in an examination of Indian law.”Footnote ⁵⁰ This was further developed in the US Section 301 case, where the AB indicated that:

It may be noted that in the US case against India on TRIPS, the United States had complained that the Indian law did not provide specifically the so-called “mailbox” provisions for the patent authority to receive applications for process or product patents in the pharmaceutical and chemical sector. The panel and the AB found that India had not complied with its obligations under Article 70.8 and 70.9, thus India was in violation of its WTO obligations over its failure to enact a specific law in terms of its WTO obligations.

In the case of the US Section 301 laws, the EC indicated that “Section 301 provides uncertainty about the possible use by the United States of unilateral measures ‘inconsistent with the Uruguay Round dispute settlement rules’.” This defeats the purpose pursued by the Uruguay Round participants when they agreed to adopt the DSU, namely, to provide security and predictability to the multilateral trading system (Article 3.2 of the DSU)Footnote ⁵² and Article 23 of the DSU, which prohibits unilateralism in the framework of the WTO dispute settlement procedures. Members must await the adoption of a panel or AB report by the DSB or the rendering of an arbitration decision under Article 22.

At issue in the case were the interpretation of these provisions of US law, how far they comply with the requirements of the WTO and its dispute settlement understandings, and whether the US law was discretionary or mandatory on the administration. Contrary to the Indian case, the panel found that the challenged sections of the US Trade Act of 1974 were not inconsistent with Article 23.2(a) or (c) of the DSU or with any of the GATT 1994 provisions cited. In particular, the panel noted that the language provided in the US Statement of Administrative Action approved by the US Congress at the time it implemented the Uruguay Round agreements and confirmed in the statements by the United States to the panel was enough to comply with US obligations under the WTO.Footnote ⁵³

This jurisprudence limits the degree of interference that WTO panels and the AB may have in influencing national or regional IP regulations, but does not prevent them from providing “clarifications” of the TRIPS Agreement that may narrow down the flexibilities available to WTO Members. It is worth recalling that Latin American countries were bound to implement the TRIPS Agreement’s obligations by January 1, 2000, before any significant case law on the interpretation of some of its key provisionsFootnote ⁵⁴ and, importantly, before the adoption of the Doha Declaration on the TRIPS Agreement and Public Health – which confirmed some of the flexibilities allowed under the Agreement and the interpretive value of its Articles 7 and 8.Footnote ⁵⁵ As shown by the limited recognition of such flexibilities in most Latin American IP laws.Footnote ⁵⁶ governments in the region in general adopted a cautious approach in the interpretation of the Agreement’s provisions.

II. IP Provisions in FTAs

Since the 1990s, more than seventy FTAs have been signed by Latin American countries, with other developing or developed countries. In particular, FTAs signed between Latin American and developed countries have introduced TRIPS-plus standards on patents, test data, copyright, trademarks, plant varieties protection and other IP categories.

Interestingly, the EU did not pursue agreements with ambitious IP provisions until 2006. Prior to that, IP clauses were general and had a greater focus on GIs. Since 2006, the level of protection asked for by the EU has increased considerably. The EU’s new external IP policy seems to follow, in many respects, the aggressive stance taken by the United States on IP in its own FTAs.Footnote ⁵⁷ The following subsections present an overview of such TRIPS-plus provisions in both FTAs signed by the United States and the EU.

In the area of patents, the FTAs negotiated by the United States with Chile,Footnote ⁵⁸ ColombiaFootnote ⁵⁹ and Peru,Footnote ⁶⁰ as well as the DR–CAFTAFootnote ⁶¹ regarding the Andean Community with the EU,Footnote ⁶² state that the contracting parties shall extend the term of protection a patent “to compensate the patent owner for unreasonable curtailment of the effective patent term resulting from the first marketing approval of that product in that party.”

For instance, the FTAs with the United States require each party, at the request of the patent owner, to adjust the duration of a patent “to compensate for unreasonable delays in the granting of the patent” (Chile–US Article 17.9.6; DR–CAFTA, Article 15.9 0.5). The FTAs with the United States – namely Chile (Article 17.10.2 (a)) and DR–CAFTA (Article 15.9.6 (b)) – also contain a provision requiring an extension of the patent term to compensate the patent holder for an “unreasonable” delay in approving the marketing of pharmaceutical or agricultural chemical products. In the EU–Colombia/Perú/Ecuador FTA, Article 231 includes a “best efforts” obligation to process the corresponding application expeditiously with a view to avoiding unreasonable delays.Footnote ⁶³

Regarding copyright, several FTAs extended the duration of protection to the life of the author plus seventy years from his or her death for most works (including photographic works). The term of protection of sound recordings and audiovisual works was also extended to seventy years from their publication.Footnote ⁶⁴ Other rules introduced by FTAs include the reproduction rights of transitory copies; the right to control any technological form of transmission of works, including interactive transmissions over electronic networks such as the Internet, with minor exceptions for analog reproductions and transmissions of sound recordings and performances; technological protection measures (TPMs), with limited exceptions;Footnote ⁶⁵ and the prohibition of the removal or alteration of electronic rights management information.Footnote ⁶⁶

Concerning plant varieties protection, the FTAs signed by the United States and the EU forced some Latin American countries to join UPOV 1991,Footnote ⁶⁷ a less flexible regime compared to UPOV 1978, particularly in relation to the “farmer’s privilege.” As a result, Costa Rica, Chile, Dominican Republic, Panama and Peru are now parties to UPOV 1991.Footnote ⁶⁸

Regarding trademarks, several FTAs in Latin America integrate sound marks as a mandatory subject-matter, and scent as an optional one.Footnote ⁶⁹ Many US FTAs prohibit the denial of trademark registration solely on the grounds that the sign of which it is composed is a sound or a scent. An enhanced protection of well-known marks is also provided for in all US and EU FTAs. Internet-related IP referred to in the US FTAs includes domain names. In order to address the problems of trademark cyberpiracy, the US FTAs require that a party’s country-code top level domain (ccTLD) provides a dispute procedure based on the uniform domain-name policy (UDP) as well as online public access to a database of contact information.Footnote ⁷⁰

Finally, regarding GIs, the FTA signed between the EU and Colombia and Peru shows the profound asymmetry in the economic interests of the parties with respect to the protection of these indications. While the EU obtained the recognition of a list of several pages of GIs, only two Colombian and four Peruvian indications are recognized.Footnote ⁷¹ While the European approach in the FTA has been the sui generis form of protection for GIs as applied in European countries, the FTAs signed with the United States provide for the protection of GIs through trademarks or a sui generis system or other legal means.Footnote ⁷² The GI protection has been significantly enhanced in FTAs with the EU but not in FTAs with other countries. For instance, in the FTA between South Korea and Chile, while the protection of GIs is included, the list consists of only three GIs from Chile (other than for wines, for which the number is larger), and the same number from South Korea,Footnote ⁷³ while the FTA between Korea and the EU includes a greater number of South Korean GIs.Footnote ⁷⁴

The bilateral and regional approaches used by the United States and the EU in Latin America – as well as in other regionsFootnote ⁷⁵ – increased the tension between IPRs and constitutionally guaranteed human rights. In effect, by using regional or bilateral processes, in which developing countries have limited negotiating capacity, the FTAs introduced obligations that may undermine the realization of human rights.Footnote ⁷⁶ As noted in a set of principles issued by the Max Planck Institute for Intellectual Property and Competition Law,

The above-mentioned TRIPS-plus provisions in accordance with the European and US standards on IPRs, as transplanted through FTAs, are not generally adapted to the situation and needs of the receiving jurisdictions. As the prescriptive language used does not leave much policy space for adaptations during the implementation phase,Footnote ⁷⁸ the effect is that the provisions may stay extraneous to the system. Also, it is important to note that the exceptions, limitations and other checks and balances present in the EU domestic system are mostly not transcribed into the FTAs. The effect is that the partner country is left with a higher level of IP protection and enforcement than the EU in its domestic law.Footnote ⁷⁹

The most recent FTAs signed by Latin American countries present specific features that are briefly described below. It is, in particular, interesting to note what may be seen as a change in EU policy regarding TRIPS-plus provisions on patents and data protection, which is somehow reminiscent of the EU position in the CARIFORUM Agreement.Footnote ⁸⁰

III. Trends in the Most Recent FTAs Involving Latin American Countries

I. Domestic Implementation Process

As discussed, the inclusion of comprehensive chapters on IPR protection in FTAs has become an important feature of the international trade policy of the EU and the United States. Not surprisingly, developing countries – and in particular Latin American ones – generally have a defensive position regarding the introduction of IP provisions in bilateral and regional FTAs that may further limit their policy space to address current systemic problems, such as access to health, food and knowledge.Footnote ¹²⁴ The introduction of TRIPS-plus provisions entails adopting IP standards from developed countries,Footnote ¹²⁵ thus shaping a complex network of provisions, which may not be harmoniously designed or aligned with the domestic needs and conditions. As pointed out by Seuba,

Once an FTA is finalized and signed, the domestic procedures for its implementation need to be initiated. There is a significant difference in the EU and US requirements for an agreement to enter into force domestically. On the EU side, the agreement enters into force once it is internalized and approved by the European Parliament, known as a “saisine.” For “EU-only” agreements, the EU can notify its consent to the depository, and the agreement will apply in full (“enter into force”) once the other party notifies its ratification. For “mixed” agreements, the EU now requires the ratification of all EU Member States.Footnote ¹²⁷ In the meantime, the EU can only apply the agreement provisionally in full or otherwise in part.Footnote ¹²⁸

In the case of the United States, on the other hand, once an agreement is concluded, it must go through a “certification” process under the US law. This process is explained by the US International Trade Administration as follows:

This process, which is meant only to ensure the implementation of the agreed commitments by the US partner, has been used to further narrow down the partner’s flexibilities, as in some cases additional obligations are imposed on the FTA counterpart. For instance, in the case of the US–Peru FTA, it was noted that during the “certification” many of the amendments aiming to reduce the negative impact of IP rights were disregarded.Footnote ¹³⁰ Significantly, there is no similar procedure applied to check the US implementation of its obligations under the FTA and, in fact, many of them are never implemented, such as in the case of the patent linkage provisions that go beyond the US legislation.Footnote ¹³¹

Once an FTA enters into force, then the United States also observes the enforcement of IP provisions and notes any alleged deviation through bilateral committees and the reports produced in accordance with the Special Section 301 of the US Trade Act.

II. Special Section 301

The United States interferes in the domestic design and implementation of IP rules through a unilateral mechanism that aims to “identify third countries in which the state of IPR protection and enforcement gives rise to the greatest level of concern.” The Special Section 301 was introduced in 1988 into the US Trade Act by the Omnibus Trade and Competitiveness Act, signed by President Ronald Reagan. This section was an elaboration – specifically for IP – upon Section 301, which was incorporated into the US Trade Act of 1974 granting the USTR a range of responsibilities and authorities “to investigate and take action to enforce US rights under trade agreements and respond to certain foreign trade practices.”

Under the Special Section 301, the USTR is authorized to adopt, at its discretion, various measures to remedy foreign trade practices that affect US exports. It authorizes the USTR to (1) impose duties or other import restrictions, (2) withdraw or suspend trade agreement concessions or (3) enter into a binding agreement with the foreign government to either eliminate the conduct in question (or the burden to US commerce) or compensate the United States with satisfactory trade benefits. The USTR must give preference to duties (i.e. tariffs) if action is taken in the form of import restrictions.

Several Latin American countries are under the “inspection of the USTR’s Special Section 301.” In particular, Argentina, Bolivia, Brazil, Chile, Colombia, Ecuador, Mexico, Paraguay, Peru and Venezuela were mentioned in the latest Special Section 301 Report.Footnote ¹³² In general, the United States complains regarding the following: the implementation of patent policies, such as limitations to the protection of patent subject-matter and delays in the examination process of patent applications;Footnote ¹³³ copyright enforcement measures in relation to broadcasting and digital platforms for distribution of copyrighted contentFootnote ¹³⁴ and test data protection.Footnote ¹³⁵ Regarding GIs, the United States notes the negative effect of the expansion of GI protection through FTAs between the EU and third countries. Therefore, it includes, in the “watch list,” those countries that are negotiating with the EU bilateral or regional agreements that include commitments to expand GIs protection.Footnote ¹³⁶

The main objective of Special Section 301 has been to allow the US Administration to exert pressure on other countries by threatening (and eventually implementing) trade retaliatory measures. As noted by one commentator, it “was shaped quite deliberately to give the Executive the tools to use diplomatic and economic pressure to achieve a more ‘equitable’ world trading system, to the benefit of US commerce.”Footnote ¹³⁷

A clear example of the problems raised by the application of Special Section 301 is shown in the case of Chile, which entered into an FTA with the United States in 2004, but only in 2010 put in place a system for copyright content takedown. Under this system, unlike under the US Digital Millennium Copyright Act,Footnote ¹³⁸ removal of content by intermediaries requires a court order to comply with Chile’s constitution and its obligations under the American Convention on Human Rights. The FTA permits this interpretation, but the USTR has strongly criticized it, urging Chile “to amend its Internet service provider liability regime to permit effective action against any act of infringement of copyright and related rights.” Chile remains on the Priority Watch List in the most recent Special 301 Report published by the USTR, for “the serious concerns regarding longstanding implementation issues with a number of intellectual property (IP) provisions of the United States–Chile Free Trade Agreement (Chile FTA).”Footnote ¹³⁹

III. EU Report on the Protection and Enforcement of Intellectual Property Rights in Third Countries

A mechanism similar to the US Special Section 301 has been adopted in the EU. The report on the protection and enforcement of IPRs in third countries identifies third countries in which the state of IPR protection and enforcement (both online and offline) raises concerns for the EU.Footnote ¹⁴⁰ Like in the case of the United States, the EU Commission unilaterally determines which countries do not, in its view, comply with the desirable IP standards. For this purpose, it determines three priority levels, in which several Latin American countries are included.

Argentina, Brazil and Ecuador are classified as “Priority 3 countries.” Priority 3, according to the EU, presents serious problems in the area of IP, causing considerable harm to EU businessesFootnote ¹⁴¹ In particular, the EU complains regarding the following: restrictive patentability criteria (Argentina); backlog for registration of patents and trademarks (Argentina, Brazil); copyright piracy (Brazil, Mexico); border measures for IP-protected goods (Argentina, Brazil, Mexico); test data to obtain marketing approval (Argentina, Brazil) and non-compliance with UPOV 1991 standards (Argentina, Brazil, Ecuador, Mexico).Footnote ¹⁴²

Additionally, in contrast to the United States, the EU pressures for the enforcement and strengthening of GI protection in Latin America. In the 2021 report, for instance, it noted that:

In conclusion, both the United States and the EU pursue policies that seek to dissuade Latin American and other developing countries from strengthening their national IP regimes. A central difference between the two policies is the potential impact that Special Section 301 has on the trade in goods, since it allows the United States to impose trade sanctions on countries that it considers are not implementing an “effective IP policy.” The approach applied by the EU is different insofar as it does not involve the imposition of trade sanctions, but rather pushes for modifications through “cooperation” clauses included in the FTAs. However, this is not possible in those countries with which no FTAs have been concluded.

I. Remuneration Rights Created outside the Scope of Exclusive Rights Provided by the International Treaties

II. Remuneration Rights Coexisting and Overlapping with Exclusive Rights Provided by the International Treaties

In addition to the possibility to grant remuneration rights provided by international treaties and remuneration rights outside the scope of exclusive rights, states may grant remuneration rights coexisting and overlapping with the scope of the exclusive rights provided by the international treaties or by national legislation. Such remuneration rights, granted in addition to the corresponding exclusive rights, cover the same types of usesFootnote ¹¹² and can be exercised only once economic operators (e.g., audio and audiovisual producers), to whom the exclusive rights had been transferred, have authorised use of the respective works and/or protected subject-matter.Footnote ¹¹³

The main reason for granting such rights is the alteration of the distributive justice achieved by the copyright system with regard to creators (i.e., authors and performers).Footnote ¹¹⁴ Holders of exclusive rights (e.g., audio and audiovisual producers-owners or transferees by virtue of legal presumptions or contracts) in their negotiations with users always aim at charging profit-maximising fees for the use of protected works and subject-matter (i.e., the maximum fee that users are willing to pay). It is likely that the grant of remuneration rights to authors and performers covering the same uses does not lead to an increase of users’ willingness or resources available for payment. The probable consequence is the redistribution of revenues generated by pre-existing fees in favour of holders of the remuneration rights (in accordance with the so-called ‘pie theory’Footnote ¹¹⁵). The consequential factual decrease in revenues for the transferees of exclusive rights is overcome by reliance on a legal fiction commonly used when creating new copyright entitlements: additional rights do not prejudice pre-existing rights.Footnote ¹¹⁶ Granting coexisting remuneration rights cannot alter all the consequences of granting exclusive rights, but this mechanism could contribute to the increase of real income for creators.Footnote ¹¹⁷

Granting coexisting remuneration rights could be a useful policy option for countries that either replaced remuneration rights by exclusive rights (e.g., due to international commitmentsFootnote ¹¹⁸) or introduced into their national legislation exclusive rights beyond the requirements of international treaties (e.g., in order to favour some industry groupsFootnote ¹¹⁹ or due to foreign pressure) and would still like to have some of the benefits of non-exclusive remuneration entitlements. Even if new evidence favours a return to the pre-existing situation, it is usually a challenging task; for policy makers, it is easier to grant rights than to take them away.Footnote ¹²⁰

Remuneration rights coexisting and overlapping with exclusive rights and dependent on their transfer are often described in legal scholarship as ‘residual’ rights to remuneration. They are called ‘residual’ because authors and performers enjoy the unwaivable right to remuneration only upon the transfer of exclusive rights to audio and/or audiovisual producers.Footnote ¹²¹

The Beijing Treaty is the only international multilateral treaty that explicitly mentions this option. Its Article 12(3) provides that ‘[i]ndependent of the transfer of exclusive rights … , national laws … may provide the performer with the right to receive royalties or equitable remuneration for any use of the performance, as provided for under this Treaty including as regards Articles 10 [right of making available] and 11 [right of broadcasting and communication to the public]’ (emphasis added). This article of the Beijing Treaty explicitly provides for the possibility of persistence of the rights to remuneration after the transfer of exclusive rights.Footnote ¹²²

The provision of Article 12(3) of the Beijing Treaty was inspired by Article 5(1) of the EU Rental and Lending Directive,Footnote ¹²³ which obliges member statesFootnote ¹²⁴ to provide authors and performers with a ‘residual’ remuneration right for rental of phonograms and films:Footnote ¹²⁵ ‘Where an author or performer has transferred or assigned his rental right concerning a phonogram or an original or copy of a film to a phonogram or film producer, that author or performer shall retain the right to obtain an equitable remuneration for the rental’.’Footnote ¹²⁶ The notions of ‘rental’ and ‘copies’ in the Rental and Lending Directive refer only to physical objects.Footnote ¹²⁷ The title of Article 5 of the Rental and Lending Directive refers to the right to an equitable remuneration as ‘unwaivable’, and Article 5(2) states that ‘[t]he right to obtain an equitable remuneration for rental cannot be waived by authors or performers.’ The provision does not say anything on whether the right is ‘inalienable’,Footnote ¹²⁸ but the CJEU interpreted the ‘unwaivable’ character of the right to equitable remuneration for rental in a broad way, concluding that the right is not only ‘unwaivable’ but also ‘inalienable’. The remuneration right cannot be transferred by contracts between private parties as well as by a national legislative presumption of transfer of rightsFootnote ¹²⁹ from performers and authors to film producers.Footnote ¹³⁰

Since its integration in the EU acquis, the above-described formula of ‘residual’ remuneration rights was used in trade agreements. For instance, the text of Article 179, titled ‘Unwaivable right to equitable remuneration’, of the EU – Ukraine PTA (2014) is identical, mutatis mutandis, to the text of Article 5 (with the same title) of the EU Rental and Lending Directive. Article 220(5) of the EU – Andean Countries PTA (2012), although formulated as a ‘may’ provision and referring only to performers, refers to the act of making available in addition to the unwaivable remuneration for rental: ‘Where performers have transferred the right of making available or the right of rental, a Party may provide that performers retain the unwaivable right to obtain an equitable remuneration, which may be collected by a collecting society duly authorised by law, in accordance with its domestic law.’Footnote ¹³¹

Another example of the remuneration right coexisting and overlapping with the scope of exclusive rights could be found in the EU Term Directive,Footnote ¹³² which extended the term of protection of phonograms beyond fifty years after publication, or communication, whichever is earlier. This legislative instrument provides performers, whose contract with phonogram producers on transfer or assignment of their rights gives a right to claim a non-recurring remuneration (typically, session musicians), with the unwaivable right to an annual supplementary remuneration from phonogram producers.Footnote ¹³³ The remuneration right is supplementary to the exclusive right and has no legal impact on the existenceFootnote ¹³⁴ or exercise of the exclusive right; that is, recording companies to whom the rights were transferred continue to exercise them as they deem fit. This remuneration ‘shall correspond to 20% of the revenue which the phonogram producer has derived, during the year preceding that for which the said remuneration is paid, from the reproduction, distribution and making available of the phonogram in question’.Footnote ¹³⁵

With regard to the definition of the ‘revenue’ from which the aforementioned percentage should be calculated, Recital 13 of the Term Directive clarifies that ‘no account should be taken of the revenue which the phonogram producer has derived from the rental of phonograms, of the single equitable remuneration received for broadcasting and communication to the public or of the fair compensation received for private copying’. The purpose of this statement is to ensure that the remuneration right is supplementary to and independent from other remuneration rights.Footnote ¹³⁶ This distinction is essential because the term extension remuneration right could be presented as an entitlement to an annual lump sum payment covering all types of uses controlled by the publisher holding exclusive rights. Unlike the duration of other remuneration rights (closely tied to the usual terms of protection of respective exclusive rights of authors, performers and phonogram producers), the right of performers to annual supplementary remuneration limited by the term extension starts immediately following the fiftieth year after publication of the phonogram (or, failing that, lawful communication).

In a number of EU member states, ‘residual’ remuneration rights (i.e., coexisting with the corresponding exclusive rights and dependent on their transfer) were introduced beyond the obligations under the Rental and Lending Directive and the Term Extension Directive.Footnote ¹³⁷ Some stakeholders and scholars proposed unwaivable (‘residual’) remuneration rights for making available of audiovisual authors,Footnote ¹³⁸ and of audio and audiovisual performersFootnote ¹³⁹ and of authors and performers.Footnote ¹⁴⁰

Discussions on the creation of new remuneration rights coexisting with exclusive rights were entertained by EU policymakers. In its Green Paper of 2011, the European Commission considered as a policy option the introduction of unwaivable remuneration rights for authors and performers for making audiovisual works available and subject to mandatory collective management:

In 2012, the European Parliament called ‘for the bargaining position of [audiovisual] authors and performers vis-à-vis producers to be rebalanced by providing authors and performers with an unwaivable right to remuneration for all forms of exploitation of their works, including ongoing remuneration where they have transferred their exclusive “making available” right to a producer’.Footnote ¹⁴² In September 2017, the Committee on Culture and Education (CULT) of the European Parliament proposed the Committee on Legal Affairs (JURI) to include the following Article 14a(1), ‘Unwaivable right to fair remuneration for authors and performers’, in the Draft Directive on copyright in the Digital Single Market (DSM) Directive: ‘Member States shall ensure that where authors and performers transfer or assign the right of making available to the public their works or other subject-matter for their use on information society services that make available works or other subject-matter through a licensed catalogue, those authors and performers retain the right to obtain fair remuneration from such use.’Footnote ¹⁴³

The adopted text of the DSM Directive, however, deviated from the approach promoting the grant of substantive statutory rights to remuneration. DSM Directive’s Article 18(1), titled ‘Principle of appropriate and proportionate remuneration’, reads as follows: ‘Member States shall ensure that where authors and performers license or transfer their exclusive rights for the exploitation of their works or other subject-matter, they are entitled to receive appropriate and proportionate remuneration.’ (emphasis added). This provision does not require member states to establish a substantive statutory right to remuneration, as it aims primarily at regulating the conditions of exploitation contracts. Still, according to the European Copyright Society (ECS), ‘Member States are also free to use non-contractual mechanisms to implement the principle of a fair remuneration. One such mechanism that Member States are free to maintain or introduce in their law code consists of an unwaivable right to remuneration that authors or performers cannot transfer’.Footnote ¹⁴⁴

Another relevant provision of the DSM Directive is Article 15(5), stating that ‘Member States shall provide that author of works incorporated in a press publication receive an appropriate share of the revenues that press publishers receive for the use of their press publications by information society service providers.’Footnote ¹⁴⁵ Similarly to the cited Article 18(1), it also does not require member states to implement it by granting authors a right to remuneration. Yet, it is one of the ways in which this provision of the DSM Directive could be transposed into the national laws of member states.

As is demonstrated by the preceding paragraphs, the grant of remuneration rights coexisting with exclusive rights covering the same uses is a legislative tool of distributive justice, provided by a few international and regional instruments as well as by the national law of some countries. Those instruments are usually interpreted as permitting or requiring the provision of remuneration rights entering into play only upon the transfer of the exclusive rights to economic operators (e.g., producers). Those instruments, nevertheless, do not prohibit the introduction of unwaivable remuneration rights coexisting with corresponding exclusive rights, without requiring the transfer of exclusive rights.

Nowadays, thanks to technological and business developments, notably in the accessibility of recording technologies and online platforms enabling an easy reach to the public, many creators participate in the copyright-based economy without passing through traditional economic actors playing the role of intermediaries, publishers and producers. Granting of a right to an equitable remuneration only to creators who transferred their exclusive rights, but not to those who preferred to keep them (e.g., self-publishing and self-recordingFootnote ¹⁴⁶), does not seem to have a solid legal or economic public policy rationale. In the case of remuneration rights existing independently from the transfer of exclusive rights, an equitable remuneration requirement could also be applicable to the transfer of exclusive rights. Further empirical and interdisciplinary research on the impact of the grant of remuneration rights coexisting with exclusive rights is necessary (e.g., on the welfare of creators, on the cost of production of investment-intensive works, and on the prices for consumers). It seems that, given the ultimate purpose of the mechanism is to ensure some minimum standard of revenue-sharing from the results of creators’ artistic input, some outcomes of policy discussions and their conclusion in the domain of minimum wage could be of high relevance. The link between the conclusions of the discussion on minimum wage and the proposals for the grant of coexisting remuneration rights is strong where the creative input of authors and performers is the primary outcome of their labour.

With regard to the situations of coexistence and overlapping of exclusive and remuneration rights independent from the transfer of the exclusive rights, it could be observed that they could occur not only when entitlements to remuneration are granted to creators in addition to the pre-existing exclusive rights. The same situations should, in principle, occur when countries required by the international treaties to provide for a remuneration right decide to grant an exclusive right in addition to the corresponding remuneration right.Footnote ¹⁴⁷

The unwaivable nature of some remuneration rights permits ensuring a connection between the commercial success of the creations and their creators, unlike the one-time payments of the commonly practiced ‘buy-outs’ (i.e., ‘all-rights included’ contracts by which authors and performers transfer all their rights to publishers, phonogram and audiovisual publishers, and other economic operators for the full term of copyright and for all the territories).Footnote ¹⁴⁸

If the natural-person creators are the intended beneficiaries of the grant of remuneration rights, in addition to merely declaring such rights ‘unwaivable’ (and non-transferable), it is important to consider situations where, by virtue of statutory provisions, original creators (often employee creators and contributors to collective works) are not considered to be ‘authors’ or ‘owners’, for the purpose of initial allocation of rights. This runs contrary to the ‘creator doctrine’Footnote ¹⁴⁹ of copyright law but is in line with the labour law.Footnote ¹⁵⁰

Of course, not all creators always create with commercial motives in mind, and some creators sometimes do not want to put a price tag on the use of their works. Today, many creators legally express their wish for free non-commercial uses through free public non-exclusive copyright licences, such as the popular Creative Commons non-commercial licences.Footnote ¹⁵¹ In this regard, it is important to provide for an exception to the unwaivable character of rights where creators grant such licences.Footnote ¹⁵²

I. Limitation-Based Remuneration Rights Created within the Scope of Exceptions and Limitations Provided by the International Treaties

All the exceptions and limitations to exclusive rights provided by the international treaties have to comply with certain conditions, incorporated from what is generally referred to as the ‘three-step test’.Footnote ¹⁵⁸ However, as there are different views on the interpretation of the test, and as the test is inherently an imprecise tool, it could be challenging to define with precision the contours of each and every limitation-based right that could be created under this flexibility mechanism.

Some international norms which explicitly mention possible exceptions and limitations provide some level of confidence with regard to the permitted legislative action at the national or regional level. This part provides an overview of limitation-based remuneration rights created within the scope of such exceptions and limitations mentioned by the international treaties.

II. Limitation-Based Remuneration Rights Created Only under the Flexibility of the Three-Step Test

The creation of remuneration rights on the basis of exceptions and limitations has some consequences. Even if public policies, new technologies and business practices may seem to favour the transformation of some exclusive rights (or their parts) into limitation-based remuneration rights, the international legal framework imposes constraints on how governments can create exceptions or limitations to the rights. Countries acting within the limits imposed by the international legal framework may introduce remuneration rights not explicitly mentioned by copyright treaties through the margin of flexibility provided by the three-step test of Article 13 of the TRIPS Agreement,Footnote ²⁰¹ Article 9(2) of the Berne Convention, Article 10(1) of the WCT, Article 16(2) of the WPPT and Article 13(2) of the Beijing Treaty.Footnote ²⁰² The three-step test also constitutes an integral part of the EU copyright lawFootnote ²⁰³ and applies to exceptions and limitations to exclusive rights provided by the EU law.Footnote ²⁰⁴ Understanding the utility of the three-step test in the formation of limitation-based remuneration rights may shed some light on the ability of member states to adapt their domestic laws to accommodate new norms.