This paper considers the role of customary international law for the protection of intellectual property (IP) beyond borders. As an area where standards of protection are primarily, if not exclusively, governed by treaty law, there seems to be little role left for custom. The analysis shows that this point holds true for principles or rules that commit states to a particular form of protecting the rights of foreign IP owners. However, the interpretation, application and enforcement of these rules are informed by other areas of public international law, including those governed by custom. After reviewing this often neglected role of customary international law for IP protection in general, the paper focuses on the customary right to regulate and its role in neighbouring areas of international economic law, – in particular the protection of foreign investments. Exploring the contours and limits of this right, the main research question then is whether – and if so, how – this right applies to treaty commitments in relation to the protection of IP rights. I conclude that despite a complex web of treaty-based rules, there is usually no specific evidence that the state parties intended to ‘contract out’ of the right to regulate. That aspect is further confined by reference to this right in the Doha Declaration on TRIPS and Public Health. A broader point is to emphasise custom as a necessary contextual factor of the environment within which international IP law operates: it is a relevant element simply because coordinating protection beyond borders often relies on the functionality and tools of international law.

Quite fitting with one of the themes for this book, the first major project on which I had the privilege to work with Annette Kur was called ‘Intellectual Property Rights in Transition’ (IPR in Transition); its outcome was subsequently published as Intellectual Property Rights in a Fair World Trade System: Proposals for Reform of TRIPS (EE Publishing, 2011). Based on our earlier discussions about key shortcomings within the international IP system, Annette and I focused on the concept of ceilings: the idea was to challenge the commonly held view that international IP law is only about setting minimum standards and can be further expanded without limits (or ceilings).2 While I am not sure what role our work played in this, a range of subsequent developments in international IP law show a transition to a system where IP treaties are not only about guaranteeing exclusive rights and other protections,3 and where IP protection is conceptualized as an element within a broader set of international norms that can counter attempts for limitless expansions of IP protection and enforcement.4

Introduction

The Economic Partnership Agreement (EPA), concluded in 2008 between the European Community (EC), its Member States and the CARIFORUM States, ushered in a new trading relationship between the two regions. The Cotonou Agreement signed between the EC and its Member States and the African, Caribbean and Pacific (ACP) Group of States in 2000 had signalled the transformation of the trade and development relationship between the ACP and EC. Since 1975, the Lomé trade regime between Europe and the ACP States had been marked by non-reciprocal preferential access for ACP products into the EC market. This trading arrangement was revisited not only because it had not generated meaningful growth and diversification of ACP exports to Europe but also because two dispute settlement panels had found it to be in breach of the General Agreement on Tariffs and Trade (GATT).

With a view to achieving the gradual integration of ACP States into the world economy, the Cotonou Agreement called for new WTO-compatible trading arrangements that progressively removed barriers to trade and enhanced cooperation in all areas related to trade. The Cotonou trade preferences were maintained for ACP countries until 31 December 2007, by which time the new trading arrangements called EPAs were to be negotiated. The waiver granted by the WTO in 2001 for the Cotonou Agreement's preferential trade regime also expired at the end of that period.

The CARIFORUM–EU EPA (CEPA) is the first and, to date, the only comprehensive EPA to be concluded by the ACP States. Given that Haiti is the only CARIFORUM least-developed country (LDC), the other CARIFORUM countries would not have enjoyed duty-free quota free access under the EU's Everything But Arms (EBA) initiative. Therefore, if an EPA were not in place by 1 January 2008, the CARIFORUM non-LDCs would have had to conduct trade in goods on the basis of the EU's Generalized System of Preferences (GSP). The GSP was less advantageous because it does not cover important exports such as sugar, bananas, brown rice and alumina, it includes a graduation mechanism and, by virtue of the requirements of the WTO Enabling Clause, it could not extend special preferences to CARIFORUM non-LDCs. Unlike other ACP States, the CARIFORUM States chose not to pursue the option of negotiating an interim EPA governing only market access in goods.

Introduction

In addition to specific provisions dealing with civil and criminal enforcement, as well as enforcement in the digital environment, ACTA contains a section prescribing how states bound by the agreement must provide for measures of IP enforcement at the border. In section 3 of Chapter II, Articles 13 to 22 contain rules on the scope of border measures (Articles.13, 14 & 16), the initiation of proceedings by right holders or custom authorities (Articles.15–17) and a further procedure that deals with allegedly infringing goods (Articles.18–22). These rules must be viewed in the context of the enforcement provisions in the TRIPS Agreement, in particular Articles 51–60. In general, ACTA goes beyond TRIPS and requires states to adopt higher enforcement standards. At the same time, the new treaty narrows those TRIPS provisions that protect the interests of traders and owners of goods subject to border measures. This chapter discusses some particularly controversial aspects of these “TRIPS-plus” standards for enforcing IPRs at the border. The focus is on whether ACTA mandates (or allows) the seizure of goods – such as generic medicines – in transit, and what safeguards the final text of the agreement contains to avoid such seizures.

Scope of ACTA Border Measures

ACTA’s provisions on border measures extend the existing minimum standards under TRIPS Article 51, which obliges WTO members to foresee border measures only against “importation of counterfeit trademark or pirated copyright goods.” Together, ACTA Articles 13 & 16 determine the IP infringements and the trade activities for which parties to the agreement must foresee border measures in their national laws. These rules were amongst the most contentious issues during the treaty’s negotiations.

Introduction

Policy-makers, commentators and scholars are increasingly realising the impact that (international) intellectual property (IP) protection has beyond incentivising investment in innovation and creativity. IP also touches upon areas of general societal concern such as public health, access to information, the environment, climate change and food security. At a recent World Intellectual Property Organisation (WIPO) conference on these linkages, the World Trade Organization (WTO) Director-General Pascal Lamy acknowledged that ‘the international intellectual property system cannot operate in isolation from broader public policy questions such as how to meet human needs as basic health, food and a clean environment’.

In the most relevant multilateral agreement on IP, the WTO Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS), several provisions have been identified as providing WTO Member States, in particular developing countries, flexibility and policy space to address such public interests. In 2001, WTO Member States emphasised several of these flexibilities in the Doha Declaration on TRIPS and Public Health.

Introduction

A significant number of prominent WTO disputes, including EC – Hormones, US – Shrimp and US – Foreign Sales Corporations, have raised questions over state sovereignty in exercising control over important matters. Both anti-globalisation advocates and hard-core free traders often blame the WTO dispute settlement system for allowing its actors, especially the WTO Appellate Body, to allegedly go beyond their mandate and create new rules rather than applying existing ones. The US – Gambling dispute between the tiny Caribbean island nation of Antigua and Barbuda (Antigua) and the United States involved sovereignty-related issues over the extent the WTO judiciary may ‘interfere’ with US perceptions of public order and morality. However, this dispute points to further aspects affecting national autonomy and the reach of international obligations, which are this chapter's focus. The continued US failure to comply with the recommendations and rulings of the Dispute Settlement Body (DSB) has led to arbitration over Antigua's right to retaliate by suspending its obligations under the TRIPS Agreement in order to induce compliance. Rather than discussing the technical details of cross-retaliation, I focus on the sovereignty aspects this type of retaliation raises. To what extent can the WTO dispute settlement system provide trade heavyweights and small economies with an effective mechanism to enforce international obligations under WTO law? Does the notion of suspending intellectual property (IP) protection give developing countries an effective tool, given the economic importance IP has for most industrialised economies?