Download Final Exam with Solution for Trade Secrets and Restrictive Covenants | LAW 691 and more Exams Property Law in PDF only on Docsity!
RELEASABLE X
NOT RELEASABLE
EXAM NO. ________
ARIZONA STATE UNIVERSITY
COLLEGE OF LAW
INTERNATIONAL INTELLELCTUAL PROPERTY
LAW 691
Professor Karjala FINAL EXAMINATION 1-1/2 Hours Model Answer Friday, December 8, 2000 8:30 a.m. Instructions This examination consists of a single essay question that you are to answer in bluebooks (1-1/2 hours). You are permitted to have with you and to use during the examination your textbook, the statutory supplement, any class handout materials, your class notes, and any other written materials made by you or your study group (not photocopied from printed materials). On both parts, please write legibly. PLEASE WRITE ON ONE SIDE OF A BLUEBOOK PAGE ONLY. The question asks you, as an attorney in the legal department of the USTR, to decide whether a TRIPS member state, X, is in violation of the treaty under the facts given. You are asked to analyze whether X=s copyright law, as interpreted by the X courts, violate either Berne or TRIPS and to make a recommendation on whether the United States should seek a WTO determination that X is in violation. In carrying out your analysis, do not begin with an elaborate discussion of the facts. Rather, bring in the facts as they relate to relevant legal doctrine. GOOD LUCK!
Model Answer Question (1-1/2 hours) Architect A is a citizen of the United States. A is the designer of, and owns the architectural copyright in, a museum for the display of paintings and sculpture. The building was erected in the United States in 1995. The building=s exterior features are commonplace, but the interior is a clever and esthetically pleasing arrangement of gradually rising and falling spiral hallways that allow viewers of art exhibits at the museum to view all of the works on exhibit without retracing any of their steps. In 1997 A brought an action under U.S. law against an alleged infringer, whose building largely copied the interior structure of A=s design. The district court found the copy to be infringing and enjoined further construction. That decision has now become final. In 1999 A discovered that another museum had been constructed in country X. X is a member of the Berne union, a member of the WTO, and a signatory to TRIPS. The copyright statute of X includes Aarchitectural works@ within its definition of protected works but does not further define the term. A brought an action against the alleged infringer in X. (Let us refer to the alleged infringer as Y.) The equivalent of the district court in X found that the alleged infringer had, indeed, exactly copied the interior design of A=s work (except for a minor change of scale). Nevertheless, the court held that there was no infringement under X law, because the interior design was functional. A appealed, but the lower court=s decision was affirmed and the judgment is now final in X. A has complained to the United States Trade Commission (USTR), seeking to have the United States bring an action under the WTO against X, alleging a violation of TRIPS. You are in the legal department of the USTR, which you may assume has Ajurisdiction,@ and have been asked to review A=s complaint. Is X in violation of Berne? Is X in violation of TRIPS? Would you recommend that the United States seek a panel ruling under TRIPS (after appropriate Aconsultations@ and any other procedural requirements are fulfilled) that X is not in compliance with its treaty obligations? Model Answer Is X in violation of Berne? Berne Art. 2 includes Aworks of architecture@ in the definition of Aliterary and artistic works. Art. 9(1) provides that authors of literary and artistic works shall have an exclusive right of reproduction Ain any manner or form.@ Art. 12 gives these same authors an exclusive right of authorizing adaptions of their works. A is a citizen of the US, a Berne member, and is therefore entitled to the benefits of Berne. Moreover, because the allegedly infringing building has been constructed in X, Art. 4(b) requires its protection in X regardless of the author=s nationality or domicile. Art. 9(2) allows an exception to the reproduction right (but not, apparently, to the adaptation right) in Acertain special cases, provided that such reproduction does not conflict with a normal exploitation of the work and does not unreasonably prejudice the
Model Answer limitation is consistent with Berne. Unless X fails utterly to protect the design of buildings on the ground of functionality, it would appear that X is free to decide the scope of protection to be offered. Of course, X is not free simply to call Afunctional@ an architectural design owned by a foreigner entitled to Berne protection. Here, we are told that the design is Aesthetically pleasing,@ but we are also told that the design serves the functional purpose of allowing viewers of art exhibits to move through the exhibition with some efficiency, without having to retrace their steps. Copyright is not well designed to protect works of combined form and function. Even US law requires clear separation of form and function for PGS works before copyright protection will attach. (Architectural works, according to the facts of this problem, may be an exception, but they are not PGS works.) Nothing in Berne requires protection for everything that is esthetically pleasing, regardless of function. If it did, Berne would essentially replace all industrial design laws and treaties. Here X has decided that function overrides form, and X is within its rights under Berne to do so. Article 5(2)=s last sentence (quoted above) does begin with the words, AConsequently, apart from the provisions of this Convention... .@ It is therefore possible to argue that Article 2(1) includes some substantive content and that member nations are not free to vary the scope of protection as far as X has done here, whether on grounds of functionality or any other. For the reasons given above, this does not seem to be a correct interpretation of Berne in view of the number of exceptions that nearly all Berne members have been making from the beginning. However, if we assume arguendo that protection of functional interior design is mandated by Berne, we must still face the issue of whether X=s application of its law is nevertheless consistent with Berne, in view of Berne=s explicit allowance of some limited exceptions. Given that the design was copied exactly, with only a minor change of scale, the adaptation right would appear not to be involved. There does appear to be a prima facie violation of the reproduction right of Art. 9(1), however. The exact copying would seem to be more than a Aquotation@ that does not exceed some legitimate purpose (whatever that may be) under Art. 10(1). Does Art. 9(2) excuse this copying? That breaks down into three issues: Is this a Acertain special case@? Does reproduction conflict with Anormal exploitation@ of the work? Does the reproduction Aunreasonably prejudice@ the legitimate interests of the author? This does not appear to be a Acertain special case,@ because the functionality exception applied by the court attaches to all works, or at least all works of architecture. There is no obvious basis for limiting the court=s interpretation to museums nor any reason for thinking that museums are a Aspecial case.@ Every work of architecture is a combination of form and function, and the law of X, as interpreted by the court, would mean that no functional feature of any such work is protected in X. That alone is enough to eliminate Art. 9(2) as justification for X=s failure to protect against reproduction. We may analyze the other elements briefly, however. What is the normal exploitation of a work of architecture? If A owns a valuable or desirable design, its normal exploitation would be to license that design, to the extent consistent with any contractual obligations A has with the owner of the museum already constructed in the
Model Answer US. By allowing Y to copy that design without A=s permission, that avenue of normal exploitationBwhich is essentially the only avenue open to the copyright ownerBis denied. So, exact reproduction is inconsistent with normal exploitation by A. Does Y=s reproduction unreasonably conflict with A=s legitimate interests? This element seems to contain a good deal of overlap with the previous. What are A=s legitimate interests? Beyond A=s right to exploit the work for profit, perhaps A has a legitimate interest in deciding where his design could be used and in how many countries. Architects often take pride in having created unique works that attract tourists and other admirers for years to come. If A=s design is not protected and museum builders find it convenient to adopt his design, this essential feature of the architect=s pride in his creation could be lost. Does this require evidence of how many other countries recognize, or would recognize, a functionality exception in this case? In any event, X seems fairly clearly to flunk the first two elements of Art. 9(2), so that provision cannot be used to justify X=s copyright system if, indeed, Berne does not allow for a general functionality exception. Is X in violation of TRIPS? TRIPS Art. 9(1) incorporates Berne Arts. 1-21 (except for Art. 6bis) but explicitly provides that copyright protection shall not extend to ideas, procedures, methods of operation or mathematical concepts Aas such@ under Art. 9(2). Art. 13 provides for some limitations and exceptions using language similar to Berne Art. 9(2): Such limitations and exceptions must be confined to Acertain special cases which do not conflict with a normal exploitation of the work and do not unreasonably prejudice the legitimate interest of the right holder.@ No other provisions of TRIPS seem directly relevant to this problem. First, let us assume that Berne does include an implicit functionality exception, as argued above. Does that exception carry over into TRIPS? TRIPS 9(1) only says that AMembers shall comply@ with Berne Arts. 1-21. Therefore, if Berne includes an implicit exception, falling within the exception would leave the member in compliance with Berne. But, as argued above, Berne also includes an implicit exception for ideas, yet TRIPS 9(2) expressly excludes ideas and related elements from its protective scope. The US would have to argue that, even if Berne does recognize a functionality exception, the exceptions permitted by TRIPS are those specified by TRIPS 9(2) and 13. As argued in the WTO decision against the United States in the performance right dispute with the EU, if the TRIPS drafters intended to bring only the text of Berne Arts. 1-21 into TRIPS and not the complete Berne jurisprudence associated with those articles, they would have done so explicitly. I conclude that TRIPS 9(1) does include all Berne exceptions, including those that are only implicit, whether or not they are expressly recognized in TRIPS. In this case, assuming that Berne does permit a functionality exception, TRIPS does, too, and X is not in violation.
Model Answer permissible with respect to other types of works (and, indeed, even with respect to computer programs, limitations on the scope of protection to afford). Art. 10 was probably thought necessary because of doubts over whether Berne covered them at all. Berne was last revised in 1968, before computer software was recognized as the independent, and valuable, economic commodity that it has become. The United States and other countries have adopted copyright protection for computer programs without abandoning their general rejection of the protection of function under copyright. (That the US in this case seems to have departed from that principle for architectural works does not mean that TRIPS requires a similar retreat from basic copyright principles by other TRIPS members.) I conclude that Art. 10 does not compel a conclusion that a functionality limitation on architectural works is prohibited by TRIPS. Finally, even if neither Berne nor TRIPS Art. 9(2) recognizes a functionality exception, the question is whether TRIPS Art. 13 applies to justify X=s handling of the particular interior design at issue in A=s architectural work. TRIPS Art. 13 essentially tracks the language of Berne Art. 9(2). This does not appear to be a Acertain special case,@ given that the functionality limitation applies to all works in X, or at least all architectural works in X. Allowing Y to copy it without permission conflicts with A=s primary method of exploitation, which is licensing the design to others. Whether X=s approach unreasonably conflicts with A=s legitimate interests beyond economic exploitation is a little more difficult, as outlined above in connection with the Berne analysis. At least arguably, it conflicts with A=s interest in deciding where and when his creation may be realized in a physical building, but this interest is a bit like his Amoral@ rights, which are expressly excluded from TRIPS under Art. 9(1). So the case for this element of Art. 13=s fair use is stronger than under Berne, but there is still no compliance with the other two elements. Art. 13 is therefore unlikely to serve as a defense if the other arguments under TRIPS fail. In sum, X has likely violated neither Berne nor TRIPS because (1) Berne implicitly permits a functionality limitation and (2) TRIPS incorporates Berne on this point and independently, under Art. 9(2), impliedly permits a functionality limitation. I would not recommend that the US bring any action in the WTO. If we were to do so, many of our own long-held copyright principles, such as those deriving from Baker v. Selden , might have to be abandoned. If, however, it is concluded that neither Berne nor TRIPS permits a functionality limitation, the very narrow fair use provisions of both treaties would not supply a justification, either.
