Fordham 2016: Copyright and trade mark - what does the future hold?

It is that time of year again when IP's great and good pool together at Fordham Law School near Columbus Circle in Manhattan to debate, learn and have fun.  After some introductory remarks from the ever entertaining Professor Hugh Hansen, the first session was quickly under way on the topic of the future of copyright and trade mark.

Maria Martin-Prat

First up was Maria Martin-Prat (Head of Unit - Copyright, DG Connect at the European Commission).  With new means of receiving content via subscription services streamed directly to different types of devices, Maria emphasized the continued role of copyright in this new digital landscape in raising questions as to how copyright law can deal with these new changes.  How does the copyright system ensure that the value of copyright works are recognized?  In Europe, we have been doing more than our fair share of copyright consultations with the debate becoming increasingly nuanced.  In particular, the Commission is looking at the copyright regime in the new landscape.  Due to the level of harmonization Maria stated that we have to make greater changes.  Such legislation will take the form of Directives which have to be implemented into national laws.  Directives are favored because the European legislation has to approximate their laws with international treaties.  Regulations are easier to use if the subject matter is stand alone - not really the case for copyright.  The examination of multi-territorial licences and cross-border issues relating to the facilitation of licences will be an important. issue.  In the EU single market, Maria asked, is it always justified that right holders always exercise their rights in a territorial manner and in doing so partition the single market along territorial borders?  If no, then how far can legislation go to legislate for this?  Maria also stated that exceptions to digital copyright will remain important but will not, in Maria's opinion, require further European wide harmonization (so no reopening of the E-Commerce Directive, for example?)  Finally, the future copyright debate in Europe will be increasingly about the exclusive nature of rights.  Even if there are many interests and stakeholders, these discussions are in the end about the exclusive nature of copyright. 

Michele Woods

Michele Woods (Director, Copyright Law Division, WIPO) followed outlining a huge dossier of copyright issues WIPO is tackling.  Michele commented that there has been a bit of a legislative stalemate.  Member States (who make up the committees on WIPO) want to add more issues but don't want to necessarily have more meetings.  WIPO is looking forward to seeing how these issues are resolved.  On the issue of copyright and broadcasting, the audience was told that it has been on the WIPO legislative agenda the longest (since 1966), formally under discussion for over 15 years.  There is a potential treaty on broadcasting - currently in a narrow, consolidated text based on the function of traditional broadcasters and cable broadcasters.  There are quite divergent views in the committee and because its been ongoing for such a long time, there is frustration this hasn't moved as far as it should have.  Limitations and exceptions had four sub topics one of which resolved.   Analysis of copyright in the digital environment is an extremely broad topic which has also been added to WIPO's agenda.  Michele stated that WIPO is also expecting the Marrakesh Treaty to come into force.  World Intellectual Property Day will again be centered on copyright with issues ranging across the spectrum.   Michele explained that they have seen an increasing level of involvement from NGOs on WIPO committees (including companies), who actively drive discussions with Member States forward.  Because of the momentum that NGOs bring to the debate, they are very much welcomed by WIPO.  Hugh asked Michel to what extent social media has on WIPO?  Michele responded that real time social medial commentary, especially at conferences, is invaluable.  

Maria Pallante

Maria Pallante (Register of Copyrights, US Copyright Office) stated that the US has been reviewing its copyright laws since 2013 - which is a very deliberate, transparent and inclusive consultation working with many stakeholders.  In 2013, Maria suggested that Congress should stop proposing piecemeal solutions and conduct a full scale update of copyright law.  Since then the House of Representatives have had more than 20 hearings with several testimonies.  In April 2015, the Copyright Office identified 8 issues that were ripe for decision making.  It was for Congress to decide whether it should progress these issues.  Two interesting proposals to watch out for are a new copyright small claims procedure in the Office where plaintiffs and defendants opt in to resolve disputes.  The second proposal is copyright in the music market place (to be discussed on Friday) which is another exhaustive study where a series of rationalizations on music licensing is being examined.  The Copyright Office also issued recommendations including on "making available" right which is part of US law but recommended that Congress should monitor the case law and the judiciary should recognize their role in developing the case law in response to technological progress.  The Office also recommended that fair use  should be left alone so that the body of case law can develop.  There are currently four pending studies - two on Digital Millennium Copyright Act (s.1201 and s512 on notice and take down), one on copyright law and every day consumer products and a kick off symposium on moral rights (which hasn't really been looked at until now  - the symposium will be held on April 8).  Maria stated that the Copyright Office's view is that a 21st Century copyright law requires a 21st Century Copyright Office who facilitates not dictates the law.  In recent months, drawing on robust public feedback, Maria informed the audience that the Copyright Office has just published a five year strategic plan entitled "Provision information technology modernization plan and cost analysis" (click here to find out more).  With such a huge caseload of initiatives, Hugh asked Maria if she had enough help.  Maria said she has the authority to hire 500 staff, but only has the budget for 300 so if anyone was looking to come to the Copyright Office to work for free that would be welcome!  On the appointment of Registers, Maria commented that the appointment process will be increasingly political.  There are a number of proposals about how to strengthen what the Copywriter Office does, including in relation to them having direct, not indirect accountability, across the Government.  The portfolio is ever expanding.  For this reason, Maria noted, the Register needs the authority to do the job that they have under the law, give them direct accountability and also incentive to come in and do the job.  

Dimitris Botis (Deputy Director of Legal Affairs at the newly named EUIPO) was next to discus the future of the EU trade mark system in particular the recent trade marks reform package consisting of Directive 2015/2436 and Regulation 2015/2424.   The biggest change in substantive trade mark law is the deletion of the graphic representation requirement which means that it will be easier to register non-traditional marks.  The exact impact of this change on filing practice and types of marks that can be accepted will not be seen until the implementing rules are issued on 1 October 2017.  The second biggest change is to the functionality prohibition to "other characteristics".  There is now also an express requirement for clarity and precision in specifying the goods and services that are specified for the mark.  It will be based on the "natural and usual meaning" of terms (i.e .interpreted literally). The new fee structure and levels with a new "one-fee-per-class" system is also a big change.  There has been a moderate reduction of the application fee and substantial reduction of renewal fees. Dimitris also pointed out that there is also new EU Certification mark which can be registered to ensure the certification of the quality, material, mode of manufacture etc, but cannot be used in relation to geographical origin.  Institutionally, there will be changes in terminology - hello EUIPO!  But its not just changes in terminology, there is a change in management structure.  The changes will be taking on a more political taste (the EU Commission has two seats now).  The new Regulation also requires more cooperation between the Member States.  Trevor Cook from Wilmer Hale said the change are really only technical in nature and do not generate a huge impact on substantive trade mark law.  Dimitris agreed but the technical changes will ensure more efficient operation.  

Shira Perlmutter

Shira Perlmutter (Chief Policy Officer and Director of International Affairs, USPTO).  Legislative stalemates are not uncommon but there other means of achieving reform, including stakeholder consultations and developing industry best practices.  Shira also stated there is reason to be hopeful because the online markets have really developed over the past ten years and the discussion on copyright have progressed to the point were we are now talking about nuances of copyright systems, not the justification of copyright (echoing Maria's earlier comments).  

Mark Seeley

Mark Seeley (Senior VP and General Counsel at Elsevier).  In response to an earlier question about the presence of lobbyist in copyright, Mark stated that if lobbying is defined as talking to people, he would be one of them.  However, he does worry about the nature and quality of evidence that legislators examine when looking to formulate legislation, including the nature of advisers and consultants who advise the government. Another concern Mark shared is the nature of consultation surveys and questions which can seem one-sided or biased.  The AmeriKat wonders if the recent Enforcement Consultation could be one of them?


Antony Taubman (WTO) reminded the audience that the WTO came into being 20 years ago and from its inception there has been a perceived rivalry between the WTO and WIPO.  WTO could proudly extend this rivalry by the fact that they have just reached their 5th anniversary of no work at all on the GI register which is mandated by TRIPS.  WTO's work jams, like WIPO's, seem pretty well entrenched.  Antony echoed the sentiment that it is a period of real flux and a time to really think about what they should be doing in the filed of IP - there is a huge range of IP issues to tackle and a huge amount of interest to tackle these issues.  But what should they be?

Is the panel optimistic about the future of IP reform?  Antony said we can do tremendous things if we have greater alignment in international process and ensuring that the facts on the ground make their way into the international fora.  Mark said that we need more space to discuss what is the problem we are trying to fix and is there even a problem?  Is there a market solution, not a legislative solution that will have more impact?  We just need a bit more time, he said, to think through these questions and possibilities.  Shira is optimistic because there is more buy-in than there was 10 years ago on the concepts of IP.  In the past 10 years we have seen much greater expertise and understanding of the issues globally.  In a lot of bi and mutli-lateral conversations there is a considerable level of shared interest and concerns and a ripening of mutual understanding.  Dimitris responded that the EUIPO is optimistic, but there is more work to be done to implement all of the reform provisions.  Maria Pallante is also very optimistic, especially because copyright law has become ubiquitous in 21st Century life.  She noted that solutions will be part statutory, regulatory and voluntary agreement-based.  Michele is also optimistic, despite often feeling on the defensive with respect of the copyright system which is a good thing as it gives us a chance to explain the relevance of the system.  Member States clearly want to use all aspects of copyright and they see the value, but reform is a slow process.  However, as other panellists noted, there is an increasing level of knowledge and competence to help move the ball forward.  Michele also stated its a very fun time to be in IP, especially copyright (i.e. Internet of Things).  Maria Martin-Prat concluded by stating that her definition of "fun" is slightly different, but she is also optimistic, albeit a bit more cautious.  Maria really hopes for more rational debate with less room for exaggeration than what has been seen in copyright debate in the past 10 years.