IIC (2017) 48:245–249 DOI 10.1007/s40319-017-0555-4 BOOK REVIEW

Hanns Ullrich, Reto M. Hilty, Matthias Lamping and Josef Drexl (eds): TRIPS plus 20 – From Trade Rules to Market Principles MPI Studies on Intellectual Property and Competition Law, Vol. 25, Springer Verlag, Berlin-Heidelberg 2016. 760 pp. ISBN 978-3662-48106-6. €180.00 Ernst-Ulrich Petersmann Published online: 1 March 2017  Max Planck Institute for Innovation and Competition, Munich 2017

The Max Planck Institute for Innovation and Competition is to be commended for its regular publications on the interrelationships between international trade law and intellectual property law. This book examines the impact and shortcomings of the TRIPS Agreement of 1994 and how much its changing context during the past 20 years requires new interpretative approaches, for instance in order to (1) establish a better balance between the conflicting interests of the owners of IP rights and of third parties (e.g. users and competitors adversely affected by ‘‘overprotection’’ of IP); (2) adjust the terms of protection of IP to their macroeconomic and social objectives; (3) promote convergence of IP protection with the protection of other private and public goods; and (4) limit adverse extraterritorial effects of national systems of protection on other nations (e.g. in terms of economic innovation, access to medicines at affordable prices). Most of the 24 chapters of this impressive book argue in favour of evaluating the TRIPS Agreement no longer from the perspective of reciprocal trade regulation, but rather in the light of its broader objectives and principles as acknowledged in Arts. 7 and 8 TRIPS Agreement. Part I entitled ‘‘Revisiting the Policy Rationales of the TRIPS Agreement’’ begins with a chapter on ‘‘The Origins and Structures of the TRIPS Agreement’’. William Cornish and Kathleen Liddell recall the basic tenets pursued in the TRIPS negotiations, notably that (1) IPRs should be available in all WTO member countries; (2) the TRIPS standards should ensure minimum standards corresponding to those prevailing in industrialised market economies; (3) WTO members could apply more demanding, national or regional standards; yet (4) less-demanding standards should be permissible only to the extent TRIPS allows such deviations. In the following chapter ‘‘The Concept of Trade-Relatedness of IPRs in Times of PostTRIPS Bilateralism’’, Josef Drexl explains convincingly why strategies of using E.-U. Petersmann (&) Doctor iuris utriusque Professor Emeritus, European University Institute, Florence, Italy e-mail: [email protected]

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trade concessions as a bargaining chip for imposing higher IP standards on other trading countries in order to obtain ‘‘protection rents’’, promote the technological competitiveness of industrialised countries and reduce trade deficits (e.g. of the USA) need to be reviewed. The economically inefficient over-protection of IPRs (e.g. in terms of restricting competition and access to essential goods like pharmaceuticals, food and education) should be avoided, which is not outweighed by the benefits of related trade-concessions, investments or technology transfers. Part I concludes with a contribution by Hanns Ullrich ‘‘The Political Foundations of TRIPS Revisited’’. This chapter criticizes the legitimacy deficits of the ‘‘one-sizefits-all’’ approach underlying the TRIPS Agreement in view of its disregard for the fact that IPRs are likely to promote innovation only under competitive market conditions in countries with a sufficient educational system and science base. The TRIPS Agreement should be re-conceptualized and re-interpreted as a framework regulation for national innovation markets so as to better accommodate IP protection with the diversity of national industrial and social policies and related public interests in IP protection. As the risks of over- or under-protection of IPRs as incentives for investments and innovation need to be evaluated with due regard to the development, comparative advantages and different interests of countries, the limited ‘‘flexibilities’’ of the trade approach underlying the TRIPS Agreement need to be reviewed from the perspective of a broader ‘‘international economic law approach’’ aimed at optimizing IP protection, national ‘‘innovation gains’’ and ‘‘imitation costs’’. Part II ‘‘TRIPS as a Legal Framework: Which Geometry?’’ begins with a contribution by Annette Kur ‘‘From Minimum Standards to Maximum Rules’’, which criticizes the one-sided evolution away from the ‘‘minimum rights approach’’ underlying all major IP conventions. Kur discusses the increasing calls for mandatory ‘‘ceilings’’ (‘‘substantive maxima’’) limiting the unprecedented level of substantive harmonization of IP law in the post-TRIPS world (as illustrated by the 2013 Marrakesh Treaty for Improved Access for Blind, Visually Impaired and other Reading Disabled Persons to Published Works as the first ‘‘ceiling treaty’’ limiting international IP protection). The contribution by Henning Grosse Ruse-Khan ‘‘IP and Trade in a Post-TRIPS Environment’’ uses the example of additional protection of geographical indications via EU Free Trade Agreements (FTAs) to discuss whether the unilateral, bilateral and regional pressures for ‘‘TRIPS plus protection’’ in IP rule-making need to be limited by harmonized, global maximum standards in order to mitigate trade barriers resulting from uncoordinated expansion of TRIPSplus rules. The contribution by Reto M. Hilty ‘‘Ways Out of the Trap of Article 1(1) TRIPS’’ continues the discussion of IP ‘‘over-protection’’ as a ‘‘new form of protectionism’’ in today’s global knowledge-based economy. The chapter examines additional perspectives such as the increasing number of FTAs limiting the freedom to restrict IP (e.g. copyrights) based on domestic needs (e.g. information society policies) to a larger extent than the TRIPS Agreement allows. Simplistic equations such as ‘‘more patent protection = more innovation’’ (or ‘‘more copyright protection = more creation’’) disregard the risks of ‘‘market failures’’ resulting from over-protection of IP – not only in less-developed, but also in developed economies (e.g. resulting from the ‘‘tens of thousands of patents in each smart

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phone’’ and from ‘‘pay-for-delay agreements’’ aimed at blocking the market entrance of generic drugs). Hence, Hilty examines the various ‘‘flexibilities’’ of the TRIPS provisions and ‘‘leeway outside TRIPS’’ for ‘‘correcting’’ the perceived over-protection of IP rights impeding broader domestic policy interests. Part III ‘‘Systems Challenges’’ examines systemic legal problems such as ‘‘The Proportionality Principle in the TRIPS Agreement’’ (by Max Wallot), ‘‘The Commodification of Internet Intermediary Safe Harbors: Avoiding Premature Harmonization Around a Suboptimal Standard’’ (by Seth Ericsson), ‘‘Regulatory Innovation and the Institutional Design of the TRIPS Agreement’’ (by Rupprecht Podszun and Benjamin Franz) and ‘‘Intellectual Property Harmonization in the Name of Trade’’ (by Matthias Lamping). Wallot convincingly argues in favour of reading Arts. 7 (‘‘Objectives’’) and 8 (‘‘Principles’’) of the TRIPS Agreement as expressing the principle of proportionality (which is explicitly mentioned only in Articles 46 and 47). Member states thereby benefit from adequate flexibility for designing their national intellectual property laws in ways that promote ‘‘competition on the merits’’, innovation and technology transfer. Ericsson describes the difficulties preventing agreement on a globally appropriate ‘‘safe harbour regime’’ ensuring right-holder safety in the online environment, which should not be perceived as a sector-specific aspect of secretive trade negotiations. Podszun and Franz examine how the TRIPS Agreement – from the perspective of institutional economics and promotion of innovation – could be interpreted and designed as a ‘‘learning treaty’’ promoting regulatory competition rather than one-sided focus on the IP rights of right holders. Lamping likewise argues for ending ‘‘the marriage of convenience between trade and intellectual property’’. The TRIPS Agreement should be reconceptualised as a ‘‘market framework regulation that promotes competition and innovation’’ (p. 313 f) as a ‘‘decentralised discovery procedure for innovation opportunities and as a price-setting mechanism for innovation rewards’’ (p. 342) without preventing states through threats of trade sanctions if they accommodate non-trade-related aspects of IP. Part IV ‘‘TRIPS and Countervailing Principles’’ includes contributions on ‘‘Revisiting the Principle of Technological Neutrality in Patent Protection in the Age of 3D Printing Technology and Cloud Computing’’ (by Nari Lee), ‘‘Article 27(3)(b) TRIPS and Plant Variety Protection in Developing Countries’’ (by Christoph Antons), ‘‘TRIPS and Climate Change in the International Economic Order’’ (by Agnieszka A. Machnika), and ‘‘Establishing Conformity Between TRIPS and Human Rights: Hierarchy in International Law, Human Rights Obligations of the WTO and Extraterritorial State Obligations under the ICESCR’’ (by Klaus D. Beiter). Each of these chapters discusses how IP law and TRIPS rules can be reconciled with protection of public goods and accommodate new regulatory challenges (e.g. resulting from 3D printing and cloud computing, sui generis plant variety protection in developing countries, IP-related impediments to climate change mitigation policies). Especially Machnika and Beiter argue that ‘‘the TRIPS Agreement does not provide an adequate framework to address the issues relating to the safeguard and supply of necessary public goods’’ (p. 438) like climate change prevention and protection of human rights. Beiter’s argument ‘‘that both the WTO and its members, as such, are the bearers of obligations under IHRL (=international

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human rights law) and that, in many instances, norms of IHRL will have to be held to rank above ‘international trade law’’’ (p. 446), raises numerous legal methodology problems that remain deeply controversial among governments and lawyers. For instance, is it politically justifiable and realistic to claim ‘‘that the WTO … should not become involved in the active implementation of human rights’’ (p. 499) even though inter-state complaints procedures have not been used in UN human rights bodies so far? As legal and judicial protection of ‘‘common market freedoms’’, property rights and other fundamental rights in German and European constitutional law go far beyond that in the UN Convention on Economic, Social and Cultural Rights, it appears legally inappropriate and politically unrealistic to expect WTO members to accept that UN human rights bodies – rather than WTO members themselves – should decide on how WTO rules should be construed in conformity with the fundamental rights of citizens in European democracies and related WTO dispute settlement proceedings. As both WTO rules and UN human rights provisions often offer little guidance on how to interpret WTO obligations in conformity with the fundamental rights of citizens, ‘‘constitutional bottom-up approaches’’ may better respect the reality of legitimate ‘‘constitutional diversity’’ and frequently higher protection of fundamental rights in national and regional legal systems (e.g. the EU Charter of Fundamental Rights and the European Convention on Human Rights) than one-sided prioritization of UN human rights minimum standards and their interpretation by UN human rights experts who often lack expertise in international economic law and the constitutional law systems of WTO members. Part V ‘‘Exclusivity, Access and Innovation’’ includes the contributions ‘‘From Transfer of Technology to Innovation through Access’’ (by Peter Picht), ‘‘TRIPS and Competition Rules: From Transfer of Technology to Innovation Policy’’ (by Mor Bakhoum and Beatriz Conde-Gallego), ‘‘How Public is the Public Domain? The Perpetual Protection of Inventions, Designs and Works by Trademarks’’ (by Kaya Ko¨klu¨ and Sylvie Ne´risson) and ‘‘Dependent Patens under Article 31 TRIPS: Lessons from Copyright Law’’ (by Matthias Leistner). Access to standardized and IP-protected technology is key to the competitiveness of developing countries and may promote innovation of IP law (e.g. by challenging anti-competitive abuses of IP rights). Competition law and IP laws should be understood as being complementary to each other in view of the fact that combating IP-related restraints of competition inhibiting innovation is covered by the rationale of the TRIPS Agreement (e.g. as acknowledged in Arts. 8(2), 31(k) and 40). The contributions in Part V explore the often vague, competition-related TRIPS provisions and their use for limiting anticompetitive practices. Part VI ‘‘From Enforcing to Enhancing TRIPS’’ concludes this book with six contributions ‘‘The WTO/TRIPS Dispute Settlement Mechanism: Experiences and Perspectives’’ (by Silke von Lewinski), ‘‘Merging ACTA into TRIPS: Does TRIPSBased IP Enforcement Need Reform?’’ (by Thomas Jaeger), ‘‘Towards a Balanced International Legal Framework for Criminal Enforcement of Intellectual Property Rights’’ (by Christophe Geiger), ‘‘TRIPS and Consumer Protection’’ (by Ansgar Ohly), ‘‘TRIPS and Corporate Social Responsibility: Unethical Equals Unfair Business Practices?’’ (by Frauke Henning-Bodewig) and ‘‘Enhancing TRIPS: Trade

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Secrets and Reverse Engineering’’ (by Gintar_e Surblyt_e). While no IP dispute has been submitted so far to the International Court of Justice, the number of TRIPSrelated disputes under the WTO dispute settlement procedures remains more limited than initially expected. Cross-retaliation by suspension of IP rights was authorized in three WTO disputes, so far, yet it was never implemented due to bilateral agreements among the parties to the dispute. The additional enforcement measures provided for in the 2010 Anti-Counterfeiting Trade Agreement (ACTA) and in the Trans-Pacific Partnership (TPP) Agreement are often criticized as excessive; they remain unlikely to ever enter into force. The propositions by Geiger for reforming the TRIPS provisions for the criminal law enforcement of IP rights are unlikely to lead to TRIPS amendments in the near future. Other reform proposals (e.g. by Ohly for stronger protection of consumer interests, by Henning-Bodewig for promoting ‘‘corporate social responsibility’’ and limiting ‘‘unfair competition’’, and by Surblyt_e for clarifying the boundaries of trade secret protection) could be pursued by interpretative clarifications invoking Arts. 7 and 8 of the TRIPS Agreement. As instruments of social regulation aimed at voluntary compliance by citizens, national and international law require justification as coherent ‘‘legal systems’’ protecting the fundamental rights of citizens and peoples. The universal recognition of human rights and the transformation of national into transnational public goods as a result of globalization entail an increasing ‘‘institutionalization’’, ‘‘judicialization’’ and progressive ‘‘constitutionalization’’ of fragmented legal regimes for multilevel governance of PGs. This excellent study has legal significance far beyond trade and intellectual property law. It illustrates the need for regularly reviewing and challenging the frequent biases underlying ‘‘legal fragmentation’’ from broader economic and constitutional perspectives prioritizing the fundamental rights and basic needs of citizens and their reasonable interests in interpreting, designing and justifying international treaties on the basis of more coherent ‘‘principles of justice’’, as explicitly recalled in the Preamble to the 1969 Vienna Convention on the Law of Treaties.

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