“ONE SIZE FITS ALL”
CONSOLIDATION AND DIFFERENCE IN INTELLECTUAL PROPERTY LAW
Graeme B. Dinwoodie
Munich, July 21, 2008
The organizers of the Congress have posed, as the overall theme for our discussion in
Munich [and next year in Krakow], the question of whether “one size fits all” in
intellectual property law. Are there sufficient commonalities among the component parts
of our field that we could realistically construct a unitary body of intellectual property
More specifically, for this panel, we have been asked to consider whether the “one size
fits all” inquiry might be informed by an assessment of changes in the objectives or
purposes of intellectual property protection. Have such changes made a “one size fits all”
solution more or less likely, and more or less desirable?
I. One Size Fitting All
Before getting to the specific questions of “purpose” and “objectives” to be addressed by
this panel, I would like first to introduce the different dimensions to the overall question
of “one size fitting all”, which I hope will be explored in greater detail by later panels.
There are a number of different inquiries that might be subsumed by the question of
whether “one size fits all” in intellectual property law.
A. A Single Intellectual Property Right?
First, as perhaps best reflected in the project of the Intellectual Property in Transition
team, who starting in 2001 sought to develop a “one-right-system,” we might ask whether
the historically distinct regimes of patent, copyright and trademark law have developed
sufficient commonality that a single notion of an “intellectual property right” can be
formulated. This unified right, so the argument goes, would provide a greater economy
of doctrine and thus greater certainty than the current mish-mash of separate, but
increasingly overlapping, intellectual property rights that often provide multiple layers of
protection to the same commercial product.
Thus, the Intellectual Property in Transition project explanatory memorandum from
2005 suggested that market actors no longer differentiated among IP rights along the
lines suggested by formal legal doctrine. Indeed, the drafters of that memorandum went
so far as to suggest that “the only significant difference between modern copyright and
patent law is the droit moral.”
In the abstract, the idea of pursuing a one size fits all philosophy, and collapsing the
mélange of existing intellectual property systems into a single, clean IP right, might be
attractive. Certainly, guaranteeing commercial actors that their rights in the products of
their innovative activity, and their dealings with respect to the products of others, would
be regulated by a single set of principles, would substantially reduce the uncertainty and
the compliance costs of multiple layers of protection. It might also mimimize the
circumvention of legislative intent that often accompanies opportunistic exploitation of
the slight differences among intellectual property regimes.
And, to be sure, there have been theoretical, doctrinal and strategic convergences that
might suggest such a possibility. I am sure that many examples will be discussed over
the next couple of days, so at this stage of the Congress, let me give only a couple of
examples. Theoretically, expansions in the scope of trademark protection, to cover both
confusion as to association and endorsement, on the one hand, and non-confusing
dilution, on the other, have changed the nature of trademarks. Once essentially defensive
devices used to preclude rival traders from appropriating one’s goodwill, trademarks have
been transformed into commercial assets to be used affirmatively to create and control
new, secondary markets. Historical assertions that trademarks do not confer rights in
gross might appear somewhat tenuous. Very often, trademark claims closely resemble
those that one might typically have found in copyright law or patent law: the defendant
has “reproduced” my mark or is “selling, or making use of” my mark.
And one can pursue this assimilationist line of thought in some degree of detail: for
example, the protection of trademarks on so-called “related goods” could be
reconceptualized as a variant on the adaptation right in copyright law; the moral right of
integrity can likewise be seen as an alternative formulation of the adaptation right (as
indeed it was by the U.S. courts, allowing the United States to fake adherence to the
Berne Convention); attribution rights can, to some extent, be protected through recasting
the lack of attribution as an act of passing off.
Likewise, as I mentioned a moment ago, the drafters of the Intellectual Property in
Transition suggested that “the only significant difference between modern copyright and
patent law is the droit moral.” That is, for reasons perhaps of internationalization that I
will come to later in my remarks, some see copyright and patent as purely instrumental
rights; the development of the law is taking place without much consideration of other
justifications for authorial rights. The theoretical basis for the different rights is, under
this reading, largely the same; and the (arguably baneful) dominance of law and
economics in our field, makes any diminution in the influence of instrumentalism
Thus, perhaps it is time to recognize that the theoretical bases of the different rights have
substantially converged, rather than repeating theoretical formulations that are
increasingly divorced from what the law actually confers.
A number of doctrinal changes might encourage this possibility. For example, each of
the major discrete intellectual property regimes has expanded the subject matter that it
will potentially protect, such that few creative or commercial products are not
simultaneously freighted with a host of intellectual property rights. Almost anything
under the sun made by man can be patented, with any gaps that might have existed in
some developing countries slowly being filled; anything capable of carrying meaning
(and in the European Union, capable of graphic representation) can be trademark; all
original works of authorship can be protected by copyright or related rights; and design
protection is no longer confined to the purely aesthetic parts of a product.
Strategically, as intellectual property becomes a more dominant economic tool and as its
ownership becomes centralized through unregulated corporate consolidation, each
different form of intellectual property comes to assume a common strategic value,
namely, as a means of extracting or generating compensation. Those realists who see the
“compensation principle” as the central pillar of the real intellectual property creed thus
might view the historical distinctions as rather beside the point.
However, there are good reasons to resist an attempt to pursue a unitary intellectual
property right under the thinking that, in this era of convergence, “one size might fit all.”
Most practically, as indeed the drafters of the Intellectual Property in Transition project
recognized, such an approach would discard the accumulated common understandings of
over a century of developed law, and would generate substantial uncertainty (with
attendant costs) as new concepts were fleshed out by courts. And, of course, this is to say
nothing of the difficulty of finding political agreement on the content of such a system. It
is difficult enough to secure consensus among the stakeholders involved in reform of
copyright, patent, or trademark, without inviting all of these parties into the same room to
fight it out among themselves. It is incumbent on academics to view many of the
questions in our field not only through the lens of theory or doctrine, but with an eye to
the realities of political economy.
One of the more interesting (though not altogether helpful) changes in copyright
lawmaking in the last decade has between the increased involvement of technology
companies, more used to detailed regulatory systems such as those governing
telecommunications. It should not be a surprise, therefore, that copyright laws have in
turn evolved (if that is the word) from elegant, if sometimes ambiguous and incomplete,
statements of principle to detailed, backward-looking, narrow rules more akin to those
promulgated by administrative agencies . . . rules that, we should not be astonished to
learn, are equally as ambiguous and incomplete, but lack any of the elegance.
But the reasons that doom any effort to create a single system are not merely practical.
Some of the developments I mentioned above have not been uncontested. For example,
the U.S. courts might in fact produce some constraints on patent subject matter; litigation
of cases involving the application of technological protection measures have forced
courts to draw distinctions (reflective of pre-Software Directive impulses in Europe),
between TPM-protected functional works, such as software embedded in garage door
openers, and TPM-protected core creative copyright works. And the compensation
principle might be waning in a number of contexts where (in part induced by such things
as certain Creative Commons licenses) authors seem to value attribution over immediate
compensation. Perhaps it is all about “respect,” suggesting a bridge between the belief
systems of the nineteenth century and the twenty-first.
Moreover, justifications for a “one size fits all” system tend to ignore the somewhat
different questions that arise with respect to trademark law, on the one hand, and
copyright and patent law, on the other. Although expansions in the scope of trademark
law have clearly strengthened the hand of the producer, trademark questions tend to be
consumer-centered; perception of consumers matters for the establishment and, with
respect to core infringement claims, scope of rights. That focus informs both doctrinal
tests and evidentiary questions, as well as relief that can be provided to mitigate potential
harms to competition. Article 21 of TRIPS prohibits compulsory licensing of
trademarks; but compulsory licensing of copyright and patents are seen as essential tools
in mitigating potentially anti-competitive exercises of rights. Trademark law might use
different policy levers to avoid trademarks creating anti-competitive situations, but these
different doctrinal devices reflect real differences in the nature of the right, not mere
Moreover, much of the claim about the convergence of different IP regimes focuses on
the substantive scope of rights. If one looks at questions of acquisition, there has been
much less convergence. And, as the debate about the Community Patent has shown,
these are some of the most important questions to commercial actors.
Thus, in the strong form of replacing our diverse, although often similar, intellectual
property regime with a single system, a single IP right, there is surely little likelihood of
such an approach being adopted.
However, that is not to say that the intellectual exercise of contemplating the common
essence of intellectual property is not without merit. Inquiring about the common
features of the different regimes may help to identify the topics upon which scholars and
reformers should concentrate, and learning in one regime might helpfully. There is much
to be said for intramural comparative analysis.
I will not say much in detail about the topics that might be the subject of that analysis,
because there will be panels over the next couple of days addressing some of the
prominent examples. But it is clear that the development of exceptions and limitations
(on which I will make a few remarks in a moment), the role of unauthorized third party
use in the information and innovation ecosystem, and how contracts can over-ride default
principles of the different regimes, are all questions that pervade the field. Identifying
commonalities will surely be useful.
B. Protection Without Discrimination Within an Intellectual Property Regime
A second dimension to the question of whether “one size fits all” in intellectual property
law is in fact explicitly raised by the TRIPS Agreement. Article 27 of the TRIPS
Agreement requires that “patents shall be available and patent rights enjoyable without
discrimination as to the . . . field of technology.” The travaux préparatoires of the TRIPS
Agreement emphasize that the provision was intended to guarantee protection for a
variety of subject matter previously unprotected by patent rights in many countries. Buy
in Canada–Protection of Pharmaceuticals Patents, a dispute settlement panel of the WTO
gave article 27 broader (structural) effect, and required exceptions to patent protection in
Canadian law to comply not only with the demands of article 30, which explicitly
regulates permissible exceptions from patent protection, but also with article 27’s
protection against technology–based discrimination.
This broad reading, which might appear to impose a one size fits all mandate on patent
law, might be problematic. Although the technological community was once fairly
united in its needs, the recent debate over patent reform has made it clear that this is no
longer the case. For example, the broad patents available for basic science present
different problems from those associated with the thickets of narrow rights awarded in
fields where advances are incremental. In the last few years, it has become increasingly
difficult to believe that a one–size–fits–all approach to patent law can survive.
Rochelle Dreyfuss and I have argued that even if one were to accept the possibility that
the Canada–Pharmaceuticals panel reached the right conclusion and that article 27 is in
some respects structural, strong arguments can be made that there is still considerable
room for tailoring in national patent laws. I won’t rehearse all the arguments for allowing
departures from one-size fits all. Suffice it to say that under a normal meaning of the
term “discrimination,” treating different cases differently is not discrimination. For
example, it may not be discrimination to create exceptions to broad patents out of the
concern that they dominate too broad a swath of the technological frontier, while giving
the holder of a narrow patent the right to exploit the entire domain of his claim. At the
end of the day, the value of the exclusivity offered to different technologies is similar.
Although patent law is the only regime to have this type of provision imposed as a matter
of international law, the impulse is one that is strong in national systems of copyright and
trademark operating without the constraint of international law. Thus, courts in copyright
cases frequently disclaim any attempt to make aesthetic judgments in making
assessments of creativity or infringement. Likewise, the European Court of Justice has
suggested that the distinctiveness of any claimed trademark must be determined
according to the same nominal doctrinal rules, whether the mark be a word, or a shape, or
Of course, in both these cases, we know that protection is not conferred on a one-size-
fits-all basis. In many countries, an empirical observation of outcomes suggests that
courts exhibit more solicitude for representational art over abstract art, for works of
literature over functional text, and perhaps for certain types of music that conforms more
closely to the classical canon. This is the application of “one-size” of rule to different
types of creativity. Likewise, although the European Court of Justice has nominally
committed to a common test for distinctiveness of marks, it has explicitly recognized that
certain types of marks (e.g., words) are more likely to be perceived by the public as
indications of source than other types of marks (e.g., product shapes).
Thus, the argument that Rochelle Dreyfuss and I made in the context of Article 27 is
hardly a departure from normal modes of analysis in intellectual property law. Indeed,
Dan Burk and Mark Lemley had already shown persuasively that certain common
doctrinal concepts operated differently on inventions in different industries.
So there is a “one-size fits all” inquiry that is imposed on us by international law, at least
in the context of patent law. But even that provision does not preclude our thinking about
whether certain types of creativity or innovation or mark should be treated differently
within particular intellectual property regimes.
C. One Size Fits All in the International Context
A third way in which the concept of “one size fits all” might arise, and indeed has arisen,
in intellectual property debates, is in thinking through the demands imposed on national
forms of protection by international law. International intellectual property developments
increasingly consist of efforts to harmonize national regimes, thus to some extent
invoking the notion that one size might fit for all nations within the international system
at issue. Within the European Union, of course, the “harmonization” impulse is even
stronger, in part because of a central, quasi-federal political apparatus.
So, there are a number of different dimensions to the question of whether “one size fits
all.” However, it is this third dimension – the question of movements toward uniformity
internationally -- that I wish to focus on as I turn to the more specific question for this
panel, namely, whether the “one size fits all” inquiry might be informed by an assessment
of changes in the objectives or purposes of intellectual property protection.
II. The Purposes of International Intellectual Property Protection
What about the purposes of protection from an international perspective? Have the
purposes of international intellectual property law changed since the late nineteenth
century? The Berne and Paris Conventions were aimed at developing an international
system designed to constrain rampant piracy, and slowly expand core forms of protection.
Given that political imperative, it is hardly surprising that the focus of the conventions
was limited to minimum levels of protection for rightholders and national treatment to
ensure basic protection in foreign markets.
Whatever balance was needed between the interests of different stakeholders was ensured
politically at the national level, facilitated by relatively low levels of mandated
protection, and buttressed by loose enforcement of international standards. And the
international system was primarily a codifying device: norms tended to be mandated
internationally after some positive experience in a number of countries’ national laws.
But has any change in the purpose of international intellectual property law made this
bare level of commonality less appropriate? Let’s skip forward a century. The TRIPS
Agreement contains important flexibilities with respect to implementation that allow
countries to resist a one-size fits all approach. But the standards were clearly more
detailed and extensive, and more effective enforcement mechanisms restricted national
Although these changes reduced the range of choices open to its members, TRIPS largely
followed the structural framework of minimum norms established by Berne and Paris. Is
this structure appropriate in light of the purposes of TRIPS? International intellectual
property law has become an integral component of trade policy. Although part of the
political impetus for international intellectual property law making has long come from
the economic gains that particular countries could secure in the global market, the recent
situation of intellectual property within the institutional apparatus of the trade regime has
been an important factor in the transformation of the system of international intellectual
Arguments in favour of more rapid and intrusive international law making have been
assisted by viewing intellectual property through the prism of international trade. The
enhancement of international intellectual property obligations has been bolstered, in
particular, by invocation of contemporary free trade philosophies, most notably that of
comparative advantage. If one country has a comparative advantage in knowledge-based
products then, the argument goes, global protection of intellectual property rights is
essential to permit exploitation of that comparative advantage. This requires more
Moreover, international exploitation and the effect of digital communication technologies
on the ease of cross-border flow of information products means that the balance between
national autonomy and universal standards – that is, how far, we might appropriately
need to move toward one size fits all -- might now need to be struck differently.
However, this need for international commonality is occurring in a climate where there
are now 180 countries committed in national law to core (and more than basic) levels of
protection. Moreover, new international norms are being discussed that have not been
the product of widespread national deliberation. As a result, the backwards-looking
aspect of the classical system, which tended to favor national autonomy and keep
internationally-mandated levels of protection low, has been somewhat disrupted.
It is in this context that we are beginning to see the current demand for internationally-
mandated user rights, or what I call substantive maxima, in a number of venues. That is
to say, the substantive pressures created by minimum standards that are more real and
less minimal need to be countered by ceilings that constrain in the other direction. In the
current political economy, highlighted by TRIPS-plus bilaterals, enabling balance
through flexibility is not enough, and something more – whether we call them users’
rights or substantive maxima or – is necessary. The development of users’ rights is a
natural evolution of the international intellectual property system to reflect the exigencies
of the present era.
There will be a panel later in the Congress that specifically looks at exceptions and
limitations. So I will not address the topic in too much detail. But I want to make one
final observation that connects this changed focus of the international intellectual
property system to the one size fits all question.
Advocates of mandatory exceptions have often, in the past, been among those invoking
the mantra that one size does not fit all. This is as true for exceptions as it is for
exclusive rights. Nations should, at some level, be permitted room for choice at to the
exceptions they wish, and as to the form of implementation. There has to be a users’
rights parallel to Article 1(1) of TRIPS.
Clearly, one size does not fit all – whether we are talking about a single intellectual
property regime, whether we are talking about eradicating differences in the application
of the rules within a single regime, or whether we are talking about the level of
commonality to be imposed on nations by international law.
But it is also clear that there is much to be gained by seeking commonality in an
intellectual property system where the major forms of protection are converging. And, if
we look at the purposes of the international system, it is clear that its contemporary trade
focus might cause us to require greater commonality among nation states.
But if the focus of the current international system requires greater commonality – greater
attention to a one size fits all approach on certain issues -- it does so both with respect to
the rights conferred on IP right holders and with respect to the new rights that might
potentially be conferred on users.