7 COSAS QUE DEBES PREGUNTARTE ANTES DE HACER NEGOCIOS CON TU SOCIO 6/19/2015 0 Comments 7 Cosas que debes preguntarte antes de hacer negocios con tu socio Hacer una sociedad como una manera de hacer negocios puede ser una gran idea que presente tu negocio con todas las ventajas de tener dos empresarios dedicados en lugar de uno. Eso significa el doble de recursos, capacidades, y tiempo para dedicar a ver el negocio con éxito. Sin embargo, también hay algunos problemas que pueden surgir y desintegrar una sociedad sin que ésta si quiera tenga la oportunidad de ser exitosa. Por ejemplo, Si no pueden trabajar bien juntos, si les falta una habilidad esencial o recurso como equipo, o si simplemente tienen dos visiones diferentes del camino al éxito, probablemente tu negocio fracasará. Esto puede ser costos si no devastador como propietario de negocio. Antes de ingresar a una situación en la que pongas a tu negocio y sociedad en riesgo, es inteligente hacerse unas preguntas– Antes de firmar cualquier contrato o acuerdo. ¿Su visión para la compañía es la misma? Siéntate y habla con tu socio potencial así te aseguras de cuál es la visión que cada uno tiene para la compañía y si esas visiones son compatibles. Recuerda, una visión lleva todas las decisiones que haces mientras manejas tu negocio. Si dos socios tienen visiones que compiten entre sí y hacer decisiones de acuerdo a esto, los resultados probablemente serán un desastre. La mejor manera de estar preparado es planear una visión en conjunto y escribirla. Si esta simple tarea no se puede hacer por los dos, entonces no hay forma de que la sociedad pueda tener éxito. ¿Qué tipo de fortalezas y debilidades tienen como equipo? Es una clara ventaja de la sociedad cuando puedes suplementar una habilidad del otro. Si tu socio es un genio en las ventas y entiendes como maximizar la producción y minimizar el costo, la sociedad encajará muy bien. Pero nunca sabrás esto hasta que te sientes y discutas tus fortalezas y debilidades como equipo para evaluar sus potenciales. Cuando sea el momento, puede faltarte una habilidad necesaria que un socio diferente puede proveer. Encontrar esto, antes de que haya dinero en juego es lo mejor para manejar este posible problema. ¿Cómo se manejarán los conflictos? En sociedades, no hay figuras autoritarias– ambas partes comparten autoridad de igual forma. Esto significa que no hay manera clara de responder cuando hay un desacuerdo. Sentarse y discutir cómo manejar los desacuerdos antes de que si quiera haya uno es una forma genial de obtener una visión de la forma de cómo se solucionarán las cosas cuando todo sea más serio. Aún mejor, cuando tengas un plan– escríbelo así no hay asunciones o malos entendidos. Cuando se sienten para tener esa conversación, asegúrate de saber sobre el carácter de tu socio y como manejan la resolución. Explica cómo has manejado puntos Fuertes en el pasado y preguntarle a tu socio potencial sobre cómo ha manejado el conflicto. Se cuidadoso para proteger tu inversión. El tiempo para descubrir si hay un problema es anticipado, antes de haber firmado cualquier cosa. ¿Cuánto tiempo cada socio invertirá en la compañía? Es solo la verdad que la vente tendrá distintas cantidades de tiempo para invertir en su negocio. Esto, sin embargo, no tiene que ser un problema. Si puedes sentarte y discutir abiertamente con tu socio potencial sobre la cantidad de tiempo que cada uno tiene para invertir, pueden establecerse expectativas realísticas antes de tiempo. Mientras esto puede no parecer importante, es esencial eliminar cualquier fricción que pueda surgir cuando el negocio comience y uno de los socios pase mucho más tiempo trabajando que el otro. Una Buena forma de manejar esto, es siempre, escribir las expectativas de inversión de tiempo. Si son grandemente desproporcionadas, quizá una discusión de propiedad equitativa debe ser pensada como si un socio estuviera invirtiendo mucho más dinero que otro. ¿Qué tamaño de la inversión financiera hará cada socio? Una razón común para colaborar en el negocio es que un socio tiene más capital para invertir mientras que el otro tiene la capacidad o el tiempo que necesitan invertir. Ambos tienen equidad de negocio y deben ser representados en la participación de la propiedad. Esto debe ser discutido antes de tiempo, sin embargo. En sociedades tradicionales, la equidad es determinada por la cantidad de dinero invertida, así que si haces cualquier arreglo diferente debe ser hecho con anticipación y por supuesto escrito para prevenir malos entendidos u otros desacuerdos en el camino. ¿Ambos están dispuestos a escribirlo? Como se ha aclarado– una de las mejores cosas que pueden resultar de hacer estas preguntas es clarificar áreas de posibles desacuerdos o conflictos y escribirlas. Esto es, de hecho, lo que debería hacerse para toda la sociedad. El acuerdo como un todo debe ser escrito. Ninguna sección debe quedar fuera y toda la información importante debe ser detallada explícitamente para prevenir desacuerdos futuros. Asegúrate de incluir lo siguiente en el acuerdo: El nombre complete legal de la sociedad como también todos los socios involucrados en el acuerdo. La contribución en términos de dinero, tiempo, o la experiencia que cada socio quiere aportar. Un diseño de expectativas y directrices de gestión Planes de cómo resolver disputas Planes de cómo introducir a un Nuevo socio en el futuro Planes sobre qué hacer en el evento de muerte de alguno de los socios Una lista claramente definida de cada responsabilidad de los socios, autoridad, y poder de decisión Un despliegue de como las ganancias, pérdidas, y retiros deben tratarse con los socios Tu estrategia de salida ¿Cuál es tu estrategia de salida? Los mejores planes de negocio pueden no ser suficientes para sobrellevar lo imprevisto. Por lo tanto, siempre has una estrategia de salida. Una simple discusión sobre cómo proceder si un socio quiere dejar la sociedad debería hacerse con anticipación. Decide si uno debería comprar la parte del otro, o si deberían vender a un tercero. Hablar sobre lo que cada socio preferiría en esta situación y cómo proceder antes de firmar un acuerdo es un paso esencial para proteger tu sociedad. Como siempre, asegúrate de escribir tu estrategia e incluirla en tu acuerdo de sociedad. Para resumir… Estas preguntas presentan temas básicos que tú como un dueño de negocios potencial y socio deberías considerar para darle a tu negocio la mejor oportunidad de tener éxito: Habla sobre como las cosas pueden salir mal antes de que salgan mal y decide un plan de acción para implementar cuando si sucedan. Escribe todo en el acuerdo de sociedades. Deja una estrategia de salida para asegurarte que si el negocio se va al sur, no llevará tu carrera también. (Tomado de la página web del Estudio de Abogados Yoel Molina - Miami USA)

The Google Book Settlement

DANIEL GERVAIS ∗
CITE AS: 2011 STAN. TECH. L. REV. 1
http://stlr.stanford.edu/pdf/gervais-google-books-and-trips.pdf
I. INTRODUCTION
¶1 Not long after Google announced in December 2004 that it would include in its search database
the full text of books from a number of leading research libraries, two lawsuits—structured as class
actions—were filed by a group representing mostly trade authors and a major publisher.1 One of the
key issues was whether Google’s project was defensible as fair use.2
¶2 After several years of discussion, a proposed settlement was reached.3 It would have allowed
Google to continue scanning copyrighted books into its search index and displaying the text to its
users in exchange for the payment of license fees to copyright holders.4 The proposed display rules
were contingent on whether a book was still in print.5 Additionally, rightsholders could opt out of the
settlement either entirely, by requesting the removal of protected books, or partially, by modifying
the default display rules.6
¶3 The proposed settlement came under intense scrutiny and criticism.7 A number of foreign
rightsholders, and even foreign governments, opposed the deal.8
* Professor of Law, Co-Director, Technology and Entertainment Law Program, Vanderbilt University Law School.
1 Complaint, McGraw-Hill Cos. v. Google Inc., No. 05-CV-8881 (S.D.N.Y. Oct. 19, 2005); Complaint, Author’s Guild, Inc.
v. Google Inc., No. 05-CV-8136 (S.D.N.Y. Sept. 20, 2005).
2 See KATE M. MANUEL, CONG. RESEARCH SERV., R40194, THE GOOGLE LIBRARY PROJECT: IS DIGITIZATION FOR
PURPOSES OF ONLINE INDEXING FAIR USE UNDER COPYRIGHT LAW? 5-9 (2009), available at
http://opencrs.com/document/R40194/.
3 Settlement Agreement, Author's Guild, Inc. v. Google Inc., No.-CV-8136 (S.D.N.Y. Oct. 28, 2008) (proposed), available at
http://www.googlebooksettlement.com/intl/en/Settlement-Agreement.pdf [hereinafter Settlement Agreement].
4 Settlement Agreement, supra note 3, § 2.1(a). The settlement applied to books (not periodicals) published before January 5,
2009.
5 Id. § 3.2(d). For public domain books, see id. § 1.116. According to Google, approximately seventy percent of copyrighted
books are out of print. Jonathan Band, The Long and Winding Road to the Google Books Settlement, 9 J. MARSHALL REV. INTELL. PROP.
L. 227, 262 (2009).
6 Settlement Agreement, supra note 3, §§ 1.98, 3.5. Under the original settlement agreement, the deadline was September 4,
2009. See Order at 2, Authors Guild, Inc. v. Google, Inc., No. 05-CV-8136 (S.D.N.Y. Apr. 28, 2009) (extending the original opt-out
deadline of May 5, 2009).
7 For example, the U.S. Department of Justice submitted a brief opposing some aspects of the proposed settlement. See
Statement of Interest of the United States of America Regarding Proposed Class Settlement at 6-10, Authors Guild, Inc. v. Google
Inc., No. 05-CV-8136, 2009 WL 3045979 (S.D.N.Y. Sept. 18, 2009). Additionally, the House Judiciary Committee questioned
whether a solution was better achieved through legislation than through class action litigation. See Competition and Commerce in Digital
Books: Hearing Before the H. Comm. on the Judiciary, 111th Cong. 2-3 (2009). Lastly, Professor Pamela Samuelson wrote a strong set of
Stanford Technology Law Review
Daniel Gervais: The Google Book Settlement and the TRIPS Agreement
2
Copyright © 2011 Stanford Technology Law Review. All Rights Reserved.
¶4 As a result, the settlement was amended significantly.9 One of the main differences between the
original and amended settlements was the treatment of foreign rightsholders.10 While the original
settlement applied to rightsholders in all countries, the amended agreement would only apply to
foreign books published in Australia, Canada, or the United Kingdom, or registered with the United
States Copyright Office as of January 5, 2009.11
¶5 Conformity with international treaties and agreements to which the United States is party, in
particular the Berne Convention12 and the World Trade Organization (WTO) Agreement on Trade-
Related Aspects of Intellectual Property Rights (TRIPS),13 has not been a major part of the
discussions surrounding the proposed settlement but it is important because incompatibility with
TRIPS might trigger a dispute-settlement case against the United States at the WTO and lead—
should the United States lose the case partially or entirely—to trade-based retaliation.14 To mention
two examples, in 2000 a WTO panel found that § 110(5)(B) of the Copyright Act was incompatible
with Article 13 of the TRIPS Agreement (the so-called three-step test).15 As of this writing, the panel
report has not been implemented, perhaps in part because a binding arbitration report determined
that the level of injury caused by the exemption was extremely low.16 In a more recent case, failure by
the United States to implement a panel report that found part of the cotton subsidies paid to U.S.
farmers incompatible with WTO rules may lead to the removal of intellectual property protection for
U.S. goods in Brazil.17
¶6 The unprecedented nature of the Google case, however, is that the incompatibility would not
result from typical trade measures adopted by legislation or regulation but rather by a court decision.
Generally, court decisions are immune (as a practical matter) from WTO review owing to their inter
partes nature—that is, they are not measures or requirements of general application. The application
of class action procedures, however, that would include a large number of foreign intellectual
property holders as part of the covered classes, may open the Settlement to WTO scrutiny.18
critiques. See Pamela Samuelson, Pamela Samuelson’s Letters to the Court: Concerns on the Proposed Google Book Settlement, 12 TUL. J. TECH.
& INTELL. PROP. 185 (2009).
8 See Memorandum of Law in Opposition to the Settlement Proposal on Behalf of the Federal Republic of Germany, No. 05-
CV-8136 (S.D.N.Y. Aug. 31, 2009). In fact, many foreign publishers filed objections, including over ninety from Germany, fifteen
from Sweden, and twenty-five from the Netherlands. Band, supra note 5, at 314 n.827.
9 Settlement Agreement, Authors Guild, Inc. v. Google Inc., No. 05-CV-8136 (S.D.N.Y. Nov. 13, 2009) (proposed), available
at http://www.googlebooksettlement.com/r/view_settlement_agreement [hereinafter Amended Settlement Agreement].
10 Compare id. § 1.19, with Settlement Agreement, §1.142. According to Jonathan Band, “as much as 50% of the titles in the
research libraries partnering with Google are not in English; and most of these foreign language titles probably were published
outside the United States and were not registered with the Copyright Office.” Band, supra note 5, at 321.
11 Amended Settlement Agreement, supra note 9, § 1.19.
12 Paris Act Relating to the Berne Convention for the Protection of Literary and Artistic Works, July 24, 1971, 1161 U.N.T.S.
18388 [hereinafter Berne Convention]. For application to the United States, see Berne Convention Implementation Act of 1988,
Pub. L. No. 100-568, 102 Stat. 2853.
13 Agreement on Trade-Related Aspects of Intellectual Property Rights, Apr. 15, 1994, 1869 U.N.T.S. 299, 33 I.L.M. 1197
(1994) [hereinafter TRIPS Agreement]. The TRIPS Agreement was implemented by the Uruguay Round Agreements Act, Pub. L.
No. 103-465, 108 Stat. 4809 (1994).
14 See generally Understanding on Rules and Procedures Governing the Settlement of Disputes, Marrakesh Agreement Establishing the World
Trade Organization, Annex 2, Apr. 15, 1994, 33 I.L.M. 1226.
15 Report of the Panel, United States—Section 110(5) of the US Copyright Act, ¶ 7.1, WT/DS160/R (June 15, 2000). amended by
the Fairness in Music Licensing Act of 1998, Pub. L. No. 105-298, 112 Stat. 2830, which was enacted on October 27, 1998. The
European Communities (“EC”) (now the European Union) successfully alleged that the section in question, which permitted,
under certain conditions, the playing of radio and television music in public places (e.g., bars, shops, restaurants, etc.) without the
payment of a royalty fee to performing rights societies, was incompatible with the obligation to provide a public performance right
contained in the Berne Convention and incorporated into TRIPS and not an exception allowed under the three-step test.
16 On November 9, 2001, the arbitrator determined that the level of EC benefits which were being nullified or impaired as a
result of the operation of § 110(5)(B) amounted to €1,219,900 per year (approximately $1.1 million at the October 11, 2001,
exchange rate and $1.6 million as of January 2011). Award of the Arbitrators, United States—Section 110(5) of the US Copyright Act, ¶¶
4.73, 5.1, WT/DS160/ARB25/1 (Nov. 9, 2001).
17 See Decision by the Arbitrator, United States—Subsidies on Upland Cotton, WT/DS267/ARB/1 (Aug. 31, 2009). See also the
subsequent Communication from Brazil, United States—Subsidies on Upland Cotton, WT/DS267/43 (Mar. 12, 2010).
18 See infra notes 59-61.
Daniel Gervais: The Google Book Settlement and the TRIPS Agreement
3
Copyright © 2011 Stanford Technology Law Review. All Rights Reserved.
¶7 International treaties may also be relevant directly in the domestic context. First and foremost,
they may be invoked when the interpretation of a U.S. statute is unclear, in which case the
interpretation most likely to comport with U. S. international obligations should be favored.19
Second, a treaty such as the Berne Convention may be directly applicable (“self-executing”).20
¶8 In applying TRIPS to the Google Book Settlement, the first question that comes to mind is
whether the Original and/or the Amended Settlement constitute a prohibited formality under the
Berne Convention, and thus also the TRIPS Agreement.21 The Amended Agreement—because it
treats rightsholders in three foreign countries differently—raises two related questions, namely (a)
whether the national treatment principle is violated, and (b) whether the proposed settlement is
compatible with the most-favored nation clause.22 Let us sequentially consider both questions.
II. THE NO-FORMALITY RULE
¶9 Article 5(2) came into being in the very early days of the Berne Convention.23 In the first draft of
the Convention published in 1884 the relevant part of Article 2 read as follows:
Authors who are nationals of one of the Contracting Countries shall enjoy in all the other
countries of the Union, in respect of their works, whether in manuscript or unpublished
form or published in one of those countries, such advantages as the laws concerned do now
or will hereafter grant to nationals.
. . .
The enjoyment of the above rights shall be subject to compliance with the conditions of
form and substance prescribed by the legislation of the country of origin of the work or, in
the case of a manuscript or unpublished work, by the legislation of the country to which the
author belongs.24
¶10 The intent was to grant to foreign authors the same rights granted to nationals. This was
confirmed by the Drafting Committee, which also clarified the meaning of the expression
“conditions of forms and substance,” originally a German proposal, which was changed to
“formalities and conditions.”25
19 See Murray v. Schooner Charming Betsy, 6 U.S. 64, 118 (1804); see also Arwel Davies, Connecting or Compartmentalizing the
WTO and United States Legal Systems? The Role of the Charming Betsy Canon, 10 J. INT'L ECON. L. 117 (2007) (reviewing the cases
applying the Charming Betsy doctrine to trade cases).
20 U.S. CONST. art. VI (“[A]ll treaties made, or which shall be made, under the authority of the United States, shall be the
supreme law of the land.”). Most U.S. courts, however, have been reluctant to consider intellectual property treaties as selfexecuting,
usually relying on a finding that this was not the intent of Congress. See e.g., Int'l Cafe v. Hard Rock Cafe Int'l, Inc., 252
F.3d 1274, 1277 n.5 (11th Cir. 2001) (noting that Paris Convention is not self-executing because it provides for effectiveness
through domestic implementation legislation); Mannington Mills, Inc. v. Congoleum Corp., 595 F.2d 1287, 1298-99 (3d Cir. 1979)
(holding that Art. 17 of the Convention is “at odds with contention” that Paris Union is self-executing); Ortman v. Stanray Corp.,
371 F.2d 154, 157 (7th Cir. 1967) (holding the Paris Union non-self-executing); see also ITC Ltd. v. Punchgini, Inc., 482 F.3d 135,
161 (2d Cir. 2007); Golan v. Holder, 609 F.3d 1076 (10th Cir 2010) (certiorari application was pending as of this writing). But see
Vanity Fair Mills, Inc. v. T. Eaton Co., 234 F.2d 633, 640 (2d Cir. 1956) ("Plaintiff would appear to be correct in arguing that no
special legislation in the United States was necessary to make the [Paris Union] effective here.”).
21 This rule, discussed in the next section, is contained in Article 5(2) of the Berne Convention, which was incorporated by
reference into the TRIPS Agreement in Article 9.
22 National treatment obligations, discussed under Part III, are contained both in the Berne Convention (Article 5) and the
TRIPS Agreement (Articles 3 and 9). The most-favored nation principle, discussed under Part IV is contained in Article 4 of the
TRIPS Agreement.
23 See WORLD INTELLECTUAL PROPERTY ORGANIZATION, BERNE CONVENTION CENTENARY: 1886-1986 at 94 (1986)
[hereinafter CENTENARY].
24 Id. at 94.
25 Id. at 94-95. As was noted in the Report of the Conference: “the word ‘formalities’ being taken as a synonym of the term
‘conditions of form’, included, for instance, registration, deposit, etc.; whereas the expression ‘conditions’, being in our view synonymous
with ‘conditions of substance’, includes, for instance, the completion of a translation within the prescribed period. Thus the words
‘formalities and conditions’ cover all that has to be observed for the author’s rights in relation to his work to come into being,
whereas the effects and consequences of protection, notably with respect to the extent of protection, have to remain subject to the
principle of treatment on the same footing as nationals.” Id.
Daniel Gervais: The Google Book Settlement and the TRIPS Agreement
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Copyright © 2011 Stanford Technology Law Review. All Rights Reserved.
¶11 The Report of the 1896 Paris Conference, where the prohibition was also discussed, explicates
the purpose along the same lines:
Under the text of the Convention, the enjoyment of copyright shall be subject to the
accomplishment of the conditions and formalities prescribed by law in the country of origin of the work. The
meaning of this provision does not seem to be seriously debatable. As a result of it, the
author needs only to have complied with the legislation of the country of origin, to have
completed in that country the conditions and formalities which may be required there. He
does not have to complete formalities in the other countries where he wished to claim
protection. This interpretation, which is in keeping with the text, was certainly in the minds
of the authors of the 1886 Convention . . . 26
¶12 The 1908 Berlin revision of the Berne Convention adopted a different version of Article 2, one
that has survived until now.27 The relevant part reads as follows:
The enjoyment and the exercise of these rights shall not be subject to any formality; such
enjoyment and such exercise are independent of the existence of protection in the country of
origin of the work. Consequently, apart from the provisions of this Convention, the extent
of protection, as well as the means of redress afforded to the author to protect his rights,
shall be governed exclusively by the laws of the country where protection is claimed.28
¶13 The Report of the 1908 Revision Conference notes that “[o]utside the country of publication,
protection may be requested in the other countries of the Union not only without having to complete
any formalities in them, but even without being obliged to justify that the formalities in the country
of origin have been accomplished.”29 The formalities prohibited under Article 5(2) are thus:
registration with a governmental authority, and deposit of a copy of the work, when linked to the
existence of copyright or its exercise, especially in enforcement proceedings. Indeed, formal
requirements in existence at the time of the 1908 Conference essentially involved registration, deposit
(in national libraries) and, in rare cases, translation in a national language within a predetermined
period of time.30 Article 5(2) does not prevent authors from complying with ordinary (non-copyrightspecific)
formalities (such as a court’s rules of procedure). It would be patently incongruous to read
Article 5(2) as preventing making anything mandatory. Normal acts that other copyright holders
routinely perform to exploit their works are not “formalities” prohibited under Article 5(2).31 In fact,
in 1908 the Convention considered an exception to the right of reproduction for newspaper articles.
The exception was contained in the proposed Article 9(2), and the relevant part read as follows:
“[w]ith the exception of serial novels and short stories, any newspaper article may be reproduced by
another newspaper unless the reproduction thereof is expressly forbidden.”32 The records made clear that the
requirement for an author to have to assert her rights (to expressly forbid secondary uses) was not a
prohibited formality.33
¶14 The validity of the aforementioned suggested conclusion is confirmed in recent commentary on
the Berne Convention published by the World Intellectual Property Organization (WIPO):
Formalities are any conditions or measures—independent from those that relate to the
creation of the work (such as the substantive condition that a production must be original in
order to qualify as a protected work) or the fixation thereof (where it is a condition under
26 Id. at 137.
27 Berne Convention, art. 5(2).
28 CENTENARY, at 149.
29 Id. at 148.
30 See id.
31 For instance, the records of the 1884 Conference note that the term “formalities” might be taken as a synonym of the term
“conditions of form,” including, for instance, registration, deposit, etc.; whereas the expression “conditions,” being in our view
synonymous with “conditions of substance,” includes, for example, the completion of a translation within the prescribed period.
See SAM RICKETSON & JANE C. GINSBURG, 1 INTERNATIONAL COPYRIGHT AND NEIGHBOURING RIGHTS: THE BERNE
CONVENTION AND BEYOND 323 (2d ed. 2006).
32 Id. at 327-28 (emphasis added).
33 See id. at 328.
Daniel Gervais: The Google Book Settlement and the TRIPS Agreement
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Copyright © 2011 Stanford Technology Law Review. All Rights Reserved.
national law)—without the fulfillment of which the work is not protected or loses
protection. Registration, deposit of the original or a copy, and the indication of a notice are
the most typical examples.34
¶15 After a detailed analysis, Professors Ricketson and Ginsburg similarly conclude that the
prohibition contained in Article 5(2) applies, with respect to the existence of copyright, to “‘everything
which must be complied with in order to ensure that the rights of the author with regard to his work
may come into existence,’” including a registration requirement.35 They note that the addition of
“exercise” to the prohibition was meant to address the other half of the problem: “An author may be
vested with copyright, but unable to enforce her rights unless she complies with a variety of
prerequisites to suit.”36 They also note that Article 5(2) does not prohibit the establishment of a
copyright registration system, nor indeed to giving some legal effect to a certificate of registration,
such as prima facie evidence status.37 The rule, as mentioned above, is that neither the existence nor
the exercise of copyright can be subject to copyright-specific formalities.38 Because a plaintiff is
ordinarily expected to prove her case, it does not violate the Convention’s prohibition to provide
prima facie evidentiary status to a copyright registration.39
¶16 Professor Ricketson also made public a note specifically about the Original Settlement noting its
conformity with Article 5(2).40 His conclusion that imposing an opt-out does not constitute a per se
violation of Article 5(2) seems unimpeachable. This does not mean, however, that the Amended
Settlements would necessarily survive a challenge under Article 5(2) of the Berne Convention. As
certain objections have mentioned, the specific opt-out mechanism is particularly burdensome and
subject to strict time delays.41 This suggests that, in the spirit of Article 5(2), while some formalities
of an operational nature are allowed and, in some cases, inevitable (e.g. filing pleadings), they must be
reasonable and cannot amount to a barrier to the legitimate exercise of rights recognized under the
Convention.
III. THE THREE-STEP TEST
¶17 Leading commentaries on the Berne Convention and the TRIPS Agreement recognize that,
while collective licensing is acceptable if accompanied by an opt-out clause (subject to the caveat
noted in the previous section), mandatory collective management is usually not. 42 Hence, any
mandatory inclusion in the Google database of future books—notably after the opt-out period—
would amount to a compulsory license, which is subject to a different level of scrutiny. Those
licenses are not subject to the no-formality rule but rather to the so-called “three-step test.”
34 MIHÁLY FICSOR, GUIDE TO THE COPYRIGHT AND RELATED RIGHTS TREATIES ADMINISTERED BY WIPO AND
GLOSSARY OF COPYRIGHT AND RELATED RIGHTS TERMS 41 (2004); see also WORLD INTELLECTUAL PROP. ORG., WIPO
INTELLECTUAL PROPERTY HANDBOOK 262 (2d ed. 2004) (“[P]rotection is granted automatically and is not subject to the
formality of registration, deposit or the like.”).
35 RICKETSON & GINSBURG, supra note 31, at 325.
36 Id.
37 Id. at 328-29.
38 See id. at 326-28.
39 That is, it is not a condition for the right to exist. See FICSOR, supra note 34, at § BC-5.7 (noting that “if registration only has
the effect of a rebuttable presumption that the facts registered are valid, it is not such a formality (unless it is applied in a way that,
in spite of the original legal regulation, it becomes a de facto formality, because, for example, courts only deal with any
infringement case if a certificate of registration is presented.)”).
40 See Memorandum from Sam Ricketson, Memorandum of Advice: The Compatability of the Proposed Google Book
Settlement with the Provisions of the Berne Convention (Sept. 9, 2009), available at
http://thepublicindex.org/docs/commentary/Ricketson.pdf.
41 For example, the Objections of Carl Hanser Verlag and Dr. Lynley Hood and the Brief of Amici Curiae Börsenverein Des
Deutschen Buchhandels, Schweizer Buchhändler – Und Verleger–Verband Sbvv, Hauptverband Des Österreichischen
Buchhandels, Associazione Italiana Editori, and the New Zealand Society Of Authors (Pen Nz Inc.), notes that “[t]his painstaking
task, which the ASA requires foreign rightsholders to undertake in a remarkably short, inconvenient time-period—plainly imposes
burdens that conflict with Berne.” Case No. 05 CV 8136-DC (ECF), Jan. 28, 2010.
42 See Mihály Ficsor, Collective Management of Copyright and Related Rights in the Digital, Networked Environment: Voluntary,
Presumption-Based, Extended, Mandatory, Possible, Inevitable?, in COLLECTIVE MANAGEMENT OF COPYRIGHT AND RELATED RIGHTS
47-50 (D. Gervais ed., 2006).
Daniel Gervais: The Google Book Settlement and the TRIPS Agreement
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Copyright © 2011 Stanford Technology Law Review. All Rights Reserved.
¶18 At the 1967 Stockholm Berne Convention Revision Conference, a rule now known as the threestep
test was added to the Convention to limit exceptions to the right of reproduction—a right that
was added to the Convention at the same Revision Conference.43 According to the Study Group set
up by the Bureaux Internationaux Réunis pour la Protection de la Propriété Intellectuelle (BIRPI, the
predecessor of the World Intellectual Property Organization) and the Swedish government to
prepare the Conference, adding the right of reproduction to the Convention meant that a satisfactory
formula had to be found for inevitable exceptions to that right.44 The Study Group also
recommended that exceptions should be made for clearly specified purposes, adding that a limitation
on the exclusive right of the author should not enter into economic competition with protected
works.45
¶19 The Conference provided guidance on the interpretation of the test that was eventually adopted.
It indicated that the first step (the Conference did not consider the “special case requirement” to be a
separate step) was to determine whether there was a conflict with normal commercial exploitation. If
no conflict is found, then either a compulsory license or a full exception could be introduced in
national law. The compulsory license (with remuneration) would then counterbalance the level of
prejudice in the last step, i.e., it would render such prejudice reasonable where this was necessary.46
¶20 Two WTO dispute-settlement panels have now interpreted the test, which was incorporated in
four different ways into the TRIPS Agreement.47 According to those panel reports, an exception
must pass all three steps of the test: (a) it must be narrow enough to constitute a “special case”(first
step); (b) use of the exception may not enter into competition with the work to which the exception
applies (second step); and (c) the prejudice to the legitimate interests of rightsholders cannot reach an
unreasonable level, which would happen if an exception or limitation causes or has the potential to
cause an unreasonable loss of income to the copyright owner (third step).48
¶21 Arguably, removing exclusive rights for online access on almost all English-language books
would not be particularly narrow and thus could raise doubts under the first step. The availability of
the books online—even in snippet form—might interfere with normal commercial exploitation. With
time (should the Settlement enter into force) empirical data should emerge to buttress this conclusion
or conversely to invalidate it. Finally, while the public interest justification of the Settlement is a
matter on which reasonable people may disagree, it may be that, as for competition, it will be
possible to demonstrate losses of income. That said, the “compensation” system put in place under
the Settlement—administered by the Book Rights Registry—could be said to negate the prejudice
and thus allow the Settlement to pass the third step.49
IV. NATIONAL TREATMENT
¶22 Under the national treatment principle, a country must accord nationals of other countries
treatment no less favorable than it accords its own nationals.50 Could it be said that the Amended
Settlement violates this principle?
43 WORLD INTELLECTUAL PROPERTY ORGANIZATION, 1 RECORDS OF THE INTELLECTUAL PROPERTY CONFERENCE OF
STOCKHOLM: JUNE 11 TO JULY 14, 1967 at 111 [hereinafter 1967 Records].
44 See MIHÁLY FICSOR, THE LAW OF COPYRIGHT AND THE INTERNET § 5.51 (2002).
45 1967 RECORDS, supra note 44, at 112.
46 Id., Report of Main Committee I, § 85.
47 Apart from the already mentioned panel report on Section 110(5) of the U.S. Copyright Act, see supra note 15, the threestep
test was interpreted in Canada. Panel Report, Canada—Patent Protection of Pharmaceutical Products, WT/DS114/R (March
17, 2000). The test is contained in Article 9(2) of the Berne Convention, which was incorporated into TRIPS by Article 9 of the
Agreement. It is also directly made part of the Agreement in Articles 13, 26(2), and 30. The language used in each instance is
different but the three-step approach is applied consistently.
48 See Daniel J. Gervais, Towards A New Core International Copyright Norm: The Reverse Three-Step Test, 9 Marq. Intell. Prop. L. Rev.
1, 15-19 (2005).
49 See Amended Settlement Agreement, supra note 9, art. VI.
50 TRIPS Agreement, supra note 13, art. 3. In the case of WTO, the obligation applies to WTO “members,”
Daniel Gervais: The Google Book Settlement and the TRIPS Agreement
7
Copyright © 2011 Stanford Technology Law Review. All Rights Reserved.
¶23 The Original Settlement applied to publications in any language. One could have argued that
rightsholders unfamiliar with the English language and forced to file documents (such as an opt-out
form) in English were at a disadvantage compared to U.S. rightsholders. This is less likely to happen
with the Amended Settlement, which is limited to works published in English and/or registered by
the rightsholder at the U.S. Copyright Office.
¶24 To make the point that national treatment is violated, one would have to argue that the
Amended Settlement is preferential treatment accorded to rightsholders in the United States—and
the three foreign countries to which it applies. The “advantage,” if it exists, is the fact that some
rightsholders are to be included by default (that is, unless they opt out). A rightsholder from a third
country not so included could presumably ask Google to be included in the database.
¶25 In sum, if inclusion by default in the Google database is an advantage for rightsholders, which is
eminently debatable, then those hailing from countries other than the three that were included can
indeed make the case that they are treated differently from U.S. rightsholders. But the prejudice
seems limited to having to ask to be added (opt in rather than opt out) and not necessarily a
convincing basis for making the case that TRIPS obligations were violated.
V. MOST-FAVORED NATION
¶26 This part of the analysis, dealing with the so-called “most-favored nation” (MFN) principle, is
somewhat more complicated.51 The MFN principle derives from a trade doctrine used in multilateral
tariff negotiations. 52 Because not all countries can discuss all tariffs together, countries that are major
exporters of certain goods typically discuss tariff reductions with countries that maintain high tariffs
on such goods, and then the lower tariffs are applied to all exporters of the same goods.53 In trade
law, the scope of application of MFN is quite broad. As was noted in the Canada-Autos case by the
WTO Appellate Body, MFN obligations extend to both de jure and de facto discrimination.54
¶27 A major difference between the TRIPS version of the MFN principle and the earlier GATT
version is that the former does not refer to “like products,” but rather to “nationals,” that is,
rightsholders.55
¶28 The Amended Settlement raises prima facie MFN questions because some foreign
nationals/rightsholders (Australia, Canada, United Kingdom) are treated differently than others,
including rightsholders from countries where English is a predominant language (e.g., New Zealand).
Three questions must be answered, however, before concluding that there is a possible MFN
violation. First, is the Amended Settlement a “favor, privilege or immunity . . . with regard to the
protection of intellectual property?” Second, if so, is a favor, privilege, or immunity “granted by a
Member”? Third, does one of the TRIPS exceptions to MFN apply?
“Favor, privilege, or immunity”
¶29 Whether one views being included by default in the Amended Settlement (that is, whether one is
out by default or one must opt out by a certain date—including rightsholders from Australia, Canada,
and the United Kingdom) as an advantage is an interesting question, yet not one needed to determine
51 This analysis of the TRIPS most-favored nation principle has nothing to do with the so-called “most-favored nation
clause” included in Section 3.8(a) of the original settlement, which would require the Registry established under the Agreement to
receive and distribute royalties to authors to extend to Google, in certain situations, the same terms it negotiates with other entities.
See Settlement Agreement, supra note 3, § 3.8(a).
52 See Appellate Body Report, Canada—Certain Measures Affecting the Automotive Industry, ¶ 84, WT/DS139/AB/R (May 31,
2000) [hereinafter Canada-Autos].
53 See id.
54 Id. § 78.
55 Compare TRIPS Agreement, supra note 13, art. 4 (“any advantage, favour, privilege or immunity granted by a Member to the
nationals of any other country shall be accorded immediately and unconditionally to the nationals of all other Members”), with GATT, art.
I (“any advantage, favor, privilege or immunity granted by any contracting party to any product originating in or destined for any other
country shall be accorded immediately and unconditionally to the like product originating in or destined for the territories of all other
contracting parties.”) (emphasis added).
Daniel Gervais: The Google Book Settlement and the TRIPS Agreement
8
Copyright © 2011 Stanford Technology Law Review. All Rights Reserved.
whether there an MFN violation exists. The material question is whether this difference in treatment
amounts to an advantage for one group of foreign nationals. Clearly, the two groups of foreign
rightsholders are treated differently and one of those groups is thus prima facie at a disadvantage.56
¶30 There are no WTO cases directly on point, that is dealing with the interpretation of those terms
in a TRIPS context.57 However, two WTO cases support a broad and liberal interpretation of the
notion of “advantage.”58 In one case, a Canadian import duty exemption for motor vehicles
originating in designated countries (those with Canadian affiliates essentially) was found to be
inconsistent with MFN obligations.59 The Appellate Body emphasized the notions of “any
advantage” and “all other Members” used in the GATT MFN provisions.60 Then, in the Indonesia-
Autos case, a panel report pointed out the historically “broad definition” given to the term
“advantage.”61 This is not conclusive but would support the claim that some rightsholders receive an
advantage or privilege over others and this difference is linked to their nationality.
“Granted by a Member”
¶31 Because MFN obligations are typically applied to trade tariffs, the measure usually considered in
MFN cases are laws or regulations imposing tariffs or extending tariff reductions to certain
importers. In the proposed Google settlements, however, the differential treatment of Australian,
Canadian, and British rightsholders is imposed by a court of law.62
¶32 Court decisions typically affect only specific rightsholders—those party to the dispute. Put
differently, a court decision does not normally impact a group of rightsholders based on its
nationality. As such, court decisions rarely if ever come under MFN scrutiny. Yet, by using the class
action system and targeting certain foreign rightsholders--but not all--based on their nationality, an MFN
violation may have occurred in the Amended Settlement. The fact that the source of the violation is a
court does not necessarily immunize it. It is well known that the two other branches of government
can act in ways that are MFN-incompatible.63 Indeed, there is no obvious systemic reason or direct
precedent one can point to that would exclude the Judicial Branch. As Professor Ehlermann noted:
“Despite the fact that judiciaries are usually independent in countries that live under the rule of law,
States are responsible for the acts of their courts.”64
56 Determining which group is at a disadvantage is obviously essential to determining who the complainant would be if a case
were filed. Google excluded, inter alia, Germany and New Zealand, from the Amended Settlement. Perhaps this was due to the
opposition manifested by those two countries to the Original Settlement and would be a sign that for Australia, Canada, and
United Kingdom rightsholders, the Amended Settlement is not necessarily an advantage or privilege. For Germany, see supra note
8. The Objections and Amicus Brief filed by a group of foreign authors and publishers argues that nationals of Australia, Canada
and the United Kingdom have an advantage because they “do not have to determine whether their works have been registered
with the U.S. Copyright Office in order to ascertain whether they are members of the Settlement Class. Although it is hardly an
‘advantage’ to be included in this Settlement Class by virtue of one’s citizenship, it is clearly better to know that you are included
than not to know at all. . . . The [Amended Settlement] further favors the [the three named countries] by guaranteeing them
representation on the Book Rights Registry’s Board of Directors and expanding the definition of Commercially Available to
include channels of trade related to the U.S. and their countries only.” Objections and Brief of Amici Curiae , supra note 41, at 14.
57 See Daniel GERVAIS, THE TRIPS AGREEMENT: DRAFTING HISTORY AND ANALYSIS 188-95 (3rd ed. 2008).
58 See PAUL EDWARD GELLER, 1 INTERNATIONAL COPYRIGHT LAW AND PRACTICE INT § 5[4][a][ii].
59 Canada-Autos, supra note 52, at 3.
60 Id. § 79 (emphasis added).
61 See Panel Report, Indonesia—Certain Measures Affecting the Automobile Industry, ¶ 14.138, WT/DS54/R (July 2, 1998).
62 The atypical nature of the case is precisely what prompted members of Congress and the Register of Copyrights to declare
that the court was asked to perform a task best suited for a legislative process. See Competition and Commerce in Digital Books: Hearing
Before the H. Comm. on the Judiciary, supra note 7.
63 That is, the discriminatory measure may be in a statute, but it could also be in a regulation or other rule imposed by the
Executive Branch. See Edward A. Laing, Equal Access/Non-Discrimination and Legitimate Discrimination in International Economic Law, 14
WIS. INT'L L.J. 246, 272 (1996) (noting that “the MFN standard has been firmly applied by the executive branch and the legislative
branch”); see also Barbara A. Frey, The Legal and Ethical Responsibilities of Transnational Corporations in the Protection of International Human
Rights, 6 MINN. J. GLOBAL TRADE 153, 171 (1997) (noting that the President and the Executive Branch have the power “to
enforce U.S. policy through economic sanctions such as the revocation of most favored nation status, the suspension of economic
and security assistance, and the vetoing of assistance from international financial institutions”).
64 Claus-Dieter Ehlermann and Lothar Ehring, WTO Dispute Settlement and Competition Law: Views from the Appellate Body’s
Experience, 26 FORDHAM INT’L L.J. 1505, 1527-28 (2002-2003).
Daniel Gervais: The Google Book Settlement and the TRIPS Agreement
9
Copyright © 2011 Stanford Technology Law Review. All Rights Reserved.
¶33 While this fact pattern is somewhat unprecedented, the use of court decisions by WTO disputesettlement
panels as illustrations of the meaning of a particular provision of domestic law is quite
common.65 In some legal systems, a ruling by the highest court may also be considered as lawmaking,
a practice not limited to common law systems.66 In this case, the measure seems even more directly
subject to scrutiny because it directly affects foreign copyright holders. As such, the MFN analysis of
the proposed settlement should not rely on an analogy with measures that do not directly apply to
rightsholders, such as European Union “directives”—essentially legislative instructions to the
governments of the twenty-seven member States of the European Union to implement rather than
rules that apply directly in the domestic legal order of each such states.67
Exceptions
¶34 The MFN exemptions in Article 4 of TRIPS are as follows:
Any advantage, favour, privilege or immunity accorded by a Member:
(a) deriving from international agreements on judicial assistance or law enforcement of a general
nature and not particularly confined to the protection of intellectual property;
(b) granted in accordance with the provisions of the Berne Convention (1971) or the Rome
Convention authorizing that the treatment accorded be a function not of national treatment
but of the treatment accorded in another country;
(c) in respect of the rights of performers, producers of phonograms and broadcasting
organizations not provided under this Agreement;
(d) deriving from international agreements related to the protection of intellectual property
which entered into force prior to the entry into force of the WTO Agreement, provided that
such agreements are notified to the Council for TRIPS and do not constitute an arbitrary or
unjustifiable discrimination against nationals of other Members.68
¶35 At first glance, none of these exemptions apply.
VI. CONCLUSION
¶36 Our tour d’horizon has perhaps raised more questions than it has provided answers. For example,
while an opt-out does not amount to a per se violation of the Berne Convention, the conformity of
the specific form of the opt-out clause in the Amended Settlement and its time-limited nature remain
dubious. For any book that might be included in the Settlement without the rightsholder’s consent
and not subject to an effective opt-out, a different set of rules likely applies, namely the compatibility
of new forms of compulsory licensing with the three-step test. The focus on a proper and probably
ongoing opt-out option is thus warranted.
65 For a recent example, see Dispute Settlement Report, China—Measures Affecting the Protection and Enforcement of Intellectual
Property Rights, ¶ 7.51, WT/DS362/1 (Apr. 10, 2007) (trying to understand a provision of Chinese law, the Panel noted that the
interpretation it favored was “consistent with, and clarified by, the view expressed by the Supreme People's Court of China in the
course of domestic litigation in 1998”).
66 Id. ¶ 2.2 (examining the compatibility with the TRIPS Agreement of an “[i]nterpretation by the Supreme People's Court
and the Supreme People's Procuratorate on Several Issues of Concrete Application of Law in Handling Criminal Cases of
Infringing Intellectual Property”).
67 See, e.g., Directive 2006/116/EC, of the European Parliament and of the Council of 12 December 2006, 2006 on the Term
of Protection of Copyright and Certain Related Rights, 2006 O.J. (L 372) 12; Directive 2006/115/EC, of the European Parliament
and of the Council of 12 December 2006 on Rental Right and Lending Right and on Certain Rights Related to Copyright in the
Field of Intellectual Property, 2006 O.J. (L 376) 28; Directive 2004/48/EC, of the European Parliament and of the Council of 29
April 2004 on the Enforcement of Intellectual Property Rights, 2004 O.J. (L 157) 45; Directive 2002/58/EC, of the European
Parliament and of the Council of 12 July 2002 Concerning the Processing of Personal Data and the Protection of Privacy in the
Electronic Communications Sector, O.J. (L 201) 37; Directive 2001/84/EC, of the European Parliament and of the Council of 27
September 2001 on the Resale Right for the Benefit of the Author of an Original Work of Art, 2001 O.J. (L 272) 32; and Directive
2001/29/EC, of the European Parliament and of the Council of 22 May 2001 on the Harmonization of Certain Aspects of
Copyright and Related Rights in the Information Society, 2001 O.J. (L 167) 10. On the legal status of Directives, see KAREN
DAVIES, UNDERSTANDING EUROPEAN UNION LAW 50 (3d ed. 2007).
68 TRIPS Agreement, supra note 13, art. 4.
Daniel Gervais: The Google Book Settlement and the TRIPS Agreement
10
Copyright © 2011 Stanford Technology Law Review. All Rights Reserved
http://alonsosarmiento.law.officelive.com

The Right to Be Forgotten?

By Conrad Coutinho on April 6th, 2011

Have you ever Googled your own name? Statistics say that you probably have. Egotism aside, in a world where potential employers, schools and even romantic partners are likely to Google you, it would be irresponsible not to be aware of what pops up when you search your name. Many experts (and this non-expert) even recommend setting up a Google alert in your name.

But, what can one really do if, for example, your top search results include an out of date, hopelessly inaccurate and embarrassing article from your hometown newspaper? As much guff as Facebook gets for its poor record on privacy protection, an average Facebook user has a relatively powerful set of tools at his or her disposal: you can delete or untag yourself from embarrassing photos, limit who can view your profile, and even delete your profile completely. But, is there anything you can do about embarrassing search results?

In 2010, Hugo Guidotti Russo, a Spanish plastic surgeon, filed a legal complaint with Spain’s privacy regulator, the Agency for Data Protection, asking them to order Google to remove a 1991 article about a malpractice complaint from his top search results. Russo insisted that because he was cleared of wrongdoing and the article did not mention this, it was within his right to privacy to have the search results removed. The agency agreed. Google is fighting the ruling which was recently referred to the European Court of Justice in Luxembourg on the issue of whether the ruling clashed with EU freedom of expression laws.

The case of the Mr. Russo is connected to the larger issue of whether governments should—or could—guarantee individuals a so-called “right to be forgotten.” Though, like most newly recognized rights, the contours are hazy and the terms ambiguous, the right to be forgotten is catching on. In 2009, the French secretary of state launched a campaign for le Doit a l’Oubli (the right to oblivion, though no English translation is quite adequate) that culminated in the adoption of so-called “codes of good practice” by several trade associations, social networks and search engines. The provisions are themselves broad but somewhat vague: adoptees are obligated to give notice to users about how to exercise their privacy rights, respect an individual’s right to consent to data processing, to receive prior notice of procession and to object to the use of their data. The European Union is currently tossing around some proposed legislation which would give people the right, any time to have all personal information online deleted—though it’s hard to see how this would work in practice. Even in the United States, where courts have been much less willing to allow individuals to assert a general right of privacy against search engines and social networks, the FTC has issued a working paper called “Safeguarding Consumer Privacy in an Era of Fast Transform” which recommends, among other things, that individuals have the right to have inaccurate information about themselves removed from databases.

Critics of the “right to privacy” argue that, in its extreme form, it’s tantamount to suppression of speech—censorship. Most facts and opinions worth writing about–and reading about– are facts and opinions about people. Individuals have always been able to fight others who publish false information using libel and defamation law, but falsity is not a requirement for a privacy claim. If individuals are empowered to suppress true or arguably true information written about them by third parties under the guise of privacy, the argument goes, our freedom of expression is significantly burdened. In one infamous case, Wikipedia was sued by two German murderers demanding that their names be removed from an article about their victim. German law allows criminals’ names to be withheld from association with their crimes after their sentences are over. The case of German murderers points to another criticism of the right to privacy: practicability. If a German court orders the removal of the names from the article, does it only apply to the German language version of Wikipedia or with a .de web url? Does it apply to any article accessible from Germany? Or only if the servers which host the article are located in Germany? Moreover, does Wikipedia, which can be edited by anyone, have an ongoing obligation to ensure that the ex-con’s names are kept of the site? For a website like Wikipedia, which relies heavily on user donations, and which relies on a relatively small number of editors to maintain their pages, an ongoing obligation to monitor for information about individuals is a heavy burden.

From the perspective of someone with a rare name—say for example, the author of this post (but three out of the first four results are not me!)—the right to delete whatever search results I wanted from Google would certainly be a blessing. That being said, there is a thin and hazy line between what information is truly private—which should be protected—and what information is merely embarrassing or inconvenient, but a legitimate part of the public discourse.
http://www.sarmientoabogado.biz

El poder de los abogados internos en las compañías

La crisis aumenta el poder de los abogados internos en las compañías

Natalia Sanmartin Fenollera - Madrid - 20/05/2010

La crisis ha cambiado el mercado de servicios legales en todo el mundo. Y lo ha hecho no sólo en el sector de las grandes firmas de abogados, sino también en el ámbito del asesoramiento legal interno. Los directores de asesoría jurídica de las compañías han ganado peso e ifluencia dentro de sus empresas en la actual coyuntura económica. "Los departamentos jurídicos de las empresas están viviendos una ola de popularidad interna", resume el estudio Law Firm of the 21st Century: The Clients' Revolution (La firma jurídica del siglo XXI: La revolución de los clientes) presentado por la firma internacional Eversheds y que recoge la opinión de de 130 letrados in-house y de 80 socios de despachos en todo el mundo.

El principal motivo de ese reforzamiento e influencia creciente está en el hecho de que más de la mitad de las asesorías internas han aumentado su carga de trabajo en los últimos tiempos y han reducido en igual medida el número de asuntos externalizados. No parece ser una tendencia puntual. Según el informe de Eversheds International, más de la mitad de los jefes de asesoría jurídica encuestados están convencidos de que las capacidades de sus departamentos aumentarán en los próximos cinco años y que la crisis económica ha dado un espaldarazo a esa tendencia.

Un mayor papel comercial

El propio papel del director de asesoría jurídica está cambiando, hasta el punto de haber comenzando a desempeñar en algunos casos funciones de consejero comercial senior -tres de cada cuatro encuestados así lo confiesan- y a asumir, en un 55% de los casos, responsabilidades de gobierno corporativo. Según Bryan Hughes, director ejecutivo de Eversheds, los resultados del informe revelan un progresivo proceso de transferencia de poder hacia el cliente, "debido en gran medida a que los letrados in-house han asumido un papel comercial más importante dentro de sus empresas. Esto afectará enormemente al sector legal, al reducir la carga de trabajo de las firma de abogados."

Otro de los grandes cambios que muestra el estudio es el interés de los clientes por la externalización de servicios en jurisdicciones con costes bajos y por la tecnología. Un tercio de los jefes de asesoría jurídica encuestados reconocen estar externalizando o pensando en externalizar trabajo legal que no requiere una alta cualificación en países con costes reducidos. Del mismo modo, casi seis de cada diez mantienen la misma postura respecto a las herramientas tecnológicas para el trabajo estandard.

Junto a esas tendencias, el informe confirma la creciente exigencia de los clientes respecto a los recortes de honorarios. Así, dos terceras partes de los directores de las asesorías jurídicas de las empresas confiesan haber exigido tarifas más bajas a sus abogados externos, y el 47% de los socios reconocen que ésa es la prioridad absoluta de sus clientes. Sin embargo, sólo el 25% de los socios están ofreciendo tarifas reducidas reales. "El cambio que según las predicciones tendría lugar a lo largo de los próximos 10 años ya ha llegado, y serán las empresas que respondan a las tendencias identificadas en el estudio las que obtengan verdaderos beneficios", apunta Bryan Hughes. Se trata de una revolución que no sabe de estatus. Para más de la mitad de los clientes (51%) y el 46% de los socios, el término magic circle, que designa a las grandes firmas de la City, resulta ahora mismo "caduco".

La facturación por horas cede terreno
El estudio confirma la desaparición de los honorarios por horas, que pasa a considerarse un método más de facturación, en vez del único. Aunque muchos socios de bufetes de abogados se están adaptando a los cambios (el 63% de los clientes indicaron que reciben más valor por su dinero desde que comenzó la recesión mediante extras, como secondees gratuitos), otros siguen sin proporcionar a sus clientes lo que demandan. "Cuando realizamos nuestro primer estudio sobre el sector jurídico hace dos años, sólo un 22% de clientes y un 48% de socios veían la facturación por servicio como una tendencia de futuro. Ahora, el 86% de los clientes y el 88% de los socios dicen que es una forma frecuente o más habitual de facturación", apunta Bryan Hughes. Para Lupicinio Rodríguez, socio director de Eversheds en España, "Eversheds Lupicinio ya iba en esa línea y el reciente estudio de Eversheds International confirma que es el rumbo correcto. Hace tiempo que pregonamos que nuestros abogados son capaces de proponer un presupuesto cerrado, porque estudian el caso, tienen mucha experiencia y conocen el mercado. Toda crisis es cambio, y creo que nosotros ya lo hemos hecho."

Lawyer Quotes

The leading rule for the lawyer, as for the man of every other calling, is diligence. Leave nothing for to-morrow which can be done to-day.
Abraham Lincoln
The power of the lawyer is in the uncertainty of the law.
Jeremy Bentham
Only lawyers and painters can turn white to black.
Japanese Proverb
“Lawyer: An individual whose principal role is to protect his clients from others of his profession.”
~Anonymous

Pon un abogado en tu empresa

Por Ignacio de Miguel el 19 Enero 2009
Hace 7 años que me muevo con mi propia empresa, y un recurso que he necesitado y utilizado siempre es el abogado.

Desde la propia constitución de la empresa alguien tiene que redactar las escrituras. Y a partir de ahí cualquier relación con un cliente debería estar mediada por un contrato.

Podemos utilizar contratos genéricos o modelos, completamente gratuitos, o proporcionados por nuestro gestor contable. Pero a día de hoy, después de decenas de contratos firmados casi nunca me ha servido un modelo estandarizado. Y cuando el contrato me ha sido entregado por un proveedor, no ha habido ni una sola vez que lo haya firmado sin cambiar algo.

El abogado es algo más que un contrato puntual, al menos si es un buen abogado. Para que nos entendamos un poco más en el sector internet / informática, no es lo mismo una empresa de producto que una empresa de servicios.

Haciendo un símil, no es lo mismo un abogado o quien sea que te suelta un contrato estándar, que un abogado que se preocupa de proteger tus intereses a medida y conocer lo que realmente quieres y necesitas hacer.


El abogado es el guardaespaldas legal. Si te asesora bien, trabaja cada contrato como si fuera el único, se preocupa de conocer tu empresa y tu trabajo, es un buen abogado que además te va a librar de muchos problemas, porque evitará que lleguen.

Cláusulas de rescisión anticipada, indemnizaciones por incumplimientos de contrato, condiciones de servicio adaptadas, protección ante el abuso… son cuestiones que nunca deseas que tengan que ser tratadas, pero si tu abogado las ha plasmado en los contratos adecuadamente, al final te ahorras quebraderos de cabeza. Porque las rescisiones anticipadas, indemnizaciones, incumplimiento de condiciones de servicio, etc, se acaban produciendo.

Los emprendedores que montan su empresa con muy pocos recursos suelen prescindir del gestor contable y del abogado para ahorrar costes. Yo lo tengo claro, siempre he incluído en mi presupuesto tanto al contable como al abogado (sí, con algún enchufe que me ha ahorrado dinero). Creo que es una parte del dinero mejor empleada de la empresa y que debería ser casi tan obligatorio contar con ellos como tener el seguro del coche.

De todas formas siempre hay veces que podemos aprovechar un contrato modelo, que se ajusta lo suficiente a nosotros y no asumimos un gran riesgo. Para estos casos hay unas cuantas direcciones que debemos tener guardadas:

Tipologías de contratos de trabajo del INEM.
Contratos online generales
Contratos informáticos
Listado de modelos de contratos
Contratos en derecho.com
Nuestro abogado siempre me dice que todo se puede hacer, y a continuación tengo que explicarle de manera que lo entienda lo que quiero hacer. Es una parte del trabajo muy interesante, contarle a alguien ajeno al sector qué es lo que quieres hacer de forma que lo entienda de una manera tan sencilla que después sea capaz de trasladarlo al lenguaje legal.

Bueno, tengo que terminar con mi consejo del título: pon un abogado en tu empresa.

How to Hire an Attorney

Hiring a good lawyer is crucial to any successful business. Here's everything you need to know about finding, interviewing and hiring the very best.

By Cliff Ennico
There are two professionals every business will need early on: an accountant and a lawyer. The reasons for hiring an accountant are pretty obvious--you need someone to help you set up your "chart of accounts," review your numbers periodically, and prepare all of your necessary federal, state and local tax returns. The reason for hiring a business attorney may not, however, be so apparent. A good business attorney will provide vital assistance in almost every aspect of your business, from basic zoning compliance and copyright and trademark advice to formal business incorporation and lawsuits and liability. First, some general rules about dealing with lawyers:

If you are being sued, it's too late. Most small businesses put off hiring a lawyer until the sheriff is standing at the door serving them with a summons. Bad mistake. The time to hook up with a good business lawyer is before you are sued. Once you have been served with a summons and complaint, it's too late--the problem has already occurred, and it's just a question of how much you will have to pay (in court costs, attorneys' fees, settlements and other expenses) to get the problem resolved.
America's judicial system is a lot like a Roach Motel--it's easy to get into court, but very difficult to get out once you've been "trapped." Most lawyers agree that while nobody likes to pay attorneys' fees for anything (heck, let's let our hair down--nobody likes paying or dealing with lawyers, period), but the fee a lawyer will charge to keep you out of trouble is only a small fraction of the fee a lawyer will charge to get you out of trouble once it's happened.

Big firm or small firm? Generally speaking, the larger the law firm, the greater the overhead, therefore the higher the hourly rates you will be expected to pay. Still, larger firms have a number of advantages over smaller ones. Over the past 20 years, lawyers have become incredibly specialized. If you use a solo practitioner or small firm as your lawyer(s), it's likely that they will not have all the skills you may need to grow your business. I don't know of any solo practitioner, and very few small firms (under 10 lawyers) that could handle your lawsuits, negotiate your lease of office or retail space, file a patent or trademark, draft a software license agreement, advise you on terminating a disruptive employee, and oversee your corporate annual meeting. Sooner or later, these "generalists" will have to refer you out to specialists, and you will find yourself dealing with two or three (or even more) attorneys.
While larger firms are more expensive to deal with, they have two significant advantages: 1) they usually have all the legal skills you need "under one roof," and 2) they have a lot of clout in the local, regional and (perhaps) national legal community. A nasty letter from a "powerhouse" law firm with offices in 30 states is a lot more intimidating than a nasty letter from a solo practitioner who is not admitted to practice in the defendant's state. Also, being connected with a large, well-established law firm may have intangible benefits--they may be willing to introduce you to financing sources or use their name as a reference when seeking partnership arrangements. Certainly if you run a fast-growing entrepreneurial company that plans to go public (or sell out to a big company) some day, you would need to work with lawyers whose names are recognized in the investment banking and venture capital communities.

Types of Attorneys
Like doctors, lawyers are becoming increasingly specialized. Someone who does mostly wills, house closings and other "non-business" matters is probably not a good fit for your business. At the very least, you will need the following sets of skills. The more skills reside in the same human being, the better!

1. Contracts. You will need a lawyer who can understand your business quickly; prepare the standard form contracts you will need with customers, clients and suppliers; and help you respond to contracts that other people will want you to sign.

2. Business organizations. You will need a lawyer who can help you decide whether a corporation or limited liability company (LLC) is the better way to organize your business, and prepare the necessary paperwork.

3. Real estate. Leases of commercial space--such as offices and retail stores--are highly complex and are always drafted to benefit the landlord. Because they tend to be "printed form" documents, you may be tempted to think they are not negotiable. Not so. Your attorney should have a standard "tenant's addendum," containing provisions that benefit you, that can be added to the printed form lease document.

4. Taxes and licenses. Although your accountant will prepare and file your business tax returns each year, your lawyer should know how to register your business for federal and state tax identification numbers, and understand the tax consequences of the more basic business transactions in which your business will engage.

5. Intellectual property. If you are in a media, design or other creative-type business, it is certainly a "plus" if your lawyer can help you register your products and services for federal trademark and copyright protection. Generally, though, these tasks are performed by specialists who do nothing but "intellectual property" legal work. If your lawyer says he or she "specializes in small businesses," then he or she should have a close working relationship with one or more intellectual property specialist.

Most lawyers will charge a flat one-time fee for routine matters, such as forming a corporation or LLC, but will not volunteer a flat fee unless you ask for it. Be sure to ask if the flat fee includes disbursements (the lawyer's out-of-pocket expenses, such as filing fees and overnight courier charges), and when the flat fee is expected to be paid. Many attorneys require payment of a flat fee upfront, so that they can cover their out-of-pocket expenses. You should always ask to "hold back" 10 to 20 percent of a flat fee, though, in the event the lawyer doesn't do the job well.

Lawyers will be reluctant to quote flat fees if the matter involves litigation or negotiations with third parties. The reason for this is bluntly stated by a lawyer friend of mine: "Even though it's a transaction I've done dozens of times, if the other side's lawyer turns out to be a blithering idiot who wants to fight over every comma and semicolon in the contracts, then I can't control the amount of time I will be putting into the matter, and will end up losing money if I quote a flat fee." In such situations, you will have to pay the lawyer's hourly rate. You should always ask for a written estimate of the amount of time involved, and advance notice if circumstances occur that will cause the lawyer to exceed his or her estimate.

If a lawyer asks you for a retainer or deposit against future fees, make sure the money will be used and not held indefinitely in escrow, and that the lawyer commits to return any unused portion of the retainer if the deal fails to close for any reason. You should be suspicious of any lawyer who offers to take an ownership interest in your business in lieu of a fee.
Questions to Ask Yourself Before Hiring an Attorney
Is this person really a frustrated businessperson disguised as a lawyer? Some lawyers get tired of being on the outside looking in when it comes to business dealings. Such a lawyer may attempt to second-guess your business judgment. Be wary of a lawyer who takes too keen an interest in the nonlegal aspects of your work.
Does this person communicate well? J. P. Morgan once said, "I do not pay my lawyers to tell me what I cannot do, but to tell me how to do what I want to do." The right lawyer for your business will not respond to your questions with a simple "That's OK" or "No, you can't do that," but will outline all your available options and tell you what other businesses in your situation normally do.
Are the offices conveniently located? You will need to visit your attorney frequently, especially in your first few years in business. You should not have to waste a day traveling to and from the nearest city each time you need legal advice. When in doubt, choose a lawyer close to home.
Do I like this person? Don't forget to follow your instincts and feelings. You should be able to communicate openly and freely with your attorney at all times. If you feel you cannot trust a particular lawyer or you believe the two of you have different perspectives, keep looking. Just remember that Ally McBeal is not reality: good looks and a dynamic personality are not as important in a lawyer as accuracy, thoroughness, intelligence, the willingness to work hard for you and attention to detail. As a former client once told me: "My father always said, 'Never trust a lawyer who has 20/20 vision and wears Armani.' I chose you as my lawyer because you look like you work for a living." The right lawyer for your business will take that as a compliment.

Cost-Saving Strategies
For many entrepreneurs, the idea of consulting a lawyer conjures up frightening visions of skyrocketing legal bills. While there's no denying that lawyers are expensive, the good news is there are more ways than ever to keep a lid on costs. Start by learning about the various ways lawyers bill their time:

Hourly or per diem rate. Most attorneys bill by the hour. If travel is involved, they may bill by the day.
Flat fee. Some attorneys suggest a flat fee for certain routine matters, such as reviewing a contract or closing a loan.
Monthly retainer. If you anticipate a lot of routine questions, one option is a monthly fee that entitles you to all the routine legal advice you need.
Contingent fee. For lawsuits or other complex matters, lawyers often work on a contingency basis. This means that if they succeed, they receive a percentage of the proceeds--usually between 25 percent and 40 percent. If they fail, they receive only out-of-pocket expenses.
Value billing. Some law firms bill at a higher rate on business matters if the attorneys obtain a favorable result, such as negotiating a contract that saves the client thousands of dollars. Try to avoid lawyers who use this method, which is also sometimes called "partial contingency."
If you think one method will work better for you than another, don't hesitate to bring it up with the attorney; many will offer flexible arrangements to meet your needs. When you hire an attorney, draw up an agreement (called an "engagement letter") detailing the billing method. If more than one attorney works on your file, make sure you specify the hourly rate for each individual so you aren't charged $200 an hour for legal work done by an associate who only charges $75. This agreement should also specify what expenses you're expected to reimburse. Some attorneys expect to be reimbursed for meals, secretarial overtime, postage and photocopies, which many people consider the costs of doing business. If an unexpected charge comes up, will your attorney call you for authorization? Agree to reimburse only reasonable and necessary out-of-pocket expenses.

No matter what type of billing method your attorney uses, here are some steps you can take to control legal costs:

Have the attorney estimate the cost of each matter in writing, so you can decide whether it's worth pursuing. If the bill comes in over the estimate, ask why. Some attorneys also offer "caps," guaranteeing in writing the maximum cost of a particular service. This helps you budget and gives you more certainty than just getting an estimate.
Learn what increments of time the firm uses to calculate its bill. Attorneys keep track of their time in increments as short as six minutes or as long as half an hour. Will a five-minute phone call cost you $50?
Request monthly, itemized bills. Some lawyers wait until a bill gets large before sending an invoice. Ask for monthly invoices instead, and review them. The most obvious red flag is excessive fees; this means too many people--or the wrong people--are working on your file. It's also possible you may be mistakenly billed for work done for another client, so review your invoices carefully.
See if you can negotiate prompt-payment discounts. Request that your bill be discounted if you pay within 30 days of your invoice date. A 5-percent discount on legal fees can add thousands of dollars to your yearly bottom line.
Be prepared. Before you meet with or call your lawyer, have the necessary documents with you and know exactly what you want to discuss. Fax needed documents ahead of time so your attorney doesn't have to read them during the conference and can instead get right down to business. And refrain from calling your attorney 100 times a day.
Meet with your lawyer regularly. At first glance, this may not seem like a good way to keep costs down, but you'll be amazed at how much it reduces the endless rounds of phone tag that plague busy entrepreneurs and attorneys. More important, a monthly five- or 10-minute meeting (even by phone) can save you substantial sums by nipping small legal problems in the bud before they have a chance to grow.
"Where to Start Looking" section by Karen E. Spaeder, and "Cost-Saving Strategies" section excerpted fromStart Your Own Business.

http://alonsosarmiento.googlepages.com

Peru and Brazil Messing around with dams

Nov 19th 2009 | INAMBARI
From The Economist print edition

First build a road, then flood it

JOSÉ CHÁVEZ, a farmer, is one of the few people in the Inambari area who welcomes a plan to build a huge hydroelectric dam where the departments of Madre de Dios, Cusco and Puno meet in Peru’s south-eastern jungle. He says that the waters of the Araza and Inambari rivers, which merge a stone’s throw from his back porch, regularly flood his rambling wooden house. It would be permanently flooded if the dam is built. Mr Chávez trusts in the promise he has received of relocation.

Inambari is one of up to six proposed hydroelectricity schemes on Peru’s jungle rivers, costing around $16 billion, contained in an agreement signed in April by the president, Alan García, and his Brazilian counterpart, Luiz Inácio Lula da Silva. The Inambari dam would be the first to be built. It would generate 2,000 megawatts of electricity—twice the output of Peru’s largest existing hydroelectric plant, and almost half its current electricity consumption. Most of the power would be exported to Brazil to start with, but the proportions would slowly reverse and after 30 years Peru would own the $4 billion project.

The dam would create a lake of up to 450 square kms (175 square miles), flooding some 60 villages, as well as roads and forest. Egasur, a Brazilian-owned consortium promoting the scheme, says that people displaced by the dam would be rehoused in better conditions.

Peru’s environment minister, Antonio Brack, has dropped his earlier opposition to the scheme. He says it offers benefits, including fish farming. The government claims local politicians are whipping up dissent ahead of local elections next year.

But for whatever reason, opposition is growing. Locals are keener on another big project, the paving of the grandly named Inter-Oceanic Highway linking Pacific ports in southern Peru to the Brazilian city of Rio Branco, from where a highway goes on to São Paulo, 3,600 kms (2,250 miles) from Cusco. The two governments agreed in 2005 to asphalt the road. Work is proceeding rapidly and both presidents would like it to be finished before they leave office in 2011. Inconveniently, the Inambari dam would flood 120 kms of the highway, on which upgrading work has already begun. It seems that in both Peru and Brazil the ministries of transport and of energy don’t talk to each other.

peruvianlawyer wrote: Nov 24th 2009 12:45 GMT Dear Sir.
Probably project planners in Peru and Brazil, have been inspired by a nymph and plan to build a pharaonic and lavish glass dome with neon lights and video projectors intertwined with advertising clips, news and stories of ghosts over the 120 miles of road to avoid being flooded with water from the new dam and also to serve as a tourist attraction for drivers of trucks that eventually venture to carry goods across the continent by land at a cost of gold for delivery in a Peruvian port a ship that comes from crossing the Straits of Magellan and the Panama Canal and going back. Hopefully this time the reality no more than fiction, for the sake of the Amazon.

Critics’ Picks Video: ‘Aguirre: The Wrath of God’

November 23, 2009, 6:00 pm
Critics’ Picks Video: ‘Aguirre: The Wrath of God’
By MEKADO MURPHY

This week, A. O. Scott gives thanks for the filmmaker Werner Herzog and his 1972 film “Aguirre, the Wrath of God,” which looks at the 17th Century conquests of Spanish conquistadors in Peru. It stars Mr. Herzog’s frequent collaborator Klaus Kinski. According to Mr. Scott, the film “paints an unsparing picture of colonial greed and the brutal encounter between human ambition and the wildness of nature.”

Have you seen “Aguirre: The Wrath of God?” Please share your thoughts on the film and what you consider to be Mr. Herzog’s best work.

November 23, 2009
6:46 pm

Dear Sir.
The film is set in a time and a place where law and justice are absent and has value only the strongest will. A law still applies in Peru and many parts of the world, starting with the countries called “developer” in relation to poor countries.
But it is also the story of an indomitable will to serve a deluded ambition, is the strength of the human being manage to overcome the forces of nature, even knowing that they may eventually take revenge.
http://alonsosarmiento.googlepages.com

— Alonso Sarmiento