October 1, 1996

The New WIPO Copyright and Phonograms Treaties: Steps Toward Harmonized Protection for the Digital Age

ABA Computer Litig. J.
For several weeks last December, representatives from approximately 130 countries met in Geneva at a Diplomatic Conference convened by the World Intellectual Property Organization ("WIPO"). The intellectual property community watched closely as they sought to establish minimum standards of copyright (or neighboring rights) protection for sound recordings, computer programs and other works of authorship for the digital age. What resulted from those negotiations were two new treaties, one addressing protection of literary and artistic works in the digital age (the WIPO Copyright Treaty) and the other addressing protection of the rights of performers and producers of phonograms (the WIPO Performances and Phonograms Treaty).
In this article we first discuss some of the history and objectives of these treaties and their general place within the framework of international copyright relations. We then review some of their more significant provisions. Finally, we turn to the looming Congressional battle over ratification of the treaties in the United States and the parallel unresolved dispute over the liability of on-line service providers ("OSPs") for certain infringing transmissions made over their networks.
History and Objectives of the Treaties
For a number of years, creators of copyrighted works and various governments have been pressing for treaties to clarify the application of the century-old Berne Convention in the digital age or, where the Convention does not apply, to establish new international norms of protection.
In 1989, the Berne Convention contracting parties, through WIPO, convened a Committee of Experts to examine these questions. The Committee of Experts split into two Committees in 1992. The first of these was to focus on the preparation of a possible "protocol" to the Berne Convention addressing copyright protection of computer programs and databases and other questions concerning the protection of literary and artistic works in general. The other was to focus on a "new instrument" addressing rights of performers and producers of phonograms, which are not subject to the Berne Convention and which, in many countries, are protected through a system of "neighboring rights" rather than copyright. These Committees met several times each, sometimes jointly, and reviewed written proposals and comments from several governments, including the United States, the European Union and Japan. In August 1996, the Chairman of the Committees of Experts circulated proposals for the two treaties that eventually were adopted, as well as for a third treaty that would have created a sui generis form of protection for databases. The substance of the latter treaty was not addressed by the Diplomatic Conference, but the subject of database protection remains on WIPO's agenda for future consideration.
The treaties do not amend the Berne Convention per se, because an amendment would require the unanimous consent of all of the contracting parties. Thus, the treaties will not necessarily apply to all Berne countries, but only to those that ratify or accede to them. Neither treaty is intended to derogate from the obligations of the contracting parties under other related treaties, such as the Berne Convention and, in the case of the Phonograms Treaty, the Rome Convention. To the contrary, both treaties should have the effect of raising the level of protection available to nationals of each contracting party under the laws of every other contracting party.
Each treaty will become effective after 30 countries have ratified or acceded to it. As this article is being written, many countries, including the United States, have signed the treaties, but only Indonesia has ratified the Copyright Treaty and no country has ratified the Phonograms Treaty.
Significant Provisions of the Copyright Treaty
The Copyright Treaty increases and clarifies the level of protection enjoyed by authors under the Berne Convention.
First, Articles 4 and 5 make clear that computer programs, and databases having original selection or arrangement of their contents, are to be protected as literary works under Article 2 of the Berne Convention. This already is the case in the United States and is required eventually by the Agreement on Trade-Related Aspects of Intellectual Property (the "TRIPS Agreement") entered into as a result of the Uruguay Round of negotiations under the GATT. However, this requirement should have the effect of improving the protection available for computer programs and databases in some countries.
Article 6 of the Copyright Treaty provides a distribution right for literary and artistic works in general. The Berne Convention previously required the contracting parties to provide such a right only for motion pictures. This right is limited by a provision that gives the contracting parties discretion to determine the conditions under which the first sale doctrine applies, and the contours of the first sale doctrine vary widely among countries. Copyright owners and the U.S. government sought to require the contracting parties to give copyright owners the right to control importation of their works (particularly to stop the import of grey market goods). However, the Diplomatic Conference did not reach agreement on provisions that would have done so.
Articles 7 and 8 supplement the Berne Convention with new rights of particular importance in the digital age. Article 7 grants authors of computer programs, motion pictures, and works embodied in phonograms the exclusive right to authorize commercial rental of their works. This rental right is subject to certain exceptions, perhaps most importantly an exception that rental rights need not be provided for motion pictures unless commercial rental has led to "widespread copying . . . materially impairing the exclusive right of reproduction." Thus, this provision is consistent with U.S. law, which provides rental rights for computer programs and phonorecords but not for motion pictures.
Article 8 grants authors the exclusive right to authorize "any communication to the public of their works, by wire or wireless means, including the making available to the public of their works in such a way that members of the public may access these works from a place and at a time individually chosen by them." The Berne Convention addresses communication to the public in a way fragmented by both type of work and communications medium. This new right transcends categories of works and traditional media.
Article 9 of the treaty makes the minimum duration for the protection of photographic works subject to the general rules of the Berne Convention. Thus, contracting parties that do not already do so would be required to provide protection for photographic works for the life of the author plus fifty years.
Articles 10 and 11 impose on the contracting parties important new obligations to "provide adequate legal protection and effective legal remedies against the circumvention of effective technological measures" used to protect authors' copyrights and against the removal or alteration of electronic rights management information. The growth and convergence of digital media increasingly have motivated copyright owners to explore technological means of identifying and protecting their works. These means include encryption, copy protection and copyright management information tags that identify the author and the terms and conditions of using the work. These provisions provide the necessary legal regime for effective use of such technological means.
Significant Provisions of the Phonograms Treaty
The Performances and Phonograms Treaty introduces new international norms to improve and harmonize the protection of the rights of performers and producers of phonograms. For purposes of the treaty, "performers" include persons who act, sing, or otherwise perform works, a "producer" is the person or entity who first fixes the sounds of a performance, and a "phonogram" (like a "phonorecord" in U.S. law) is an embodiment of the sounds of a performance. As originally proposed, the treaty might have addressed rights with respect to audiovisual works as well, but as finally adopted, the alternative provisions concerning audiovisual works were excluded.
Article 5 of the treaty requires that performers have moral rights to be identified and to object to any modification of the performances that would be prejudicial to their reputation. Performers have not previously enjoyed moral rights under the Rome Convention or other international agreements.
Article 6 gives performers the right to control the communication to the public and fixation of their unfixed performances. This provision expands upon the anti-bootlegging provisions of the TRIPS Agreement (now embodied in U.S. law at 17 U.S.C. § 1101) and is generally consistent with obligations under the Rome Convention.
Article 7 provides a broad reproduction right, without language from the Rome Convention that implies certain limits on the reproduction right. However, the final version of the treaty does not include proposed language that would have clarified that even temporary reproductions are encompassed by the reproduction right.
Like the analogous provisions of the Copyright Treaty, Articles 8, 9 and 10 of the Phonograms Treaty provide that performers are to enjoy a distribution right, rental right and right of making available to the public. Recognition of these rights has not previously been required by international agreements.
Articles 11 through 14 of the treaty afford producers of phonograms essentially the same economic rights as are provided for performers.
Under Article 15, performers and producers of phonograms also receive a right of remuneration for the use of published phonograms for communication to the public. However, the contracting parties may limit this provision to only certain uses, or opt out of it entirely. For example, the United States is not expected to modify the scope of copyright protection it affords sound recordings, even though sound recording copyright owners presently have no rights with respect to analog performances and enjoy only limited rights with respect to certain performances by means of digital audio transmissions. 17 U.S.C. § 114. These provisions of the treaty generally are consistent with the Rome Convention.
Article 17 requires that the minimum duration of protection be 50 years.
Articles 18 and 19, like Articles 10 and 11 of the Copyright Treaty, address circumvention of technological protection measures and removal and alteration of electronic rights management information.
Ratification in the U.S.
On July 28, President Clinton transmitted the treaties to the Senate for ratification, along with proposed legislation to implement the treaties in U.S. domestic law. The proposed legislation was introduced by Representative Coble on July 29 as H.R. 2281 and by Senator Hatch on July 31 as S. 1121. The legislation would make various technical changes in U.S. copyright law, but its only significant changes would be to implement the anticircumvention and copyright management provisions of the treaties. Specifically, the legislation would provide both civil and criminal penalties for certain actions that circumvent protection systems that effectively control access to a work or protect an exclusive right of a copyright owner. Remedies also would be available for the provision of false copyright management information or the removal or alteration of copyright management information.
Copyright owners are interested in seeing the treaties ratified promptly, and the Administration has pledged to press for their ratification. However, proponents of the treaties face an uphill battle for at least two important reasons. First, while industry groups have for months been discussing legislative language to implement the anticircumvention and copyright management information provisions of the treaties, no consensus has yet emerged. It has simply proven very difficult to address through legislative language all of the different technological uses of copyrighted works that could intentionally or unintentionally interfere with copy protection systems. For example, the Administration's proposal has been criticized as impairing the ability of users to engage in fair use and potentially proscribing certain multipurpose devices.
Second, on-line service providers have been concerned for several years about their potential liability for the transmission of infringing material over their networks. The original draft of the Copyright Treaty would have addressed this issue, but it ultimately proved intractable. In the U.S., there have been various proposals for addressing OSP liability, but most have been criticized by copyright owners as overbroad. It now appears that implementation and ratification of the WIPO treaties will move through Congress only in parallel with legislation to address OSP liability issues.
Congress will hold hearings on the WIPO treaty implementation legislation and OSP liability legislation in the fall. However, it is unlikely that the legislation will be enacted before next year.
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