WIPO Summary on Berne Protocol

Thanks to those who've sent their thanks. To those who find them useful, it's only a downpayment for the contributions of others on the 'net. For those who find them too long, it's revenge. If you find them boring, I can't help that -- I can only report what is or is not happening.

Sorry about not including my name in the posting. Since I don't receive it back, I did not realize it until Ed's and Mary's messages. I didn't intend to make these anonymous. I figured it was only a matter of time until Terri Southwick deduced the source. If I believed in smileys, I'd insert one here. Frankly speaking, it's a sure bet that the number of persons attending this meeting at WIPO who also are on the Internet can be counted upon one's fingers.

For those who want to find out more about WIPO, you might check out the PTO Web site. I think it's http://www.uspto.gov, but will double-check.

I also should have said that anyone can feel free to re-post elsewhere for non-commercial purposes. Attribution is appreciated, but not necessary.

In the interests of disclosure, I am attending on behalf of the Electronic Industries Association along with their Staff VP for Technology Policy, Barbara McLennan. I am an outside counselor, with the law firm of McDermott, Will & Emery in Washington, D.C.

Erratum for those to whom it matters: In the last posting on importation, the delegation from Argentina supported a right of importation, but noted that domestic exhaustion perhaps could be addressed on a national level and possibly by contract.

Standard disclaimers apply re unofficial notes and effects of jet lag. best regards -- Seth Greenstein sethg[_at_]access.digex.net

WIPO -- Berne Protocol Meeting of Experts

     The debate ended today with interventions to complete the discussion of rights of distribution, rental and importation, certain "smaller issues" in the proposed Protocol, and, in an abbreviated discussion, technological protections and anticircumvention provisions.

Distribution Rights

     Eric Smith of the International Intellectual Property Association (IIPA) began the morning by noting that digital transmission was a critical issue for the GII that needed early consideration. As to rental rights, he believed that the TRIPS limitation (no rental rights for audiovisual works) must remain, and that such rights were not necessary in light of the normal exploitation of works occurring in the video rental marketplace. Moreover, he conceded that it would be politically impossible to obtain such a right in the United States without concrete evidence of harm to the movie industry, but that he supported a rental right for all other types of works in digital format. He concluded by asserting that a right of importation was essential to prevent parallel importation.

     BSA (Emery Simon) observed that yesterday was a turning point in WIPO, and that this occurred because of the GATT TRIPs agreement. He said that new digital delivery means for software will come with or without the law, and encouraged WIPO to address seriously the legal issues raised by digital transmission.

     The Chartered Institute of Patent Agents (CIPA) concurred and added that there should be a passive carrier exception for reproductions occurring in a telecommunications network during the course of transmission.

     The National Music Publishers Association ("NMPA") said that distribution was a transmission. He said that copyright holders needed protection for transmission, noting that musical works can be downloaded from bulletin boards and commercial services. In that respect, he said that music publishers had filed suit against one service (i.e., CompuServe), and was confident that its rights would be vindicated. Nevertheless, he argued that legislation was preferable to give publishers legal certainty, and to secure publishers' rights and remuneration.

     The representative from Software Publishers Association (SPA) expressed concern over the argument that digital transmission was a communication to the public. In his view, transmission is a distribution, and can lead to reproduction. As to the argument that distribution meant transfer of possession or ownership of a copy, he noted that the word "copy" cannot be found in the Berne Convention. He observed that the ease of copying software led to $7.5 billion in piracy annually, with one illicit copy for every purchased copy.

     The delegate from Eurobit said that the definition of distribution as a transfer of ownership or possession of a copy failed to take into account licensing, where the licensee has neither ownership nor a transfer of possession for a limited period of time. He argued there should be no exhaustion of rights for digital transmission.

     The Electronic Industries Association next opposed rental rights for either analog or digital video, given that the current system of video rental benefits the film industry, the hardware industry and consumers.

     IFPI (Lew Flacks) said that the discussion yesterday on digital transmission was an important first step for the global information infrastructure (GII). He thought it was sound policy to fit these new rights into the existing framework, but noted that the discussion should not focus on the best fit within that framework, inasmuch as digital delivery implicates different rights at different times -- display, reproduction, distribution and communication to the public. He said the studies underway in the US, Japan, EC and Australia would set the agenda for international consensus, and thought it inconceivable that international progress could be made until these entities first considered the issues. Digital delivery may supplant the market for copies, so international law should assure authors' rights and give them the same degree of entrepreneurial control as they have today.

     The representative from CBEMA first noted that the name of CBEMA changed as of December 1 to the Information Technology Industry Council. He said that the Berne Convention offered suitable protection for digital transmissions, but said the same rules should apply to traditional and electronic material, and the right of distribution generally should not be diminished. Alternatively, he suggested that existing rights could be applied to all works, no matter how they are delivered. Finally, he said that national treatment for digital transmission was critical.

     IPO/IIA (Mort Goldberg) argued that the right of communication to the public was insufficient for digital transmissions, since it covered only limited subject matter and would not cover point to point transmissions. He noted that the transmission right was assimilated to the reproduction right, and that reproduction would cover all reproductions whether in point to multipoint or point to point transmissions.

     AIDA (international film directors organization) responded to EIA and the IIPA interventions, supporting rental rights for audiovisual works. He thought it a fallacious argument that such rights were not needed because the new technologies were good for all, and that the law must adapt to the market and respect the rights of the consumer. Authors only can master the market if they first have the legal rights.

     The Chairman summarized the discussion of different approaches to cover digital delivery. Perhaps several of these approaches could be combined, he offered. He concluded that any future work program should include a study and analysis of digital delivery. Distribution rights were generally accepted, with exhaustion of rights. Certain limitations and exceptions would be made to the exhaustion of rights for rental. The majority approved rental rights for computer programs, audiovisual works, sound recordings and works in digital format as the minimum, although certain delegations expressed reservations as to audiovisual rights. Some asked for works to be added, such as books and sheet music, and a number favored a global rental right. Some thought lending should also be an exception to exhaustion, while others disagreed. As to importation, an equal number supported it, opposed it, and needed to study it before taking a position. Nevertheless, it would be left on the work agenda.

_Four Brief Issues_

     The committee then considered quickly four issues. As to the term of protection for photographic works, there was no objection to the term of protection for 50 years. It was determined to leave the question of satellite broadcasting on the agenda for further consideration, particularly given their role in digital communications. Regarding non-voluntary licenses for sound recording of musical works (compulsory mechanical licenses), most delegations favored their elimination. The United States said that the Clinton Administration had supported their elimination as part of the digital performance rights legislation, but was open to discussion either way. IFPI and NMPA argued that non-voluntary licenses may be useful for licensing on the NII. IFPI also said that these licenses could be eliminated, but only as part of the elimination of all compulsory licenses across the board. Finally, concerning elimination of non-voluntary licenses for primary broadcasting and satellite broadcasting, there was broad support for their elimination. However, it was opposed by the European Broadcasting Union which argued that this provision was yet another example of how WIPO took rights away from broadcasters without giving anything in return. Although the issue was not raised by WIPO, the U.S. added that it could not agree to elimination of a compulsory license for retransmission, and a few delegations took positions on both sides of the issue.

_Enforcement, Including Technological Protections_

     The remainder of the session discussed enforcement, and particularly the suggestion to include provisions imposing copyright liability for manufacturers of devices used in circumvention of copy protection systems and unauthorized decoding of transmissions. The Chairman said there were four elements to the proposal: proscribing the manufacture, sale and importation of circumvention devices; criminal liability; civil damages; and border measures. The Chairman added to the agenda the United States' suggestion regarding fraudulent alteration or deletion of copyright management information such as codes for identification of the work and the copyright owner, terms and conditions for use, etc.

     The United States (Bruce Lehman) spoke first, noting that the U.S. suggestion was summarized in his letter to Dr. Bogsch. He then turned the microphone over to Terri Southwick to explain the details of the proposal, which was the same as the "primary purpose and effect" proposal made in the Green Paper. She said that legal protection no longer was incentive enough for copyright holders to make their works available over digital networks, and that laws were needed to protect against circumvention of copy protection technologies. As to copyright management information, she explained the types of information that might be included in the digital header of a file record, such as identification of the owner, terms and conditions of use, the date of last alteration of the work, search and retrieval software, etc. She analogized these codes to license plates, street signs and speed limits on the information superhighway. Lehman added that the U.S still is examining the types of information to include, but thought that the provision against fraudulent alteration was critical to the GII.

      The Chairman added an observation that these technological techniques for protection were not legal as such, but that laws were needed to prohibit circumvention of those techniques. He questioned whether this was really an enforcement provision or something else.

     The UK delegation said that even though this was legal support for technical solutions rather than enforcement per se, it was important to discuss these issues. In the UK, laws provide for civil remedies equivalent to copyright remedies. For unauthorized reception of encrypted transmissions, both civil and criminal remedies were available. These were general laws, not copyright or neighboring rights. He noted that it was not clear who was to benefit from the provision. The beneficiary in the UK was the person who issues the copies to the public; for example, the transmitting entity of an encrypted broadcast.

     The U.S again asked for the floor and Commissioner Lehman explained that in the U.S., certain other laws already addressed elements of these proposals. He observed that there was criminal and civil liability for unauthorized decoding of encrypted broadcasts, and criminal copyright infringement. The centerpiece of the Green Paper approach was to give these rights to the copyright holder, although he thought there was room for different legal approaches internationally that offered the same degree of protection.

     The Australian delegate agreed that some of the proposed measures are not copyright, and that existing remedies even including fraud might already cover the proposal. Similar recommendations had been made in an Australian report regarding remedies to support technical copy protection and to proscribe circumvention devices.

     The delegate from Sweden said that these concepts were not new to Sweden, which has a law prohibiting circumvention of computer software copy protection and illicit decoders. The private sector in Sweden agreed that it was important to discuss these issues, although he was uncertain whether the provisions belonged in the Berne Protocol. He perceived a problem in the requirement of imposing the same sanctions as for copyright infringement, and wondered how to define terms such as "predominantly," "adapted" or "assisting." He preferred a less detailed provision. He concluded that the copyright management information provision was interesting and deserved study.

     The Director General then asked what the proposal means for works that are not copy protected or not under copyright. He questioned whether this would frustrate time limits of copyright protection. Ultimately, he asked whether this really was not a neighboring right, and whether this could be tied to copyright.

     The delegation from Japan explained that his delegation supported the study of laws to prohibit circumvention of copy protection, and that it was being considered as to multimedia. Although he had no concrete position at this stage, he made several preliminary comments:

(1) Careful consideration should be given to the effects of
over-regulation, which might prevent legitimate acts necessary for normal use of the equipment. He referred to the comments of Dr. Bogsch concerning the protection of works in the public domain. He suggested that the sufficiency of the language of the proposal -- "specifically or predominantly designed or adapted" -- should be studied.

(2) The effects of the proposal must be considered
concerning limitations on exclusive rights, such as private use of equipment.

(3) Consideration should be given as to who would be the
beneficiaries.

(4) The proposal was interesting as to fraudulent
alteration of copyright management information, but he suggested that we first should examine the actual practices of right holders.

     The EC delegation supported the views of these other delegations. He believed it was premature to discuss where in the text the rights should be or what they should be called. He said that issues needed to be clarified as to sanctions, standing, and the standard of liability.

     Hungary's delegate attempted to answer Dr. Bogsch's question as to the nature of this right, by offering that this was a type of contributory copyright infringement rather than an enforcement provision. He argued that there was no problem as to protecting of non-copyrighted works insofar as this proposal protected only the copies of the works and not the works themselves. As to the management information proposal, he thought this already was addressed under national laws regarding counterfeiting, unfair competition or fraud generally. The delegate from Austria later shared these views.

     The delegate of Switzerland observed that the focus on devices might affect authors who wished to use such devices and, in so doing, would not be committing infringement. Perhaps it then would be better to look at the acts to be prevented, e.g., to target the person using the device for unauthorized copying. He also noted that under his nation's law, the nature of the offense must be clearly defined in order to impose criminal liability.

     The Canadian intervention also addressed the concern with excessive protection, such as protection of public domain works or the preclusion of fair dealing or fair use copying, or legitimate copying of excerpts. He saw no global answer, but thought that some amendments to the proposed language might be helpful. He made four basic points:

(1) It might be more appropriate to focus on the legitimacy
of the act of copying or decoding, and place liability on the user rather than the manufacturer. If a user is entitled to copy, then a manufacturer can make a device to enable that copying.

(2) It is easier to proscribe services to achieve
particular unlawful acts. However, there should be room for legitimate services, and there should be room for exceptions, e.g., to ensure greater access to public domain works.

(3) A more basic question is whether any provision would
always interfere with public domain works.

(4) As to copyright management information, he suggested a
different standard of liability -- "for illicit purposes" rather than fraud. He noted that there are two types of information involved, one for characteristics of the work and the other for terms and conditions of use. He noted that each type was legally different, that the former might be related to copyright and the latter might be protected by contract. He also wondered whether the WIPO provision would make it unlawful to remove inaccurate encoding.

     The Italian delegate thought it premature to discuss the provisions in light of the uncertainty over the basis in copyright and the legal protection of the transmission.

     The Chairman then said that, in light of the short time remaining and the possibility of continuing this discussion next week in the New Instrument debate, he would limit the remaining interventions to those non-governmental organizations that did not intend to attend next week.

     BSA began by observing that this is a real issue today, and there are lawsuits all over the world relating to this issue. BSA supported the provisions, and would also support the U.S. proposal regarding copyright management information. He noted a further problem, namely, that once a user received authorization to unlock a program it was insufficient to have solely a legal claim. A more appropriate remedy would be also to proscribe possession and use of such anticircumvention devices, with a careful definition of covered devices. In BSA's view the proposal was not overly broad but, rather, too narrow, citing the difficulties inherent in proving the "principal purpose" of a device. He supported the inclusion of the enforcement language from the TRIPS text, and said that key elements of relief needed by software companies were ex parte search orders, predetermined damages, attorneys' fees and costs, and speedy enforcement procedures. This position was supported by CBEMA (ITI) and CIPA. The CIPA representative also referred to the European legislation on computer misuse, making it a criminal offense to manipulate or alter data in another's computer. SPA agreed with these other positions, and noted that copy protection could be used also to protect against trade secret and patent infringement.

     The International Writers Guild representative cited the importance of copyright management information to maintaining integrity of works. The representative of the International Publishers Association endorsed all of the points made by BSA, and added that the provision also should address circumvention of "record and reward" systems, i.e., that quantify usage and remuneration. He thought that a proscription covering possession would be useful where the possessor knows that the devices are used for circumvention, and that this could be useful against warehousers.

     The European Committee of the American Chambers of Commerce supported the proposal, but cited the practical problem inherent in the use of such devices for legitimate purposes.

     IIPA recognized there are technical arguments to exclude certain types of measures, but that anticopying technologies were essential to protect the authors' revenue stream. The provisions should cover: (1) possession and use of circumvention devices. The committee also should discuss international rules to prevent unauthorized access to encrypted on-line delivery systems; and, (2) a legislative mandate that certain devices should include technical copy controls. He cited the example of SCMS. For on-demand systems to be effective, there would have to be a method to prevent copying without permission and payment. The device to activate this system would be in the copier. He ended by expressing appreciation and support for the U.S. position.

     The Chairman summarized the discussion as having received a positive response from governments and non-governmental organizations. He said that the studies underway in the several national governments should produce helpful results and more specific proposals, but it was generally recognized that technical systems would be important for efficient copyright protection. Questions remain as to who benefits, who has standing to enforce, what sanctions should be applied, and to what extent similar rights already were provided in national legislation or, if under international law, it should be limited to a statement to provide effective sanctions.

     As to how close this regime was to copyright law, the Chairman offered his personal view that it should be linked to copyright, and that perhaps an informal committee might consider legal tactics to achieve this goal. He admitted that several of these provisions did not conform to copyright, and that it touched many existing legal remedies outside of copyright law.

Conclusion

     A suggestion was made by the Chairman and the Director General that the next meeting should be held before the meeting of the governing bodies next autumn. Dr. Bogsch suggested that a late August meeting might be appropriate, and perhaps the meeting could cover five days of debate, Monday through Friday, returning on Tuesday for the report. He suggested that after next week, consideration might be given to whether this meeting should be split between the Berne Protocol and the New Instrument, or whether common elements could be discussed in a combined meeting on the two treaties. Dr. Bogsch suggested that the WIPO International Bureau would not prepare any new documents for this meeting. Rather, he said that the meeting should be carried out on the basis of papers prepared by the governments, considering issues such as digital delivery and the unfair extraction right.

                              [END]