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Kimbrough & Associés

Paris, France

Remarks about the Internet in International Copyright Conventions

Yves Gaubiac

Article published in Perspectives on Intellectual Property, Sweet & Maxwell, 1999

Yves Gaubiac is a Doctor of Law who has worked for UNESCO and SACEM and is now a solicitor and partner in the firm Kimbrough and Associates, Paris. He is also editor of the famous Revue Internationale du Droit d'Auteur (R.I.D.A.) and a member of the executive committee of the ALAI. He has published many articles on authors' rights, including "A New International Dimension of Copyrigrht: the TRIPS in the Marrakesh Agreement establishing the World Trade Organization" (1995) R.I.D.A. 3 anx "Freedom to Quote from an Intellectual Work' (1997) R.I.D.A. 3.

Remarks about the Internet in International Copyright Conventions

The law of copyright in international conventions as this relates to the Internet is drawn from the Berne Convention for the Protection of Literary and Artistic Works (the "Berne Convention") and the WIPO Copyright Treaty (hereafter "the Treaty" or "the WIPO Treaty").'

The Berne Convention is the instrument of reference for international intellectual property rights. The WIPO Copyright Treaty takes up the main provisions of the Berne Convention to which it refers.

Moreover the WIPO Copyright Treaty is a particular arrangement within the meaning of Article 20 of the Berne Convention for the countries which are party to the Treaty and which are members of the Berne Union: the Berne Convention allows the Member States of the Union to enter agreements which give them more extensive rights than those defined by the Convention or which contain provisions not contrary to its own. Thus it is necessary to interpret the provisions of the WIPO Treaty under the terms of the Berne Convention.

While the Berne Convention lays down the fundamental rights of authors, it does not solve all the difficulties posed by the dissemination of works on networks. A first attempt to remedy this was made within the framework of GATT leading to the Agreement on Trade-Related Aspects of Intellectual Property Rights ('TRIPS Agreement'3 )of the Marrakesh Agreement Creating the World Trade Organisation. Another initiative led to the adopting of the WIPO Copyright Treaty by the Diplomatic Conference held in Geneva in 1996. The Copyright Treaty, together with the Performances and Phonograms Treaty adopted by the same Diplomatic Conference, sets out a number of rules regarding the digitised transmission of works with particular emphasis on networks, as indicated in the Preamble, where the Contracting States recognise:

"the need to introduce new international rules and clarify the interpretation of certain existing rules in order to provide adequate solutions to the questions raised by the new economic, social, cultural and technological developments,"

and also

"... the development and convergence of information and communication technologies on the creation and use of literary and artistic works."

We wish to make two remarks about the provisions introduced regarding the circulation of works on digital networks. First, existing intellectual property rights, stemming from traditional means of broadcasting, are defined in the WIPO Treaty in order to improve the definition of their scope in the digital environment. Secondly, the 1996 Diplomatic Conference, being aware of the practical difficulties posed by the enforcement of copyright, adopted certain provisions to guaran-tee that authors" rights should be efficiently protected.

1. Definition of rights

Although a definition of the scope of applicability of intellectual property rights is available, certain questions remain.

1.1 Rights

The availability of works on the Intemet has led to a debate on the scope of intellectual property rights. Does the traditional right of reproduction include the digital reproduction of a work and also the various transitory stages of reproduction such as temporary or transitory copies? Is the right of representation not better adapted to define the transmission of a work on the Intemet and its display on screen? Does the right of distribution not include the communication of works via a network or is it restricted to the distribution of works in physical media? Is the right of rental not applicable to works made available on networks since, by connecting to a network, users can access works and use them just as if they had rented them from a phonogram or video rental shop? Does the right of communication introduced by the WIPO Copyright Treaty answer the need for circulation of works on the Internet and how does it differ from the rights of reproduction, distribution and rental? Does the circulation of works on the Internet not involve several of these rights?

The traditional definition of intellectual property rights leaves certain doubts on their application to the Intemet. The Treaty introduces new rules but more importantly it clarifies the scope and limitations of existing rights. The Agreed Statements on the WIPO Treaty only contains interpretative rules either of the Treaty or even of the Berne Convention. According to the WIPO Treaty, the right of reproduction as defined in Article 9 of the Berne Convention applies to the digital environment and includes the storage of works in digitized form on an electronic medium. Indeed, to quote from the Agreed Statement Concerning Article 1(4) of the WIPO Copyright Treaty:

"The reproduction right, as set out in Article 9 of the Berne Convention, and the exceptions permitted thereunder, fully apply in the digital environment and in particular to the use of works in digital form. It is understood that the storage of a protected work in digital form in an electronic medium constitutes a reproduction within the meaning of Article 9 of the Berne Convention."

The draft Treaty submitted to the Diplomatic Conference8 was discussed at length and led to the adoption of the above-mentioned Agreed Statement rather than to the inclusion of a specific provision in the Treaty itself. In particular there was considerable debate as to whether temporary or transitory reproduction, irrespective of the form or medium, was included in the right of reproduction.

The right of distribution and the right of rental provided for in Articles 6 and 7 of the Treaty respectively can only apply to physical copies of a work. Indeed the Agreed Statement concerning Articles 6 and 7 of the WIPO Copyright Treaty states that:

"the expressions 'copies' and 'original and copies' refer exclusively to fixed copies which can be put into circulation as tangible objects."

The right of communication is recognised under Article 8 in the following terms:

"... authors of literary and artistic works shall enjoy the exclusive right of authorising 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."

Article 8 gives authors an exclusive right for all communications to the public. Moreover it specifies that the right of communication to the public which it establishes includes the making works available to members of the public in any circumstances, i.e. "they may access these works from a place and at a time individually chosen by them". This choice of words refers to the process followed by anyone who connects to the network and accesses a work within the framework of the public communication of this work, be it from one's home, one's office, one's hotel room or one's friends' house. As the Memorandum of the Basic Proposal submitted to the Diplomatic Conference puts it9: ""What counts is the initial act of making the work available, not the mere provision of server space, communication connections or facilities for the routing of signals.10 The Memorandum goes on to add that interactive on-demand acts of communication fall within the scope of this provision.(11) The provision of physical facilities for enabling or making communication does not in itself amount to communication to the public.(12) However, the documents adopted by the Diplomatic Conference leave certain issues unresolved.

1.2 Unresolved issues

They come from deficiencies in the definitions, from the exceptions and from the legal value of the Agreed Statements.

1.2.1 Insufficiencies in the definitions

The coexistence of the rights of reproduction and of communication generates certain uncertainties. These two rights are exercised simultaneously when a work is made available on the Internet since its communication to users necessitates several acts of reproduction on different sites during transmission on the network.

While the Agreed Statement on Article 1(4) of the Treaty, which deals with the interpretation of Article 9 of the Berne Convention, specifies that the right of reproduction applies to the digital environment and includes the storage of works, the Treaty remains silent on the coexistence of these two rights. Both are involved in the circulation of works on the Intemet: because there is storage, the right of reproduction applies - even several times where the distributor decides to set up several sites in order to facilitate access to the works which it wishes to make available13 and so does the right of communication since this is precisely the point of Article 8. Would the right of reproduction not become accessory to the right of communication and as such might it not in certain legal systems disappear altogether as an autonomous right?

However, the right of reproduction may not necessarily apply equally to all parties. It may be agreed that from the angle of the reproduction right the distributor is responsible for copies which have to be made and stored on electronic media before making works accessible to end users in a network environment, in addition to its responsibility for the act of distribution - governed by the right of communication - which he has undertaken. On the other hand, and users will be responsible for the reproduction of the works on their computers which is a consequence of their own decision and, as the case may be, for any subsequent paper printout.

Yet the distributor will in some way charge users for the sums which he will have paid to the authors. It will have to request the authors' authorisation to reproduce their works on the sites of its choice,15 according to whatever legal regime applies in each case - since one can assume that the sites displaying the works will be located in several different countries. Yet authors will not be permitted to invoke this exclusive right against end users as they will have had no control over the organisation of the distribution of their works to the public.

1.2.2 Exceptions

The Berne Convention provides for a large number of detailed exception in several of its articles.16 The well-known general exception to the right of reproduction in Article 9(2)17 remains popular since the TRIPS Agreement adopts the same criterion under Article 13 and applies it to all the rights set out under the Agreement. Similarly, the WIPO Copyright Treaty adopts the same criteria in Article 10(1) and applies them to the rights it sets out. Article 2 of the Treaty provides that in implementing the Berne Convention States must restrict limitations or exceptions to the three criteria set out under Article 9(2) of the Convention. However, the Agreed Statement complicates the matter regarding exceptions as it does not refer to any specific case but allows contracting States to carry forward and extend "into the digital environment limitations and exceptions in their national legislations" and adds that Article 10 must be interpreted as permitting them ""to devise new exceptions and limitations that are appropriate in the digital network environment".

By referring to the criteria in Article 9(2) of the Berne Convention without giving any specific reference, the Treaty opens a door for new exceptions which certain governments might wish to introduce regarding the use of works in the digital environment. This might apply for example to copies required for technical reasons - known as temporary, transitory or volatile copies - or to hidden copies made by access providers. It is regrettable that the Treaty should not have been more specific by listing the exceptions. New and so far unthought of exceptions may significantly curtail the protection of author's rights granted by the Treaty. The issue of new exceptions justified by the development of new communication technologies may result in a complicated system of differentiation between cases where copyright would apply fully, those which would only justify the payment of a royalty and those which would constitute exceptions.

The three-step test of the Beme Convention, adopted in Stockholm by the 1967 Diplomatic Conference, gives governments great freedom to enact exceptions. The three-step test is an economic criterion, which means that if a government does not consider that a new use prevents the normal exploitation of a work (i.e. known technical or commercial methods) nor causes undue prejudice to the author's legitimate interests, it may decide to add it to the national list of exceptions.18 On the contrary, enumerated exceptions only lead to the record of the non-respect of author's rights (i.e. counterfeiting), not to the establishment of a prejudice in order to decide whether a right has been infringed. Special cases will have to be decided by national legislatures. Since neither the Berne Convention, the TRIPS Agreement nor the WIPO Treaty provide any element to guide in the identification of such cases, national legislatures will have the power to decide whether a situation or a new form of technical exploitation constitutes an exception. Since the two other tests - i.e. where the normal exploitation of a work is prevented and where the author's legitimate interests suffer undue prejudice - are not precisely defined, a legislature or a court win be free to decide to leave new phenomena outside the monopoly of intellectual property rights if it considers that they are exceptions compared with traditional forms of exploitation which would not face competition from these new means of exploitation.

1.2.3 Legal scope of the Agreed Statements

The Treaty is comprised of: (i) a first part from the Preamble to Article 24 and (ii) a second part entitled "Agreed Statements Concerning the WIPO Treaty". The Agreed Statements include definitions which have not been introduced into the body of the Treaty by the Conference. Do the Agreed Statements possess the same legal value as the Treaty and, if not, what then is their legal scope? Article 2(1)(a) of the Vienna Convention on the Law of Treaties, of May 3, 1969, defines a treaty as:

"... an international agreement concluded between States in written form and governed by international law, whether embodies in a single instrument or in two or more related instruments and whatever its particular designation."

According to this definition, the Agreed Statements can easily be regarded as parts of the Treaty.(19) Yet the Agreed Statements were not included by the Diplomatic Conference in the WIPO Treaty and unlike the Treaty - from the Preamble to Article 24 included - they are not subject to ratification by contracting States. Nevertheless they have legal value as an element of interpretation of the Treaty.20 They were adopted21 by the contracting States at the Diplomatic Conference which adopted the Treaty itself. The positions of states, whatever form or expression they take, can make all or some of the Agreed Statements binding and give them the same force as the Treaty itself. Given that the legal scope of the definitions set out in the Agreed Statements is not entirely clear, the advances of the WIPO Copyright Treaty are somewhat inconclusive. The Treaty has introduced new provisions regarding standards with a view to providing solutions to the questions raised by the circulation of works in the digital network environment. This also obliges Contracting States to introduce provisions permitting the implementation of an effective protection of authors' rights through concrete action.

2. Implementation of rights

The WIPO Treaty comprises two categories of measures: (i) those to be taken by the Contracting States to enforce the protection of copyright and (ii) the technical measures and information which must appear in the works.

2.1 Measures concerning the enforcement of rights

Both the TRIPS Agreement and the WIPO Copyright Treaty include provisions aimed at an efficient protection of works. As we mentioned in our introduction, the provisions of the TRIPS Agreement were not enacted specifically to address the issues raised by the dissemination of works in a networked environment.

The TRIPS Agreement provides that the national legislation of the Contracting States must include "enforcement procedures ... to permit effective action against any act of infringement of intellectual property rights covered by this Agreement . . ."22 The TRIPS Agreement includes many detailed provisions on this point which consider civil and administrative procedures (evidence, injunction, damages, disposal of infringing goods and implements used to produce them, provisional measures), the suspension of the release of counterfeiting goods by customs authorities and penal procedures (monetary fines, imprisonment, seizures and confiscation). Article 14 of the WIPO Treaty includes provisions aimed at a similar objective: governments undertake to enact "the measures necessary to ensure the application of this Treaty." Article 14 also provides that "Contracting Parties shall ensure that enforcement procedures are available under their law so as to permit effective action against any act of infringement of rights . . ." including expeditious remedies.23 These provisions give Contracting States great freedom in choosing the means to achieve these goals and are far less detailed than similar provisions of the WIPO Treaty.24

2.2 Technical measures

Because of their ever-increasing importance, technical measures are vital to intellectual property lawyers as an instrument for the protection of rights, in that computerisation offers news means of information, control and protection. The WIPO Copyright Treaty establishes two categories of provisions: (i) under Article 1125 concerning the obligation for Contracting States to provide adequate protection against the circumvention of technical copyright protection measures; (ii) under Article 1226 on the necessity of sanctions against persons who would remove information on the rights management system or who would distribute or sell copies of works without the relevant rights information.

Concerning the obligations on technical measures, the Treaty does not provide for the circumvention of all technical measures but only of those which are implemented by authors or their beneficiaries in connection with their protected rights. Therefore the provisions of the Treaty do not apply where a work is not protected or where certain rights have no protection due to an exemption. Concerning the rights information management, it should be noted that this refers to information permitting the identification of the author, the work and the owner of the rights as well as the terms and conditions of use of the work. Moreover, the Agreed Statement on Article 12 points out that the implementation of the provisions of the WIPO Treaty should not result in "imposing formalities which are not permitted under the Beme Convention or this Treaty, prohibiting the free movement of goods or impeding the enjoyment of rights under this Treaty". 27

These provisions are restricted to the circumvention of, and remedies against, the removal or alteration of information pertaining to the rights management system; they do not concern the technical measures or the information itself - which according to certain views should be compulsory.28 It is the responsibility of the beneficiaries, if they so wish, to implement technical protection measures and to provide information on the rights management system. Only the publishers or the producers of works will be able to decide on these matters. However, authors will be able to oblige them to take appropriate measures. Authors obviously have a vested interest in technical measures and the insertion of electronic information being made compulsory.

A frequently raised issue concerns the possibility for users to circumvent technical measures where authors or their beneficiaries would, by imposing technical measures of control, prevent legitimate uses of works by the public, as is the case for works in the public domain, uses that constitute exceptions or the decompiling of a software program. Furthermore, the threats to privacy which these measures might pose are a sensitive issue. For example the notion of privacy includes the possibility of making copies for family use; therefore technical devices prohibiting copy would be illegal and as such should offer users the option of circumventing them. This would depend on the definition of privacy implied by this issue and also on the justification of the exemption for private copying, i.e. whether private copying is justified on the grounds that it is impossible to control it without infringing users' privacy or whether members of the public have a right to make copies for their private use.

3. Conclusion

International provisions constitute both useful guidelines and rules that have to be observed, based on the Beme Convention. However, being often of a very general nature, they leave a fair amount of leeway to governments. Several issues remain unsolved, particularly as concerns copyright exemptions and the legal scope of the Agreed Statements on the WIPO Treaty. The legal process for the ratification of the Treaty is in progress in several countries, such as the United States of America and within the European Union,29 where the Proposed Directive on the Harmonisation of Certain Aspects of Copyright and Neighbouring Rights in an Information Society, as put forward by the European Parliament and the Commission, aims at harmonising national legislations in the Member States before they ratify the WIPO Treaty.30 It is also to be noted that attempts to reach a balance between authors' and users' interests have resulted in an increasing limitation of authors' exclusive rights. The information society leads to the liberalisation of communication.Borders are disappearing. Restrictions to the circulation of works are not well perceived by the public. In its preamble, the WIPO Copyright Treaty takes stock of the increased interest of users as follows:

"The Contrasting parties ... Recognising the need to maintain a balance between the rights of authors and the larger public interest, particular education, research and access to information, as reflected in the Beme Convention...".

Finally, the development of technical measures calls for further reflection. Certain regulations on data-encryption which are currently enacted may have a significant impact on copyright law.

Notes:

1 The Universal Copyright Convention, signed in Geneva in 1952, does not bring any specific addition to the Berne Convention, the TRIPS Agreement or the WIPO Copyright Treaty. Yet it is important to note that the right of reproduction as defined by the Universal Convention includes "reproduction by any means", which of course may include the reproduction of works in a digitised form (Art. 1Vbis(l)). The provisions regarding exemptions are so general that many exceptions can; be included, such as, e.g. temporary or transitory copies (Art. IVbis(2)).

2 See Art. 1(1) of the Treaty.

3 The TRIPS Agreement had another objective, i.e. the integration of the international standards of intellectual property rights into the GATT agreement - now known as the Marrakesh Agreement by submitting intellectual property rights to the coercive measures of a trade agreement and a procedure for the settlement of conflicts.

4 This paper will only deal whith the questions of copyright.

5 See for example André Frangon, "La Conférence diplomatique sur certaines questions de droit d'auteur et de droits voisins (Genève, 2-20 decembre 1996)" [19971 172 R.I.D.A. 3; Jörg Reinbothe, Maria Martin-Prat, Silke von Lewinski, "The New WIPO Treaties: A First Resume", E.I.P.R. Vol. 9 Issue 4, April 1997, p.171; André Lucas, Droit d'auteur et numérique, (Litec, Paris, 1998).

6 The issue of moral right has been addressed by the Diplomatic Conference held in Geneva in December 1996. Besides, the draft submitted to the approval of the Conference contained no reference to this question. Nevertheless, the moral right, as defined in the Berne Convention (Art. 6bis), is present in the WIPO Copyright Treaty: Art. 1(4) provides that "contracting Parties shall comply with Arts 1 to 21 ... of the Berne Convention", which includes Art. 6bis.

7 A meeting of the WIPO/UNESCO Committee of Experts in 1982 considered that the light of reproduction as set out in the Berne Convention applies to all means of reproduction, including electronic ones which are not perceptible by the senses.

8 The basic proposal read as follows: "The exclusive right accorded to authors of literary or artistic works in Art. 9(1) of the Berne Convention of authorising the reproduction of their works shall include direct and indirect re reproduction of their work whether permanent and temporary, in any manner or form.

9 The version adopted by the Diplomatic Conference is quite close to the phrasing of the Basic Proposal (Art. 10), which read: ". . . authors of literary and artistic works shall enjoy the exclusive right of authorising any communication to the public of their work, including the making available to the public of their works, by wire or wireless means, in such a way that members of the public may access these works from a place and at a time individually chosen by them".

10 Point 10.10.

11 The Memorandum indicates that: "The expression 'communication to the public' of a work means making a work available to the public by any means or process other than by distributing copies. This includes communication by wire or wireless means. The technology used may be analog or digital and it may be based on electromagnetic waves or guided optical beams. The use of the non-restrictive term 'any' in front of the word 'communication in Article 10, and in certain provisions of the Beme Convention, emphasises the breadth of the act of communication."Communication" implies transmission to a public not present in the place where the communication originates. Communication of a work can involve a series of acts of transmission and temporary storage, such incidental storage being a necessary feature of the communication process., If, at any point the stored work is made available to the public, such making available constitutes a further act of communication which requires authorisation. It should be noted that storage falls within the scope of the right of reproduction . . . (point 10.14).

12 See Agreed Statement on Art. 8.

13 It should be noted that the Agreed Statement on Art. 1(4) of the Treaty specifies that: "the reproduction right applies ... to the use of works in digital form". The issue here is not only reproduction but also use a term which covers all forms of exploitation of a work. If the term were taken literally, the scope of Art. 9 of the Berne Convention would be very wide indeed. However, it seems reasonable to assume that "use" in the Agreed Statement on Art. 1(4) of the Treaty refers exclusively to reproduction.

14 This type of copy 's necessary, at least in the random-access memory of a computer, since reproduction of works on screen would otherwise by impossible. Thus one could argue that a reproduction which is rendered necessary by the act of communication should not be subject to copyright. On the other hand, storage in a computer file in order to keep works after disconnection should be subject to an exclusive right of reproduction. Situations may vary depending on the legislation, since the fact that an exclusive right of reproduction cannot be exercised in one case does not imply that there should be no payment of royalty included in a payment of the right of communication.

15 On the condition that these reproductions be considered as subject to an exclusive right or at least be subject to remuneration and not considered as exceptions.

16 Arts 2(4), 2(8) 2bis(2), 9(2), 10(1), 10(2), 10bis(l) and 10bis(2).

17 "It shall be a matter for legislation in the countries of the Union to pemit the reproduction of such works in certain special cases, provided that such reproduction does not conflict with a normal exploitation of the work and does not unreasonably prejudice the legitimate interests of the author".

18 As is the case for music played in an airport, a station or a car park; such uses should not a priori lead to a decrease in the sales of recorded music.

19 When referring to the Vienna Convention, it is worth bearing in mind that it has not yet been ratified by certain important countries (such as France, Germany, Russia and the United States of America) even though it is frequently quoted by representatives of governments which have not ratified it and that only 10 per cent of treaties have been ratified under its terms (see Dominique Carreau, Droit international (Etudes internationals, Pédone, Paris, 1997) para. 254).

20 In the case Rights of Nationals of the United States of America in Morocco (France v. United States, 1952) the International Court of Justice (ICJ) ruled that annexes to a treaty are a part of that treaty, particularly where the annexes have an interpretative value. In the Ambatielos (Greece v. United Kingdom, 1953), the ICJ ruled that the provisions of a Statement are to be treated as interpretative clauses and as such an integral part of the treaty (see Dorninique Carruea, op. cit., para. 146).

21 We believe the adoption was by consensus, except for the second sentence in the Statement on Article 1(4) where the Main Commission 1 had to resort to a vote.

22 TRIPS Agreement, Art. 41.

23TRIPS Agreement, Pt Ill.

24The Basic Proposal was more specific since it contained the same provisions as in Art. 41 to 61 of the TRIPS Agreement.

25 "Contracting Parties shall provide adequate legal protection and effective legal remedies against the circumvention of effective technical measures that are used by authors in connection with the exercise of their rights under this Treaty or the Berne Convention and that restrict acts, in respect of their works, which are not authorised by the authors concerned or pemitted by law".

26 "(1) Contracting Parties shall provide adequate and effective legal remedies against any person knowingly performing any of the following acts knowing, or with respect to civil remedies having reasonable grounds to know, that it will induce, enable, facilitate or conceal an infringement of any right covered by this Treaty or the Beme Convention:
(i) to remove or alter any electronic rights management information without authority,
(ii) to distribute, import for distribution, broadcast or communicate to the public, without authority.
(2) "As used in this Article, 'rights management information' means information which identifies the work, the author of the work, the owner of any right in the work, or information about the terms and conditions of use of the work, and any numbers or codes that represent such information when any of these items of information is attached to a copy of a work or appears in connection with the communication of a work to the public.

27 For further reading, see André Lucas, Droit d'auteur et numérique, pp.259 et seq.

28 At the 1996 Diplomatic Conference, the Groupement européen des sociétés d'auteurs et compositeurs and the Intemational Confederation of Societies of Authors and Composers (CISAC) considerd that the measures put forward in the basic proposal were insufficient and they called for technical measures to be made compulsory.

29 The two WIPO treaties have so far been ratified by very few governments and have not yet come into force.

30 This also concerns the WIPO Performances and Phonograms Treaty