On December 20, 1996, the World Intellectual Property Organization (WIPO) Diplomatic Conference on Certain Copyright and Neighbouring Rights Questions (the "WIPO Conference") adopted two Treaties, namely the WIPO Copyright Treaty and the WIPO Performances and Phonograms Treaty. These Treaties amend the 110 year-old Berne Convention for the Protection of Literary and Artistic Works and represent the first significant step toward updating the international protection for intellectual property required to facilitate our entry into the digital world of the 21st century. There are no deadlines when countries ("Contracting Parties") may join.
On February 26, 1997, the Departments of Canadian Heritage and Industry held a briefing session in Toronto regarding the WIPO Conference where members of the Canadian delegation provided some insight into the negotiation process that lead to the final wording of some of the provisions.
The purpose of the briefing session was to provide some background to the negotiations and an overview of the main provisions of the final versions of the Treaties. It was not related to Canada potentially joining either Treaty. Such a decision would need to be subject to a separate consultation process. Canadian domestic law would need to be brought into compliance before Canada could join either Treaty.
The Preambles to the Treaties provide, in part, that they were concluded in recognition of (i) 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 new developments, (ii) the profound impact of the development and convergence of information and communication technologies, and (iii) the need to maintain a balance between the rights of authors, performers and producers and that of the larger public interest. An additional unstated objective is likely the need to provide more consistent treatment of rights in digital works in an age where content placed on the Internet can be distributed throughout the world.
Both Treaties include provisions which seek to address some of the new challenges arising from digital technology, particularly the Internet. Such provisions include an exclusive "making available" right, whose language covers on-demand interactive transmissions on the Internet, and obligating Contracting Parties to provide legal protection against tampering with technological protection measures and rights management information. However, these Treaties are unlikely to put an end to ongoing uncertainty regarding many legal issues related to the conduct of business over the Internet.
The WIPO Copyright Treaty clarifies that copyright protection extends to expressions and not ideas, and that computer programs are protected as literary works, regardless of their mode or form of their expression. Compilations which by reason of their selection or arrangement of their contents constitute intellectual creations are protected as such, although the data itself is not otherwise protected.
The scope of protection afforded to computer programs and databases under this Treaty is consistent with Article 2 of the Berne Convention and on par with the relevant provisions of the recent agreement on trade-related aspects of intellectual property rights ("TRIPS Agreement").
Authors of literary and artistic works are provided with an exclusive right of distribution to the public by making available to the public of the original and copies of their works through sale or other transfer of ownership. The final wording was a compromise that provides Contacting Parties with flexibility in respect to importation rights.
Authors of computer programs, cinematographic works and works embodied in phonograms, subject to certain exceptions, are provided with an exclusive right of authorizing commercial rental to the public. However, these exceptions are broad. For instance, one of these exceptions, applicable to computer programs, applies where the program itself is not the essential object of the rental. The final wording is identical to that provided in TRIPs.
The European Union already provides rental rights and would have preferred a mandatory rental right. However, at the WIPO Conference, the US was a vocal opponent of any such expansion and many developing countries were not willing to go beyond TRIPs. They were granted a five-year grace period under TRIPs and do not wish to move any faster.
The above-mentioned provisions dealing with the copyright protection of computer programs, original databases and the right of rental are handled in a way similar to the TRIPS Agreement. Agreed Statements Concerning the WIPO Copyright Treaty (the "Agreed Copyright Statements") provide that "copies" being subject to the right of distribution and the right of rental refer exclusively to fixed copies that can be put into circulation as tangible objects.
Authors of literary and artistic works are also provided with the exclusive right of authorizing any communications to the public of their works in such a way that members of the public may access these works from a place and time individually chosen by them (i.e., "on-demand" access). This right likely covers even a single communication to a single recipient. It may even cover making a work available even if it is not actually accessed. The scope of who is a member of the public varies from country to country.
The addition of this right to authorize any communications to the public should add further fuel to the current dispute in jurisdictions such as Canada and the US regarding the electronic distribution of print articles by freelance authors. The Agreed Copyright Statements clarify that the mere provision of physical facilities for enabling or making a communication does not in itself amount to communication within the meaning of the WIPO Copyright Treaty.
The WIPO Copyright Treaty also raises the minimum duration of protection for photographic works, which is currently 25 years under the Berne Convention, to the duration of protection of other works under that convention (50 years).
The WIPO Performances and Phonograms Treaty covers the protection of the rights of performers other than their rights in the audiovisual fixations of their performances. The Treaty establishes the moral rights of performers in both unfixed (live) and fixed (recorded) performances. Moral rights comprise an independent right of the performers to be identified as the performers of their performance and to object to any distortion, mutilation or other modification of their performance that would be prejudicial to their reputation.
Although the provision granting moral rights is declaratory in form, Article 21 provides that a Contracting Party may limit the application of the grant of moral rights in Article 5 to performances which occur after the entry into force of the Treaty for that Contracting Party. This ability to limit the application of this right to prospective performances was deemed necessary a Contracting Party may not have recognized moral rights prior at the time of joining the Treaty and therefore its subjects may not have been required to obtain moral right disclaimers in respect of past performances.
Performers are also provided with a number of exclusive rights: (i) authorizing the broadcasting to the public or the fixation of unfixed performances; (ii) reproduction of performances fixed in phonograms; (iii) distribution; (iv) commercial rental; and (vi) making available of fixed performances by wire or wireless means, in such a way that members of the public may access them from a place and at a time individually chosen by them. Producers of phonograms are provided with a number of exclusive rights: (i) reproduction; (ii) distribution; (iii) commercial rental and (iv) making available to the public.
Agreed Statements Concerning the WIPO Performances and Phonograms Treaty provide that the reproduction right, and exceptions permitted, fully apply in the digital environment, in particular to the use of performances and phonograms in digital form. They also clarify that the storage of a protected performance or phonogram in digital form in an electronic medium constitutes a reproduction.
A right to remuneration for the direct or indirect use of phonograms published for commercial purposes for broadcasting or any other communication to the public was provided to both performers and producers of phonograms. The minimum duration of protection afforded to performers and producers corresponds to the duration under the TRIPS Agreement (50 years) rather than under the Rome Convention (20 years).
The rights to be provided under either Treaty were made subject to certain limitations and exceptions that could be contained in a Contracting Party’s national legislation. Such treatment is compatible with the existing concept of fair dealing contained in the Canadian Copyright Act. However, such limitations or exceptions are to be confined to special cases that do not conflict with a normal exploitation of a work and do not unreasonably prejudice the legitimate interests of an author. This later requirement attempts to limit the ability of individual countries to expand their fair dealing type defences to negate effective intellectual property protection. The Agreed Copyright Statements do however provide that these provisions should be understood to permit Contracting Parties to devise new exceptions and limitations that are appropriate to the digital network environment.
Both Treaties make it clear that, irrespective of the exclusive distribution to the public right, they leave it to national legislation to determine the effect of the exhaustion of rights with the first sale of a copy and therefore whether or not parallel importation is allowed.
Contracting Parties are obligated under both Treaties to provide adequate legal protection and effective legal remedies against circumvention of technological measures used by authors/creators or performers/producers to protect their work against infringement. Contracting Parties are also obligated to provide adequate and effective legal remedies against knowing interference with electronic rights management information or transmission of a work knowing that rights management information has been tampered with. Legal protection against such tampering with technological means of protecting or identifying protected works is essential for an efficient exercise of rights in a digital world.
The WIPO Conference discussed whether or not specific provisions were needed concerning the application of the right of reproduction to temporary, transient, or incidental copies, but did not adopt any such provision. This was a relief to many parties that had been concerned about that language contained in a draft version of the Treaty which would have required recognizing direct or indirect reproduction, whether permanent or temporary, in any manner or form. Such language would have expressly expanded reproduction rights to cover copies made in the temporary storage facilities (i.e., read-write, random access memory or RAM) of a computer and would likely have inhibited "browsing" on the Internet.
No agreement was reached on the rights of performers in the audiovisual fixations of their performances. However, the WIPO Conference called for further preparatory work with a view to the adoption of a protocol to the WIPO Performances and Phonograms Treaty no later than the end of 1998.
The WIPO Conference did not discuss the draft Treaty on Intellectual Property Rights in Databases (the "Database Treaty"), which would have granted protection for non-original databases, due to lack of time. It adopted a recommendation calling for the convocation of an extraordinary session of the competent WIPO Governing Bodies to decide on further preparatory work in respect of such a Treaty but did not establish any deadlines on its possible adoption.
The Database Treaty is a controversial topic. The draft version would have created a sui generis right in data contained in a database. Such a right would have conflicted with the current level of protection afforded databases in certain countries, such as the United States, where database protection is limited to the selection and arrangement of the compilation. In contrast, the European Union adopted a Databases Directive on March 11, 1996 which grants database owners the right to prohibit unauthorized extractions from and re-utilization of all or a substantial portion of a database.
The WIPO Governing Bodies will be meeting in Geneva on March 20 and 21, 1997 to establish an action plan for these further negotiations in respect of the adoption of a protocol to the WIPO Performances and Phonograms Treaty and the adoption of the Database Treaty.
The WIPO Copyright Treaty and the WIPO Performances and Phonograms Treaty will now be circulated to individual countries for ratification. Both Treaties are to enter into force three months after they have been ratified by 30 countries. No countries appear to have done so yet. It should be noted that ratification is not equivalent to joining. Ratification appears to mean that a country agrees in principle with a Treaty and will not take action inconsistent with the Treaty. However, ratification is not an agreement to abide by the Treaty.
In many countries, including Canada, joining the Treaties would require the enactment of implementation legislation to amend existing intellectual property statutes. Such changes to domestic law must be completed before a country could join either Treaty. It may be noted that the WIPO Copyright Treaty and the WIPO Performances and Phonograms Treaty are free standing treaties and do not require a country joining either Treaty to also join the Berne Convention. However, the WIPO Copyright Treaty incorporates the substantive obligations of the Berne Convention.
The importance of the wording of the provisions in these Treaties may extend beyond which, if any, countries actually join. If history is any guide, if the US likes a provision in one of these Treaties then it may then seek to have that provision incorporated into another trade-related agreement such as TRIPs or a free trade agreement.