WIPO Treaties to raise International Copyright Norms provoke Legislative Debate in the United States

Jeffrey P. Cunard, Bruce P. Keller and Albert L. Wells*

The three-week World Intellectual Property Organization ("WIPO") diplomatic conference in Geneva ("WIPO Conference"), which concluded in December 1996, was fraught with uncertainties, grandstanding and genuine substantive disagreements over the proper scope of protection to be afforded intellectual property by international convention. With compromises all around, however, the WIPO Conference produced two new copyright treaties (the "WIPO Treaties").

The two WIPO Treaties are known as the WIPO Copyright Treaty (the "Copyright Treaty") and the WIPO Performances and Phonograms Treaty (the "Phonograms Treaty"). The Copyright Treaty, which concerns "literary and artistic" works, is, in large part, intended to extend the protections of the Berne Convention into the digital domain.(1) The Phonograms Treaty addresses the rights of producers and performers in sound recordings. During Congress' deliberations on whether to ratify the two treaties, including any implementing legislation, a wide rage of issues affecting the specifics of these treaties, as well as other, larger questions of intellectual property policy, will surface. This article provides some of the context for that debate.

Copyright Treaty

Copyright Treaty signatories must agree to embody, in their respective copyright laws, a series of standards, many of which have familiar roots in U.S. copyright law.(2) In particular, the Copyright Treaty provides that the scope of copyright includes expression but excludes ideas, procedures, methods of operation and mathematical concepts. Under the Copyright Treaty, computer programs will be protected as literary works; collective works may be copyrightable based upon the expressive or creative selection or arrangement of the elements, regardless of the copyrightability of those individual elements; authors shall be entitled to the exclusive right of public distribution (subject to the first sale doctrine, as individual nations may elect); photographs must be subject to copyright protection for the life of the author plus fifty years (under Berne, the minimum term for photographs was twenty-five years from creation); and the exclusive rights of authors (under U.S. law, the rights of public distribution, display and performance) must be broad enough to retain for authors the exclusive right of communication to the public of their works, even when members of the public may access the works from different places or at different times.

Rental Rights. Article 7 of the Copyright Treaty extends to the author of a "cinematographic work" (i.e., motion picture) or computer program, or a musical work embodied in a "phonogram" (i.e., phonorecord), the exclusive right of authorizing commercial rental. U.S. law already effectively provides such rights in the cases of computer programs and musical works because, for such works, the author's exclusive right of public distribution is not cut off by the first sale doctrine.(3)

The first sale doctrine of United States law, however, does not prohibit the rental of lawfully purchased copies in which motion pictures are embedded (e.g., videocassettes and DVD discs). For this reason, Article 7 of the Copyright Treaty contains an exception that precludes the need to change U.S. law regarding motion picture rental. Under Article 7, an author's exclusive right of commercial rental need not be established "in the case of cinematographic works, unless such commercial rental has led to widespread copying of such works materially impairing the exclusive right of reproduction." The economic success of the prerecorded videocassette industry in the United States suggests that it would be difficult to demonstrate such material impairment here with respect to a commercial motion picture.

Communication to the Public. Article 8 of the Copyright Treaty establishes a new right, which gives authors the right of "authorizing 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." In addition to incorporating certain aspects of settled U.S. law as international norms, one of the purposes of establishing this right is to make it clear that the posting of copyrighted material on a bulletin board or on a Web site that can be accessed by the public is a violation of copyright, unless authorized. Whether such posting already is within the scope of the rights of reproduction and public distribution, display and performance under U.S. law is not clear and has been subject to considerable debate.

Accordingly, online and Internet service providers, bulletin board operators, Web masters, librarians and various other groups have registered concerns that Article 8 creates potential additional liability for them arising from essentially passive activity of which they have no knowledge. For this and other reasons, they are likely to pursue legislation in the U.S. that would limit their copyright liability for such activities.

Technological Measures. Another provision of the Copyright Treaty - Article 11 - specifically addresses the digital domain. It requires member states to provide "adequate legal protection and effective legal remedies against the circumvention of effective technological measures" that authors may use to protect their copyrights and "that restrict acts, in respect of their works, which are not authorized by the authors concerned or permitted by law." This was a very controversial provision, as evidenced by what occurred last year in Congress when H.R. 2441 and S. 1284 were introduced.(4)

These bills would have created a new Section 1201 of the U.S. Copyright Act which would have prohibited the manufacture or distribution of any device, or provision of any service, with the primary purpose or effect of circumventing copyright protection technology. Manufacturers of consumer electronics and computing devices expressed strong concerns that the sweep of such provisions would have adverse ramifications for the present and future design of otherwise perfectly legal devices that are capable of making reproductions; they argued that Section 1201 would overrule the contributory infringement standard applicable to manufacturers of devices under the Supreme Court's holding in Sony Corp. v. Universal City Studios, Inc.(5) Content owners, however, were (and are) keen to outlaw "black box" devices that defeat, bypass or circumvent technologies that they now and may, in the future, use to protect their works from unauthorized access and copying. The failure to reach a consensus among interested parties was one of the reasons these bills never got out of the House subcommittee.

To avoid a similar impasse at the WIPO Conference, in the weeks before the conference, groups representing both sides of the anti-circumvention issue strived to craft consensus language. Article 11 reflects that effort. It applies only to "effective" technological measures; most importantly, it applies only to unauthorized circumventing "acts," and not to products that may have the effect or purpose of circumventing such measures.

If the United States ratifies the Copyright Treaty, as seems certain, one question very much open for debate will be whether the text of Article 11 requires additional implementing provisions. It certainly can be argued that various provisions of U.S. law, singly and in combination, satisfy the requirements that Article 11 imposes on member states. First, as a general matter, copyright owners could pursue contributory liability actions against individuals who offer services to circumvent copy-protection systems; in addition, and going beyond the strict requirements of Article 11, contributory infringement actions also could be launched against manufacturers that facilitate copyright violations by producing circumvention devices. Furthermore, certain provisions of U.S. copyright law already prohibit certain specified circumvention devices.(6)

The Clinton Administration is expected in the coming months to introduce implementing legislation with respect to the obligations of the United States under Article 11. The recently released Administration report, "The Framework for Global Electronic Commerce," acknowledges that the Administration is drafting implementing legislation, without providing details of the drafts under consideration. Unless content owners, manufacturers of reproduction devices and the Administration can come to some collective agreement on statutory language that is agreeable to all - as was done with respect to Article 11 and will be necessary to avoid a revival of the dispute that arose before the last Congress-- debates over any such implementing legislation seem a virtual certainty.

Obligations Concerning Rights Management Information. Article 12 addresses the modification or removal of electronic rights management information, which is defined as "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 . . . ." Member states are required to provide "adequate and effective legal remedies" against persons who know, or who have reasonable grounds to know, that such acts will "induce, facilitate or conceal an infringement" of a copyright right, or who distribute, broadcast or communicate to the public, without authority, works or copies of works "knowing" that such information has been removed or altered without authority.

Article 12 was patterned, in large part, on a proposal in H.R. 2441 and S. 1284 to add a new Section 1202 to U.S. law, which would have protected the integrity of copyright management information. Article 12 conforms closely to proposed Section 1202 by providing that member states need only proscribe those unauthorized distributions, broadcasts or communications of works with altered or deleted copyright management information that are conducted knowingly.

Arguments can be made that no implementing legislation is required in the United States to satisfy Article 12. Removal of copyright management information, or the distribution of works without such information, could, for example, create customer confusion or be intentionally misleading. As such, the Lanham Act, and various state laws, might already effectively prohibit the acts that are barred by Article 12. In addition, where, in the words of Article 12, acts of removal or modification are knowingly and specifically undertaken to "enable, facilitate or conceal an infringement," at a minimum it would seem as if a contributory copyright infringement action might be brought against the perpetrator.

Nevertheless, prior Administration statements make it seem unlikely that it will conclude that present law fully satisfies the Article 12 requirement. Accordingly, discussions over the types of copyright management information that would be subject to any U.S. law, and the activities that would be prohibited, probably will resurface in the current Congress.

Phonograms Treaty

As is true of the Copyright Treaty, many of the provisions of the Phonograms Treaty incorporate existing U.S. copyright norms into the international copyright arena. The Phonograms Treaty, in particular, provides for "national treatment" - that is, protection by each member state of the rights of nationals of other member states on the same terms and to the same degree as their own nationals; for performers' and producers' exclusive rights of reproduction, public distribution (including distribution by commercial rental, subject to certain exceptions), and "communication to the public" (the last embodied in U.S. law in the Digital Performance Right in Sound Recordings Act of 1995 ("DPR Act")).(7)

Transmissions of Performances. Several of the controversies surrounding the Phonograms Treaty parallel those raised by the Copyright Treaty. In particular, the provisions of the Copyright Treaty described above respecting the right of communication to the public (Article 8), regarding anti-circumvention devices (Article 11), and regarding copyright management information (Article 12) all are found in the Phonograms Treaty.(8)

Article 15 is more distinctive. It requires members to provide for broad rights of both broadcasting and communication to the public for sound recordings. To the extent that Article 15 encompasses downloading, U.S. law already applies to such practices, and no further changes in U.S. law to implement Article 15 would be required.

Nonetheless, Article 15(1) also contemplates that owners of copyrights in sound recordings have an unfettered right of public performance. Controversial for years in the United States, and considered and rejected in all but a narrow set of circumstances in connection with the DPR Act, according such copyright owners a performance right is not likely in the United States anytime soon. An exception in Article 15(3), however, will spare the U.S. from a need to change its laws to satisfy the Article 15 norms by permitting member states to limit their compliance with Article 15 to certain performances only (such as interactive digital performances, in the case of the United States) upon notice to WIPO.

Ratifying the WIPO Treaties

There appears to be a substantial domestic consensus that the final language of the WIPO Treaties advances the interests of protecting valuable U.S.-originated intellectual property worldwide. As a political matter, of course, both the Administration and Congress will want to ratify, if for no reason other than to demonstrate that the United States is second to none in its commitment to protecting intellectual property internationally. Failure to ratify the WIPO Treaties would be a blow to U.S. leadership in the area and to global efforts to combat copyright piracy. Thus, the momentum for ratification will be great.

The WIPO Treaties are not self-executing, however, which raises the difficult issue of whether current U.S. law already comports with the requirements of the WIPO Treaties, so that implementing legislation that changes U.S. copyright law is not required. If it is determined that the United States might fall short of, or actually conflict with, the standards required by the WIPO Treaties, then further legislative action will be seen as necessary to bring U.S. law into conformity.

Regardless of the precise context of the legislative debate, it is likely that despite the benefits of the treaty, this Congress will see a replay of last year's debates over proposed Sections 1201 and 1202 of the Copyright Act - with the result that congressional action on both ratification and implementing legislation may be stalled until the various interests believe that they have been accommodated in compromise statutory language.

Intensely focused discussions are likely because the stakeholders perceive opportunity for legislative movement on pivotal issues in the development of copyright in the digital domain. Some of these issues are directly raised by the WIPO Treaties: anti-circumvention provisions, copyright management information, and the copyright status of posting content on a Web Site, as discussed above. Others were debated at length during the WIPO Conference -- and in our domestic debate -- but were not expressly addressed in the Treaties: the status of ephemeral digital copies as reproductions, and exemption from copyright liability for online and Internet service providers. In any event, this Congressional session promises to offer interesting and active debate on the future of copyright.

*Jeffrey P. Cunard is a partner in the Washington, D.C. office of Debevoise & Plimpton, and Bruce P. Keller is a partner and Albert L. Wells an associate in the New York office of Debevoise & Plimpton. Mr. Cunard practices in the area of intellectual property and telecommunications. Mr. Keller heads the firm's intellectual property litigation practice group, of which Mr. Wells is a member.

  1. By the "digital domain," we mean all new digitized media, including the Internet, online services, CD-ROMs, DVDs and other mass media, whether packaged or transmission, characterized by the digital nature of their contents.
  2. The Copyright Treaty may only be joined by nations that have already accepted the Berne norms.
  3. See 17 U.S.C. § 109(b).
  4. See H.R. 2441 and S. 1284, 104th Cong., 1st Sess § 4.
  5. 464 U.S. 417 (1984).
  6. See 17 U.S.C. § 1002(c) (1994); 47 U.S.C. §605(e)(4)(1988).
  7. 109 Stat. 336(1995)(codified at 17 U.S.C. §114).
  8. Compare Copyright Treaty Article 8 with Phonograms Treaty Articles 10 and 14; Copyright Treaty Article 11 with Phonograms Treaty Article 18; and Copyright Treaty Article 12 with Phonograms Treaty Article 19.

2001 The Federalist Society