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 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
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.
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
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
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.
- 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.
- The Copyright Treaty may only be joined by
nations that have already accepted the Berne norms.
- See 17 U.S.C. § 109(b).
- See H.R. 2441 and S. 1284, 104th Cong., 1st
Sess § 4.
- 464 U.S. 417 (1984).
- See 17 U.S.C. § 1002(c) (1994); 47 U.S.C.
- 109 Stat. 336(1995)(codified at 17 U.S.C. §114).
- 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.