international intellectual property law summer 2009 multilateral agreements: copyrights (berne...

International Intellectual Property Law

Summer 2009

Multilateral Agreements: Copyrights (Berne Convention, WTO TRIPS Agreement, Rome Convention, Geneva Convention, Brussels

Satellite Convention

Class 7: June 23, 2009

Prof. Fischer

Review: Copyright as an IP form

• Last class we primarily emphasized the difference between copyright law in civil law and common law systems, using the U.S. and Poland as examples

• Copyright protects creative expression• Focused on history, conditions for protectability,

rights of the copyright owner, duration, infringement/remedies for infringement, exceptions to copyright protection

Berne Convention

• This multilateral treaty was concluded in 1886 in Berne, Switzerland and came into force in December, 1887.

• The text has been revised and amended several times.

• The current version (and the one ratified by the U.S., is the 1971 Paris version)

Berne: Part of a Complex System of Agreements

• Copyright Treaties: Berne Convention and Universal Copyright Convention

• Neighboring Rights Treaties: Rome Convention for the Protection of Performers, Producers of Phonograms and Broadcasting Organizations; Geneva Convention for the Protection of Producers of Phonograms Against Unauthorized Duplication of Their Phonograms

• Berne has been supplemented by TRIPS• WIPO Performances and Phonograms Treaty and

WIPO Copyright Treaty, both dating after TRIPS.

Berne Convention: What We Will Study

• A. History, including reasons for Convention, and original and current signatories

• B. What works are protected under Berne• C. 4 important principles of Berne• D. Some Questions Berne Leaves Unanswered• E. The issue of whether Berne Harms the

Development of Developing Countries?• F. Why Berne is Significant• G. The Relationship of Berne to the Universal

Copyright Convention of 1952

Berne Convention: What We Will Study

• H. Enforcement under Berne• I. Why does Berne not provide for copyright

rights for performers, producers of sound recordings, and broadcasts

A. History: 19th Century Copyright Law before Berne

• Previous multilateral treaties were very limited, as were previous bilateral treaties

• National copyright laws generally centered on protecting national authors

• Great variation in national laws as to:• 1. Types of works that law protected• 2. Term of protection• 3. Rights that were protected• 4. Exceptions and limitations to protected rights• 5. Formalities that were required

A. History: Why was the Berne Convention concluded?

A. History: Why was the Berne Convention concluded?

• Piracy of literary works was a major problem

• France and the U.K. were particular victims

• Piracy was widespread in the U.S., Germany, Holland, and Belgium

• Bilateral/multilateral treaties were too limited

• Berne represents an attempt to raise level of copyright protection through international cooperation

A. History: Berne Convention Players

• 3 groups of countries negotiated Berne. The first group wanted copyright harmonization through codified universal laws. The second group wanted national indendence and reciprocity.The third group were somewhere in the middle

• Which group prevailed?

A. History: Berne Convention Players

• 3 groups of countries negotiated Berne. The first group wanted copyright harmonization through codified universal laws. The second group wanted national independence and reciprocity.The third group were somewhere in the middle. Which group prevailed? The third group.

• Was that a good thing? Why or why not?

A. History: Original Berne Signatories (1886)

• 10 countries: Germany, Belgium, Spain, France, U.K., Haiti, Liberia, Switzerland, Tunesia

• Not U.S.• Note that as Professor Sam Ricketsen has

noted, the Berne Convention had a “broad geographical sweep” due to the many colonial possessions of the signatories

A. History: WIPO

• Berne Treaty is administered by the World Intellectual Property Organization.

• The Berne Union has an Assembly and an Executive Committee. Every country member of the Union that has adhered to the administrative and final provisions of Stockholm Act is a member of the Assembly. Executive Committee’s 30 members are elected from the Union members.

A. History: Berne Signatories

• Is Poland a signatory to the Berne Convention?

• When did the U.S. ratify Berne? Why did it take so long?

• How many countries are currently signatories?

• How would you find out if a particular country was a signatory?

A. History: Berne Signatories• Is Poland a signatory to the Berne Convention? Yes. Poland

became a party in 1920. • When did the U.S. ratify Berne? March 1989. Why did it take so

long? Different approach to copyright in civil law (natural law approach led to strong author’s rights) and common law countries (utilitarian approach – copyright as limited monopoly designed to provide incentive to create). US especially worried about Art. 6bis (moral rights) and Art. 5(2) requiring elimination of formalities for copyright protection

• How many countries are currently signatories? 164 states as of April 2009

• How would you find out if a particular country was a signatory? Go onto WIPO’s website at http://www.wipo.org

A. History: Berne Members 2009 include

• As of April 15, 2009:• Argentina, Brazil, Canada, China, Colombia,

Dominican Republic, Egypt, Hungary, India, Indonesia, Israel, Italy, Jamaica, Lebanon, Malaysia, New Zealand, Pakistan, Paraguay, Philippines, Poland, Korea, Russian Federation, Slovakia, South Africa, Thailand, Ukraine, Uruguay, U.K., USA

• Not Taiwan

B. Works Protected Under Berne

• Art. 2: “Literary and artistic works”• These are defined as “every production in the

literary, scientific and artistic domain”• Is a book protected?• Is a photograph protected?• Is a translation protected?• A sound recording?• A compilation?• Dispute over whether computer programs are

protected (now protected under TRIPS)

B. Works Protected Under Berne: Idea/Expression Dichotomy

• Does the Berne Convention bar protection for ideas? Not categorically, but Art. 2(8) bars protection for “the news of the day or to miscellaneous facts having the character of mere items of press information”.

C. Important Berne Principles

• 1. National Treatment

• 2. Automatic Protection

• 3. Minimum Terms of Protection Independent of Protection in Country of Origin

• 4. Minimum Exclusive Rights

C. Principle 1: National Treatment

• What provision of the Berne Convention provides for national treatment?

• What is national treatment?

C. Principle 1: National Treatment

• What provision of the Berne Convention provides for national treatment? Art. 5(1)

• What is national treatment? An author’s rights must be protected in signatory country A as if that author were a national of country A. France and U.S. are both signatories of the Berne Convention; therefore, works by U.S. authors are protected by French copyright law in France.

• Note that art. 2(6) provides that protection operates for benefit of author and successors in title (other than for cinematographic works and some others)

C. Principle 1: National Treatment

• What is Reciprocity and how does it differ from National Treatment?

C. Principle 1: National Treatment – Points of

Attachment-

• Berne only requires protection of creative works originating in other countries if there is a “point of attachment” linking the work to a country that has ratified the treaty, such as if the author is a national of a Berne Union country or if work first published in Berne Union country. (Art. 3(1))

• See also Art. 4

C. Principle 2: Automatic Protection

• Art. 5(2) provides that copyright cannot be subject to formalities like copyright notice or registration. That is why the U.S. has to make copyright notice optional when ratifying the Berne Convention.

• Do you think that sections 411 and 412 of the U.S. Copyright Act complies with Berne? These sections require registration as a precondition to suing for infringement (for foreign and domestic works), and bars certain remedies for infringement that occurs before registration of works first published in U.S. Why or why not?

C. Principle 2: Automatic Protection

• Art. 5(2) does not say anything about requiring formalities before certain remedies for copyright infringement can be awarded under national law.

C. Principle 2: Automatic Protection

• Would it violate Art. 5(2) of Berne for a Berne Union member to pass legislation that requires copyright owners to register a claim to ownership every 20 years as a condition to preserving their rights?

C. Principle 3: Minimum Terms of Protection

• Berne sets a minimum duration for copyright protection. What is it? Which provision provides for it?

C. Principle 3: Minimum Terms of Protection

• Berne sets a minimum duration for copyright protection. What is this minimum? Which provision provides for it? The minimum term of copyright protection is life + 50 years, as provided by Art. 7(1). There are special terms for anonymous or pseudonymous works, cinematographic works, photographic works, and works of applied art. For joint authors, you calculate from the death of last surviving author. Art. 7bis.

• The U.S. term of copyright protection is now life + 70 years to track the 1993 EC Term of Copyright Protection Directive (Council Dir 93/98 Oct. 29, 1983 OJ L 29/09). Does this violate Berne? What provision do you rely on in support of your answer?

C. Principle 3: Minimum Terms of Protection

• Under Berne, signatory nations are permitted to provide for longer copyright durations if they choose, so life + 70 is OK. See Art. 7(6).

• Why would a country enact a law surpassing the Berne Convention’s minimum standards? Doesn’t that just harm its own authors?

• Rule of the shorter term (art. 7(8))

C. Principle 4: Minimum Exclusive Rights

• Under Berne, a nation is required to protect a number of economic and moral rights:

• 1. Translation (Art. 8)• 2. Reproduction (Art. 9(1))• 3. Public Performance (Arts. 11(1)/11bis/11ter))• 4. Adaption (Art. 12, Art. 14)• 5. Paternity (Art. 6bis(1))• 6. Integrity (Art. 6bis2))• In general, different versions of Berne increased

protection for rights of copyright owner

C. Principle 4: Minimum Exclusive Rights

• S. 106 of U.S. Copyright Act has the following rights; which are included in Berne?

• (1) to reproduce the . . . work in copies or phonorecords• (2) to prepare derivative works based upon the

copyrighted work• (3) to distribute copies or phonorecords of the

copyrighted work to the public by sale or other transfer of ownership or by rental, lease or lending

• Cont’d on next slide

C. Principle 4: Minimum Exclusive Rights

• (4) in the case of literary, musical, dramatic and choreographic works, pantomimes and motion pictures and other audiovisual works, to perform the copyrighted work publicly.

• (5) in the case of literary, musical, dramatic, and choreographic works, pantomime and pictorial, graphic, or sculptural works . . . to display the copyrighed work publicly

• (6) in the case of sound recordings, to perform the copyrighted work publicly by means of a digital audio transmission

Civil Law approach to moral rights

• Angelica Huston v. Turner Entertainment Co. [1992] (French Cour de Cassation) [C p. 446]

US: VARA (1990)

• Does U.S. copyright law comply with Berne with respect to moral rights protection?

• See Carter v. Helmsley Spear (2d Cir. 1995) [C p. 455]

C. Principle 4: Minimum Exclusive Rights

• Some argue that U.S. law does not appear to comply with the Berne requirement that paternity and integrity rights last for as long as other copyright rights (Art. 6bis(2)) because these terminate with the death of the author under U.S. law.

• However it can be argued in response that other federal and state law such as trademark, unfair competition, defamation, fills the gap.

• Also see Art 6bis(2) which seems to permit at least some of these rights terminating at the author’s death.

C. Principle 4: Minimum Exclusive Rights

• U.S. law limits the moral rights of paternity and integrity to certain specified works of visual art in section 106A of the Copyright Act of 1976 (VARA). Does this comply with Berne? Why or why not?

• Does the US provision that these rights are waivable in 106A(e) violate the Berne Convention?

C. Principle 4: Minimum Exclusive Rights - The Fair Use

Problem• The U.S. defense of fair use is effectively a

limitation on the exclusive rights of the copyright owner

S. 107: 4 fair use factors

• 1. Purpose and character of use

• 2. Nature of the copyrighted work

• 3. Amount and substantiality of what was used

• 4. Effect on the market for the copyrighted work

C. Principle 4: Minimum Exclusive Rights - The Fair Use

Problem• Does the U.S. defense of fair use codified in

section 107 of the Copyright Act of 1976 comply with Berne’s exemptions provisions? Why or why not?

• See Art. 9(2), 10 and 10bis and 11bis(3)

C. 3 Arguments that Fair Use Violates Art. 9

• Indeterminacy of the fair use doctrine violates the Berne Convention.

• Fair use doctrine is overly broad and violates the Berne Convention standard for permissible exceptions to authors' rights.

C. Principle 4: Minimum Exclusive Rights: Authorship, Work Made for

Hire, and Moral Rights• Only “authors” have the minimum exclusive rights

under the Berne Convention. See Article 2(6)• Does the U.S. “work made for hire” doctrine

comply with the Berne Convention? Why or why not?

• Does the exception for works made for hire in VARA (section 106A of the Copyright Act of 1976) violate the Berne Convention? See Carter v. Helmsley Spear (2d Cir. 1955)

D. SOME QUESTIONS BERNE DOES NOT APPEAR TO

ANSWER• How “original” must a work be to gain

copyright protection

• How must artistry must a work have to be a “literary or artistic work”

• How much protection must be given to useful works like computer software

D. Berne is not an international copyright law

• As Ruth G. Okedjii has written, “The idea of a uniform international code dealing with all aspects of copyright protection was explicitly rejected by the Berne Convention negotiators in favor of a limited agreement which set forth basic principles and minimum standards of protection.”

E. Berne and Developing Countries

• The original signatories to Berne were mainly European countries, many of whom had extensive colonial possessions.

• Question: Does the Berne regime unfairly discriminate against developing countries?

E. Berne and Developing Countries

• Stockholm Convention (1967) – protocol drafted by developing countries that provided for compulsory licenses for translations and broadcasts, shorter terms of protection. Never ratified. Also developing countries want less protection for computer software because they are concerned about becoming players in global market place

E. Berne and Developing Countries

• Developing Country Appendix to Berne Convention Paris Act (1971)

• Attempts to address concerns of developing countries re: gaining access to protected works through a regime of compulsory licenses such as translation license or reproduction license

• Onerous conditions for these licenses• Applied to rights of translation and right of

reproduction

F. Why Berne Is Significant

• Berne is significant because it is the first significant multilateral copyright convention.

G. The Universal Copyright Convention (1952)

• Another copyright treaty that was negotiated by countries, such as the US, some Latin American countries, the former Soviet Union, and some African and Asian nations, that found Berne Convention’s minimum standards incompatible with their domestic law.

• Universal Copyright Convention was negotiated starting in 1947 and was signed by 36 states in 1952.

G. UCC: Important Differences With Berne

• To accommodate the U.S., UCC permitted its members to impose formalities as a condition of copyright protection and measure copyright term from date of publication rather than author’s death.

G. Berne “Safeguard Clause”• Prohibited countries from gaining protection under the UCC

if they withdrew from Berne after 1951.• Developing countries felt very cheated by this Safeguard

Clause since they were brought into the Berne Convention by colonial rulers.

• 1971 Berne Appendix amended the Safeguard Clause to suspend the operation of the clause for developing countries that declared themselves as such for that purpose

• Otherwise, Berne and UCC are independent from each other• If there is a conflict between Berne & UCC, Berne governs.

H. Enforcement Under Berne

• No specific provisions though a dispute could be referred to the International Court of Justice under art. 33

• Can be directly applied by courts in countries where treaties are self-executing

• Otherwise court will apply implementing legislation

• Terms of Convention can be taken into account by a national court even though there is implementing legislation

I. Berne and Rights for Performers, Producers of Sound Recordings,

BroadcastersWhy did Berne not provide for copyright

rights for

- Producers of Sound Recordings?

- Broadcasters?

- Performers?

Pressure for these rights (producers of sound recordings, performers,

broadcasters)

Rome Convention for the Protection of Performers, Producers of Phonograms and Broacasting

Organizations

• Neighboring rights (Austrian Law of 1936): consistent with common law approach?

• 1961• Now 88 members• Extended performers rights; also gave rights

to producers of phonorecords and broadcasters

• Is Poland a member? What about the U.S?

B. Rome Convention: Principles

• 1. National Treatment

• 2. Minimum Terms of Protection

• 3. Minimum Exclusive Rights

• [note no automatic protection: members can provide for formalities, but certain restrictions on these for phonograms: see art. 11]

B. Rome Convention: Principle 1

• National Treatment

B. Rome Convention: Principle 2: Minimum Terms of Protection

B. Rome Convention Principle 2: Minimum Rights

• What rights does the Rome Convention give to performers? (art. 7)

• What about producers of phonograms (art. 10)?

• What about broadcasters? (art. 13)

Art.12

• What does art. 12 provide, and why is it controversial?

• Note that members can opt out of this provision

Limitations

• What limitations are permitted by the Rome Convention on the minimum rights required?

Rome Convention: revisions needed?

• Moral rights for performers?• Eliminate possibility of reservations to art. 12?• Should performers rights and/or those of

producers of sound recordings and broadcasters be added to Berne Convention?

• Note: these issues highlight difference between civil law and common law approach to copyright

Geneva Convention (1971)

• Geneva Convention for the Protection of Producers of Phonograms Against Unauthorized Duplication of Their Phonograms

• 77 contracting parties, including US but not Poland

Brussels Convention (1974)

• Brussels Convention Relating to the Distribution of Programme-Carrying Signals Transmitted by Satellite

• Deals with problem of signal theft of satellite transmissions

• Currently 33 contracting parties, including U.S. but not Poland

• No minimum term for protection of the signal

Exceptions to Brussels Convention

• Exceptions are permitted under national law for brief excerpts and quotations, especially of news programs, to the extent justified by the informatory purpose.

• In addition, developing countries may make exceptions for the purpose of teaching or scientific research.

TRIPS Agreement

• Today we will explore some of the substantive protection provisions of WTO TRIPS for copyrights.

• Basic theme of the day: Although TRIPS strengthens and clarifies the Berne and Convention to some extent, it leaves many unresolved issues for copyrights

TRIPS and COPYRIGHTABLE SUBJECT MATTER

• What subject matter is protectable under TRIPS?

• Photographs? Translations? Computer programs? Compilations? Sound recordings? Performances? Broadcasts?

• Which were protectable under Berne?• Does TRIPS state the idea/expression

dichotomy?

TRIPS and COPYRIGHTABLE SUBJECT MATTER

• Art. 9 of TRIPS obligates members to comply with Arts. 1-21 of the Paris Act of the Berne Convention

• Therefore, they must protect all forms of “literary and artistic works” and not just the examples listed in Art. 2 of the Convention but also “every production in the literary, scientific, and artistic domain. This is a “floor” not a ceiling so it is possible to add other categories of copyrightable works like sound recordings.

• Art. 9(2): States idea-expression dichotomy.

NEW ADDITIONS TO COPYRIGHATABLE SUBJECT

MATTER UNDER TRIPS

• Art. 10: Adds “computer programs, whether in source or object code”; protectable as “literary works” (something the US really wanted!)

• Also compilations of data, so long as they “by reason of the selection or arrangement of their contents constitute intellectual creations shall be protected as such”. Art. 10(2) Thus no requirement for sui generis protection for unprotected facts.

TRIPS and COPYRIGHT TERM

• What is the minimum duration of protection under TRIPS?

TRIPS and COPYRIGHT TERM

• Under Art. 12: Works where term is calculated on a basis other than life of a natural person must have a copyright term no less than 50 years from the year of publication or creation. Photographs and applied art are excluded (25 year term per Berne).

• Art. 14: minimum of 50 years protection for performers and phonogram producers, measured from year in which performance/fixation occurred as well as minimum 20 year term for broadcasters (compare Rome: 20 year term)

EU/US Extended Term

• Does the CTEA term extension to life plus 70 in the U.S. (also the term in the EU) violate TRIPS?

TRIPS and MINIMUM ECONOMIC RIGHTS

• Members are obligated to give authors and phonogram producers a qualified exclusive right to authorize/prohibit commercial public rental of computer programs, cinematographic works, and phonograms. Art. 11, 14(4).

TRIPS and MINIMUM ECONOMIC RIGHTS

• Under Art. 14, Members must grant certain rights to performers, phonogram producer and broadcasting organizations.

• Performers must have possibility of preventing unauthorized fixation of unfixed performances in phonorecords and the reproduction of such fixation, unauthorized communication to public of live performances, and unauthorized broadcasting by wireless means of live performances. (art. 14.1)

TRIPS and MINIMUM ECONOMIC RIGHTS

• Under Art. 14, Members must grant certain rights to performers, phonogram producer and broadcasting organizations.

• Performers must have possibility of preventing unauthorized fixation of unfixed performances in phonorecords and the reproduction of such fixation, unauthorized communication to public of live performances, and unauthorized broadcasting by wireless means of live performances. (art. 14.1)

TRIPS and MINIMUM ECONOMIC RIGHTS

• “Phonogram producers shall enjoy the right to authorize or prohibit the direct or indirect reproduction of their phonograms.” art. 14(2)

• Broadcasting organizations must receive the right to prohibit unauthorized fixation, reproduction of fixations, rebroadcasting by wireless means, and communication to public of TV broadcasts. Art. 14(3)

TRIPS and MORAL RIGHTS

• What does Art. 9(1) provide?

TRIPS and LIMITATIONS

• Must be confined to “certain special cases which do not conflict with the normal exploitation of the work and do not unreasonably prejudice the legitimate interests of the right holder.” art. 13

• This is similar to the 3 step formula of Art. 9(2) of the Berne Convention.

• How does Art. 13 of TRIPS interact with Art. 9(2) of Berne? Note concerns of developing countries.

TRIPS and LIMITATIONS

• So if a Member tried to impose a compulsory licensing scheme for rental, reproduction or public performance of copyrighted works, including works distributed on the Internet, could this scheme include no royalty payments to the copyright owner?

TRIPS and LIMITATIONS

• Professor Pamela Samuelson has written: “The 1994 Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) arguably limits national authority to create exceptions and limitations that interfere with the ability of rightsholders to control exploitations of their works. Some representatives of the copyright industries have already expressed a desire to use this agreement to challenge fair use and other exceptions in national copyright laws.”

Three-step Test

• Only one case to date has actually required an interpretation of the test

• See WTO Panel decision: United States – Section 110(5) of the Copyright Act (2000) [C p. 459]

WHERE TRIPS IS SILENT

• Issue of who qualifies to be an author and original owner of rights in a literary or artistic work

• How agreements transferring copyrights should be construed.

EFFECTIVENESS OF TRIPS

• Are the minimum standards for the protection of copyrights in TRIPS effective in an age of globalization?

• Why or why not?