Proposals Pending Before WIPO will Require the Adoption of New Law in the United States
Article 13 of the Proposed Protocol
Article 13 of the proposed "Protocol" to the Berne Convention has no counterpart in current law. Moreover, it would nullify established Supreme Court precedent holding that the manufacturer of a device which has "substantial noninfringing uses" may not be held liable for the possibly unlawful actions of the device's user. Article 13 also would require the adoption of legislation in the United States specifically rejected by Congress this year for lack of domestic consensus, and would similarly compel Protocol signatory nations to adopt legal measures to prohibit the manufacture, distribution and importation of devices, and the provision of services, which "circumvent" copy protection technology.
As written, Article 13 of the proposed Protocol would impose liability on the manufacturer, distributor and importer of any device capable of circumventing a technological copy protection systems. This liability would be imposed, however, even if the device at issue had many useful and lawful purposes in high demand by business and the public. It also would be imposed if the manufacturer had reason to know that just one out of a hundred devices he produced would be used to make a single unauthorized copy. Thus, if a manufacturer developed a device that enabled libraries to "circumvent" copy-protection systems for purposes of making lawful archival copies, the manufacturer would be liable if a court ruled that it should have expected that at least one librarian would use the device for this purpose.
Proposed "Sui Generis" Protection of Databases
The proposed Treaty on Databases ("Database Treaty") would create an entirely new legal regime for the protection of databases. Because these new rights would be separate from, and in addition to, copyright and other intellectual property rights, they would require an entirely new legal regime to be adopted and implemented under U.S. law.
The scope of the new rights being proposed is extremely broad, and the impact of these new rights on competition is not yet understood. Whereas databases must have required at least a minimal amount of creativity to be protected under copyright, no originality or creativity would be required to receive the proposed new "sui generis" form of protection. The proposed regime thus would provide protection merely for the"sweat of the brow," a concept that the Supreme Court has expressly rejected in the copyright context. The proposed treaty also fails to define how the proposed new rights will relate to other rights, raising the possibility that works may be eligible for protection under more than one legal regime, such as copyright, in addition to the new rights granted under the Database Treaty.
Moreover, the language of the proposed treaty is sufficiently sweeping that it would for the first time in the United States include many types of works, such as: Internet domain names, computer programs and "look up tables" critical to the interoperability of computer software and systems, as well as raw scientific and data critical to researchers and public safety officials.
Pending WIPO Proposals will Prejudice Congress' Future Flexibility to Make New and Balanced Copyright and Information Policy
Articles 7, 10 and 12 of the proposed Protocol could discourage construction and expansion of the global information infrastructure by increasing the potential liability of both commercial and non-commercial on-line service providers, and by bringing the legality of basic practices -- such as browsing the Internet -- into question. Specifically:
Article 7 extends the right of reproduction to all temporary copies, including the ephemeral images captured in a computer's random access memory (RAM).
Article 10 of the Protocol creates a new exclusive "right of communication to the public."
Article 12 permits signatory nations to make certain exceptions to the exclusive rights provided for under the proposed Protocol. It permits such exceptions, however, "only in certain special cases that do not conflict with the normal exploitation of the work and do not unreasonably prejudice the legitimate interests of the author."
In sum, the three Articles of the proposed Protocol (and their counterparts in the "New Instrument") would: inhibit browsing on the World Wide Web; discourage construction of the global telecommunications network and its "access ramps;" and seriously jeopardize the ability of individual nations to craft exemptions from liability for desirable business and educational purposes.
Browsing Inhibited -- Article 7 of the proposed Protocol (and a comparable provision of the proposed "New Instrument" concerning sound recordings) would require signatories to treat all temporary copies made throughout the computer and telecommunications networks as "reproductions" that could violate the exclusive rights of the copyright holder. Such potential illegality of many temporary copies could impact such common practices as browsing the World Wide Web. While paragraph (2) of proposed Article 7 would permit individual countries to fashion exceptions to the reproduction right "where the reproduction is of a transient or incidental nature," an affirmative act of legislation would be required to exempt "browsing" activity.
Further, the Article 9(2) "three-part test" to the "ephemeral reproduction" right provided for in Article 7 would not apply. Article 7(2) narrowly specifies the only circumstances in which national legislation could permissibly limit application of the right recognized in Article 7(1). Thus, any broader exemption of "ephemeral" copying from liability could be viewed as inconsistent with the structure of that Article. In any event, any general or categorical exemption from liability provided for a given class of "ephemeral" copies (e.g., RAM and cache copies made in the course of Internet transmissions) could run afoul of the basic formulation of Article 9(2), which permits national law to limit the application of copyright only "in certain special cases."
Network Construction and Access Provision Discouraged
The new exclusive right of "communication to the public" created by the proposed Protocol appears to be broader than either the distribution right or public performance right now granted by the U.S. Copyright Act. Creation of the new right thus could substantially increase the exposure of on-line service providers -- including educational institutions and libraries that operate computer systems -- to copyright infringement liability.
This new right, in combination with Article 7's treatment of RAM copies as reproductions, significantly increases the likelihood that an online service provider will be found directly liable for a subscriber's copyright infringing actions. Such liability could be imposed even if the provider had no knowledge of those actions and was technologically unable (or legally barred) from auditing the content of system transmissions. Moreover, the inherently networked nature of the global information infrastructure means that an enterprise wishing to do business or research globally necessarily would be required to comply with the single most restrictive set of national laws, and potentially to litigate conflicts around the world under widely disparate regulatory regimes.
National Legislative Flexibility Jeopardized
By limiting permissible national exceptions to the Protocol to "only certain special cases which do not conflict with the normal exploitation of the work and do not unreasonably prejudice the legitimate interests of the author," Article 12 circumscribes the flexibility that it purportedly provides. As a direct consequence, the rights of the United States and other nations to legally enable entrepreneurs, established businesses, educators and other members of the public to access and use information in ways that are presently lawful, and in ways that they may elect to authorize in the future, will be foreclosed. It is these exceptions in American law, particularly Fair Use, which have nurtured new high-tech industries, facilitated the interoperability of networks like the Internet, empowered "distance education," and fostered innumerable literary and other creative endeavors.
Assuring Continued National Flexibility to Impliment Rights and Craft Limitations is Central to WIPO and Berne Convention History and Process
Advocates of the three treaty proposals which will comprise the Agenda of WIPO's December Diplomatic Conference have raised several arguments against amending the Protocol, New Instrument and Database Treaty or deferring action upon any part of them. These advocates' primary historical and process arguments, however, fail to acknowledge both the history of the Berne process, and that the nature of the new technological and economic realities which has produced the need to update international law also demands innovative thinking in crafting new norms. These arguments are stated and addressed below:
"The Berne Convention always has been concerned exclusively with commercial and economic, rather than cultural, interests."
From the early drafts leading up to the first Act of the Convention in 1886, "cultural" concerns have figured prominently in the architecture of Berne. For example, restrictions on the reproduction right for certain newspaper and magazine articles, incorporated into Article 7 of the 1886 Act, were justified, according to Prof. Sam Ricketson's authoritative history of the Convention, in terms of "the public interest in the dissemination of information and news on an international level."
"The Berne Convention always has been concerned exclusively with establishing minimum guaranteed rights, not with 'harmonization.'"
The drive for a "universal" law of copyright has been one of the themes driving the Berne process from the very beginnings of the Berne Union. Noted WIPO scholar, Sam Ricketson has observed that "the universalists have been responsible for the steady increase in measures on which general agreement has been reached, so much so that the Berne Convention can now be regarded as a limited kind of international copyright code."
"The Berne Convention has always been concerned exclusively with defining authors' rights, rather than limitations on those rights, which have been left to national law."
Examples such as Article 7 of the 1886 Act (referred to above) and Article 10 of the current 1971 Act (which begins "It shall be permissible to make quotations....") combine to demonstrate that culturally-oriented mandatory restrictions on rights of copyright owners are a traditional part of the Berne Convention. However, successive Acts of the Convention have included far fewer mandatory restrictions than mandatory specifications of rights. In the past, member states of the Berne Union have been granted considerable latitude in defining the content of restrictions under national law.
Today the situation is different. Current efforts to supplement the Berne Convention with new treaties have created a new dynamic which requires both that sound law-making traditions be respected and that new approaches to the development of international norms be found.
Consensus Traditionally Has Preceded International Action
In the past, action by the members of the Berne Convention have tended to lag, rather than to lead, the development of domestic copyright law in the major copyright-producing countries. By the time a new specification of rights has been proposed for inclusion in the Convention, the content of the exceptions and restrictions associated with it have been relatively well understood. Today, by contrast, the "digital agenda" in Geneva implicates issues that no nation has addressed fully in domestic law, suggesting that special caution be exercised.
Previous Diplomatic Conferences called to revise Berne Convention have been subject to a rule of "consensus" under which no new treaty provisions could be approved without unanimous consent. This principle, which has operated as a significant check on the premature development of controversial new rights, will not apply at this December's Diplomatic Convention. Therefore, the need for other checking mechanisms, such as limiting language in the treaty provisions themselves, is greater than ever before.
Global Technology Requires Globally-Based Norms
Prior Acts of the Berne Convention have been designed to apply to a world in which markets in information were defined in terms of national boundaries. In such a world, it was appropriate -- and even necessary -- to leave much of the work of defining rights (including the specification of limitations) to national governments. However, where networked digital information technology is concerned, the world is -- effectively -- a single market. In today's world, variations among national laws have the potential to seriously impede information commerce. Just as this new circumstance calls for uniform definitions of rights, it also demands consistency in the treatment of limitations and exceptions.
The Proposed Treaties Will Not Assure Congress' Felibility to Strike the Critical Domestic Policy Balance
Proponents of the pending treaty texts have argued that, if the United States should choose to qualify the new restrictions on the use of copyrighted information provided for in the Protocol and New Instrument, Congress may do so under the general language relating to exceptions and limitations likely to be included in a new treaty. This analysis is deeply flawed.
The general formula of Article 9(2) of the 1971 Act of the Berne Convention (referred to in Article 12 of the "Basic Proposal" for the "Berne Protocol") apparently would have no application to national laws designed to implement the "anti-circumvention" provisions of Article 13. Nor would the Article 9(2) "three-part test" apply to the "ephemeral reproduction" right provided for in Article 7. Article 7(2) narrowly specifies the only circumstances in which national legislation could permissibly limit application of the right recognized in Article 7(1).
Thus, any broader exemption of "ephemeral" copying from liability would appear to be inconsistent with the structure of that Article. In any event, any general or categorical exemption from liability provided for a given class of "ephemeral" copies (e.g., RAM and cache copies made in the course of Internet transmissions) would seem to run afoul of the basic formulation of Article 9(2), which permits national law to limit the application of copyright only "in certain special cases."
By the same token, the Article 9(2) test, which Article 12 of the "Berne Protocol" would make the exclusive standard against which all national law exceptions and limitations are measured, would seem to be a uncertain basis for any generally applicable exemption in favor of educational uses of digital texts (including "distance education" uses) that Congress might subsequently wish to incorporate into domestic law. Under the proposed "Berne Protocol," such exemptions could no longer be justified independently under the alternative "fair practice" standard for education uses, articulated in Article 10(2) of the 1971 Act of Berne.
Likewise, adoption of the "Berne Protocol" in its present form would compromise Congress' ability to achieve domestic balance with respect to the issues of interoperability and service provider liability. Not only would legislative "carve-outs" to deal with these issues be difficult to justify as applicable to "special cases" only, but they also would be vulnerable to criticism where the other prongs of the Article 9(2) test are concerned. Specifically, under the Article 9(2) formulation, exceptions are permitted only where the authorized use "does not conflict with a normal exploitation of the work and does not unreasonably prejudice the legitimate interests of the author."
The formulation contained in Article 9(2) was originally devised as a limit on the reproduction right in the "print-on-paper" information environment. How it should be applied to digital transmissions is, to say the least, uncertain. Copyright owners are likely to press for a restrictive understanding of the application of the Article 9(2) standard in cyberspace. Inevitably, this difficult and contentious issue will be discussed at the upcoming WIPO Diplomatic Conference.
To assure that the results of this discussion do not prejudice the development of the United States' copyright law, Article 12 and the other articles of the proposed "Berne Protocol" should be revised to assure that they provide Congress with the latitude required to achieve an appropriate balance here at home. If such revisions cannot be achieved, the best way to protect our own legislative process will be to insist that no Protocol be finalized until a broad consensus in the United States has been embodied in domestic legislation.