ARCHIVED: Comments of the Digital Future Coalition on the Draft WIPO Treaties

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P.O. BOX 7679
WASHINGTON, D.C. 20004-7679
(202) 628-6048

November 22, 1996

By U.S. and Electronic Mail

Hon. Bruce A. Lehman, Assistant Secretary of Commerce
and Commissioner of Patents & Trademarks
Patent & Trademark Office
United States Department of Commerce
Washington, D.C. 20231

Dear Commissioner Lehman:

The Digital Future Coalition (DFC) -- comprised of 31 member organizations representing major high-technology corporations and non-profit institutions committed to strong and balanced intellectual property policy -- is pleased to respond to the Patent & Trademark Office's Federal Register Notice of October 17, 1996 seeking comment on the three draft treaties tabled for consideration at the three-week Diplomatic Conference to be convened in Geneva by the World Intellectual Property Organization beginning December 2, 1996.

The DFC respectfully requests that the United States delegation to the Diplomatic Conference advocate, and ultimately support, the adoption of only those international agreements which will not prejudice the ability of the Administration and Congress to maintain the unique balance in U.S. copyright law between strong intellectual property protection and the legal authority afforded businesses, schools, libraries, students, journalists and researchers to access and use copyrighted information. The DFC believes that Articles 7, 10, 12 and 13 of the proposed copyright agreement ("New Copyright Treaty") concerning copyright and parallel provisions of the "New Instrument" pertaining to sound recordings, as presently drafted, do not meet that minimal but critical standard as presently written.

Materials analyzing these treaties' present serious shortcomings are enclosed, as are specific amendments to the proposed New Copyright Treaty and New Instrument. If incorporated in substantially the form offered, and were the treaties adopted, these amendments would permit full domestic flexibility to implement the broad new international norms sought by the United States to update copyright law to directly address digital network technology.

Moreover, the DFC strongly opposes any action at the upcoming Diplomatic Conference on the proposal to create broad new "sui generis" protection in addition to copyright to a vaguely defined and potentially enormous class of print and electronic databases. First presented by the United States to WIPO in May of this year, the concepts underlying the pending database treaty have received no Congressional hearing or broad Administration review. Action on such a proposal, particularly given the wholly new addition to American law that its adoption would compel, would be unwise and premature.

The DFC notes that this sentiment is shared by the Presidents of the National Academy of Science, National Academy of Engineering and Institute of Medicine, all of whom jointly conveyed their reservations about proceeding internationally with the proposed database treaty in recent public correspondence with the Secretary of Commerce. Many other national education, library, scientific and scholarly organizations and institutions have raised identical concerns and requested that international action on the database treaty be deferred to permit the issues it raises to be fully discussed domestically.

In the event that significant changes in the present proposals substantially similar to those attached cannot be accepted at December's Diplomatic Conference, the DFC urges you and other members of the United States delegation to consider the advisability of urging the broadest possible discussion of the issues most in controversy (e.g. Articles 7, 10, 12 and/or 13 of the New Copyright Treaty and related New Instrument provisions), but deferring WIPO action upon them. Such limited additional time in the international sphere also may prove useful in forging the consensus necessary in the United States to assure Congressional ratification of any WIPO treaty or treaties ultimately adopted.

Thank you for your consideration of the attached treaty amendments and their accompanying analyses. Members of the DFC are, of course, available to discuss them and others' proposals at your convenience prior to December 2, or in Geneva after that date.


Alliance for Public Technology
American Association of Law Libraries
American Association of Legal Publishers
American Committee for Interoperable Systems
American Council of Learned Societies
American Historical Association
American Library Association
Art Libraries Society of North America
Association of American Geographers
Association of Research Libraries
Committee of Concerned Intellectual Property Educators
Computer & Communications Industry Association
Conference on College Composition and Communication
Consortium of Social Science Associations
Consumer Federation of America
Consumer Project on Technology
Electronic Frontier Foundation
Electronic Privacy Information Center
Home Recording Rights Coalition
Medical Library Association
National Council of Teachers of English
National Education Association
National Humanities Alliance
National Initiative for a Networked Cultural Heritage
National School Boards Association
People for the American Way Action Fund
Society of American Archivists
Special Libraries Association
Visual Resources Association


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.





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.


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.





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.



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.