WORLD INTELLECTUAL PROPERTY ORGANIZATION COPYRIGHT TREATY: AN OVERVIEW
CRS Report for Congress
World Intellectual Property Organization
Copyright Treaty: An Overview
Updated September 10, 1998
American Law Division
Congressional Research Service ˜ The Library of Congress
The President has requested the advice and consent of the Senate to a new World
Intellectual Property Organization (“WIPO”) Copyright Treaty. S. 2037 and H.R. 2281, as
passed by the Senate and House of Representatives, respectively, implement the changes in
U.S. law to make it compatible with the Treaty. Both bills have been amended , also, to
address broader issues of copyright policy in digital, electronic environments, including
provisions dealing with the copyright liability of online service providers, ephemeral
copying, and fair use. The Treaty updates copyright protection internationally for computer
programs, databases as intellectual creations, and digital communications, including use of
copyrighted works over the worldwide Internet and other computer networks. This report
highlights the main features of the Treaty and summarizes the implementation bills.
World Intellectual Property Organization Copyright Treaty:
The President has requested the advice and consent of the Senate to ratification
by the United States of a new multilateral treaty, the World Intellectual Property
Organization (“WIPO”) Copyright Treaty. This new treaty was adopted by a
Diplomatic Conference, convened in Geneva, Switzerland from December 2-20,
1996. The WIPO Copyright Treaty updates (but does not formally revise) the Berne
Copyright Convention, the primary multilateral copyright treaty which was last
revised at Paris in 1971.
The WIPO Copyright Treaty confirms copyright subject matter protection for
computer programs and those databases which are intellectual creations; clarifies or
extends rights of public distribution, commercial rental, and public communication
(i.e., transmission) when using copyrighted works in digital, electronic
environments, subject to limitations that may be enacted by national law if the
limitations do not conflict with normal marketing of the work and do not
unreasonably prejudice the author’s interest; and requires adequate and effective
remedies to protect against circumvention of anti-copying technologies and knowing
alteration or removal of electronic rights management information.
The new treaty, which is in the nature of a special agreement for current
members of the Berne Convention, culminates an international treaty development
program that began in 1989 with proposals for a “protocol” to update the Berne
S. 1121 and H.R. 2281, the original Clinton Administration bills, would have
amended the Copyright Act to create new protection in two fields only: protection
against circumvention of anti-copying technology, and protection to assure the
integrity of copyright management information systems. Another bill, S. 1146,
addressed additional issues, including online service provider liability, fair use,
ephemeral copying, and distance learning. A fourth bill, H.R. 3048, was similar to
S. 1146 but omitted the online service provider provisions and added provisions on
first sale and shrink-wrap licensing. S. 2037, the successor bill to S. 1121, passed
theSenate on May 14, 1998. H.R. 2281, as amended, passed the House of
Representatives on August 4, 1998.
This report reviews the background of the WIPO Copyright Treaty, summarizes
the main provisions of the Treaty and of the pending implementation bills, and
briefly discusses the main legislative issues concerning implementation. (A separate
report has been prepared concerning a second new treaty — the WIPO Performances
and Phonograms Treaty.)
In troduction ......................................................1
Most Recent Developments..........................................2
Treaty Ratification and Implementation................................6
WIPO Copyright Treaty: Summary....................................8
Nature of Legal Instrument......................................8
Subject Matter Provisions.......................................9
New or Clarified Exclusive Rights...............................10
Reproduction Right: No New Treaty Article....................10
Public Distribution Right...................................11
Public Communication Right................................12
Limitations on Rights..........................................13
Term of Protection for Photographs...............................14
Enforcement of Rights.........................................14
Rights Management Information.................................15
Treaty Implementation Issues.......................................16
Summary of S. 2037 and H.R. 2281..............................18
General Scope of the Bills..................................18
Circumvention of Copyright Protection Systems................18
Integrity of Copyright Management Systems....................20
Online Service Provider Liability —Title II....................20
Computer Maintenance or Repair Exemption — Title III..........22
Miscellaneous Internet Copyright Provisions — Title IV..........23
Collections of Information Antipiracy Act — Title V of H.R. 2281..24
Vessel Hull Design Protection Act — Title VI of H.R. 2281.......24
World Intellectual Property Organization
Copyright Treaty: An Overview
The World Intellectual Property Organization (WIPO)1 convened a diplomatic
conference from December 2-20, 1996 in Geneva, Switzerland to consider three
draft treaties in the field of intellectual property. Delegates representing more than
125 countries participated in the conference, which ultimately adopted two new
intellectual property treaties and postponed consideration of a third draft treaty.
One treaty — the WIPO Copyright Treaty — covers copyright protection for
computer programs, databases as intellectual works, and digital communications,
including transmission of copyrighted works over the world-wide Internet and other
The second treaty — the WIPO Performances and Phonograms Treaty2 —
covers protection for performers of audio works and producers of phonograms (i.e.,
sound recordings), usually under “related” or “neighboring rights” theories of legal
protection. A country like the United States, however, that protects sound recordings
under copyright law, may continue to use copyright law to satisfy the obligations of
the Performances-Phonograms Treaty.
Consideration of the third draft treaty — the Database Treaty — was postponed
to another diplomatic conference both because of insufficient time at the December
1996 Conference and because of objections from many countries that sufficient time
had not been expended in the preparatory work to enable the countries to make an
1The World Intellectual Property Organization is a specialized agency of the United Nations
which administers most of the international treaties in the field of intellectual property
(patents, trademarks, and copyrights). WIPO administers the Berne Convention for the
Protection of Literary and Artistic Works, the major copyright convention. New treaties in
this field are usually negotiated and developed under work programs established by WIPO
members. Usually, following a series of governmental experts meetings, WIPO convenes
a diplomatic conference of states to consider, debate, negotiate, and perhaps approve a new
treaty. This process was followed in developing the new copyright treaty reviewed in this
2This report makes only brief references to the WIPO Performances and Phonograms Treaty.
A separate CRS Report been prepared. See, D. Schrader, World Intellectual Property
Organization Performances and Phonograms Treaty: An Overview, CRS Rep. No. 97-553A
For a .more detailed report on recent developments, see, D. Schrader, WIPO Copyright
Treaty Implementation Legislation: Recent Developments, CRS Rep. No. 98-463 A.
informed decision. The draft Database Treaty would have established sui generis
protection against misappropriation of databases created with substantial effort and
investment, even if the database did not represent an intellectual work within the
meaning of copyright law.
This report highlights the key provisions of the WIPO Copyright Treaty,
summarizes the proposed implementing legislation (S. 2037 and H.R. 2281), and
discusses the main implementation issues that have arisen during Congressional
consideration of the implementing bills.
Most Recent Developments
The President of the United States in July 1997 submitted the WIPO Copyright
Treaty to the Senate for its advice and consent to ratification of the treaty by the
United States, accompanied by recommendations for implementing legislation.
Based on this request, S. 1121 and H.R. 2281 were introduced at the end of July
1997 to make the changes in United States copyright law, which the Clinton
Administration concluded were the minimal changes that must be made in U.S. law
to comply with the new obligations of the Treaty.
S. 1121 and H.R. 2281, as introduced, were virtually identical bills that were
based on the interpretative position that existing U.S. copyright law is consistent with
the obligations of the Treaty except for two substantive matters and technical
amendments concerning primarily the definition of foreign-origin works and their
eligibility for U.S. copyright protection. The bills proposed new legal protection i)
against circumvention of anti-copying technology and ii) against knowing
performance of prohibited acts relating to removal or alteration of copyright
management information (“CMI”).
On September 3, 1997, Senator Ashcroft introduced an alternative WIPO
treaties implementation bill (S. 1146), which, in addition to proposing different
statutory texts concerning anti-circumvention and CMI protection, addresses Internet
copyright issues such as online service provider (“OSP”) liability, fair use, distance
learning, and ephemeral reproduction of copies. H.R. 3048 contained provisions
similar to S. 1146 , except for the omission of provisions dealing with OSP copyright
liability and the inclusion of provisions dealing with the first sale doctrine and
“shrink-wrap” licensing. A separate bill, H.R. 2180, dealt only with OSP liability.
(H.R. 2180 was later replaced by H.R. 3209.)
The Senate Judiciary Committee held hearings on S. 1146 on September 4,3
1997. The House Subcommittee on Court and Intellectual Property held hearings
on H.R. 2281 and H.R. 2180 on September 16 and 17, 1997. The House Judiciary
Committee approved an amended version of H.R. 2281 on April 1, 1998, which
3The Senate Foreign Relations Committee has primary jurisdiction over the consideration
of the treaty itself. The Senate and House Judiciary Committees have primary jurisdiction
over amendments to the copyright law to implement the treaty.
included the core elements of a private sector consensus agreement on OSP liability.4
The Senate Judiciary Committee favorably reported S. 2037 on May 11, 1998 as a
successor to S. 1121.5
The substitute bill, known as the “Digital Millennium Copyright Act of 1998"
(“DMCA”) embodies the private sector agreement on OSP liability, changes in the
technology circumvention and CMI provisions, and several additional amendments.
These amendments: declare that nothing in the anti-circumvention provisions
enlarges or diminishes the existing doctrines of vicarious or contributory
infringement or affects existing defenses such as fair use; clarify that electronics
manufacturers have no obligation to design consumer products to achieve protection
against circumvention; expand the exemption of 17 U.S.C. 112 for ephemeral
copying by broadcasting organizations to apply in digital contexts and to override the
anti-circumvention measures of the copyright owner under certain conditions; expand
the exemption of 17 U.S.C.. 108 for libraries and archives for preservation activities;
protect personal privacy interests on the Internet; provide exemptions from the anti-
circumvention provisions for (i) computer interoperability, (ii) for libraries and
nonprofit educational institutions in making purchasing decisions; and (iii) with
respect to the right to control minors’ access to material on the Internet; except law
enforcement and intelligence activities from the anti-circumvention and CMI
provisions; and direct the Copyright Office to study and report on distance learning
and the liability of nonprofit educational institutions and libraries when they provide
online service to patrons.
The Senate passed S. 2037 by unanimous voice vote on May 14, 1998.
H.R. 2281 (bearing the short title: “WIPO Copyright Treaties Implementation
Act”) was subject to sequential referral to the House Commerce Committee. The
Subcommittee on Telecommunications, Trade, and Consumer Protection held a
hearing on the bill on June 5, 1998. The full Commerce Committee made several
amendments to H.R. 2281 and reported the bill as the “Digital Millennium Copyright
Act of 1998" on July 22, 1998.6 The Commerce Committee version of H.R. 2281
generally included the amendments already embodied in S. 2037 as passed by the
Senate as well as additional amendments especially concerning the issues of
circumvention of technological measures, fair use, and encryption research. The
House of Representatives passed H.R. 2281 with further amendments on August 4,
1998. Among several amendments, the House-passed bill would create an Under
Secretary of Commerce for Intellectual Property Policy; create a new form of
protection for databases that do not qualify for copyright protection (Title V); and
create new design protection limited to boat hulls (Title VI).
4H.R. REP. 105-551 (Part I), 105th Cong. 2d Sess. (1998).
5S. REP. 105-190, 105th Cong. 2d Sess. (1998).
6H. R. REP. 105-551 (Part II), 105th Cong., 2d Sess. (1998).
The WIPO Copyright Treaty originated in a WIPO work program to update the
major international copyright treaty, the Berne Convention for the Protection of
Literary and Artistic Works (“Berne Convention”). This work program started in
1989 and included discussion of the relevant copyright issues by seven Committees
of Experts. This process was known as the “Berne Protocol,” since it was conceived
as a mechanism to modernize the Berne Convention (last revised in 1971) without
engaging in a full “revision” of the Convention. The original purpose was to make
explicit in the Berne Convention that computer programs and databases are protected
as copyright subject matter, and generally to update the Convention concerning use
of copyrighted works in digital, electronic environments.
Initially, the United States sought to have updated protection for sound
recordings included in the “Berne Protocol” process. The European Union and many
other countries strenuously resisted inclusion of sound recording protection since
sound recordings are not copyright subject matter under their laws nor, they insisted,
under the Berne Convention. The majority of countries protect sound recordings
under so-called “neighboring” or “related” rights. The principal neighboring rights
convention is the International Convention for the Protection of Performers,
Producers of Phonograms and Broadcasting Organizations7 (known as the “1961
Rome Convention” or the “Neighboring Rights Convention”).
The European Union’s viewpoint prevailed: the Berne Convention could not
be the vehicle for improved international protection for sound recordings since a
majority of Berne States do not protect sound recordings under copyright law. These
countries were unwilling to change their theoretical basis for protecting sound
recordings or agree to an optional interpretation that sound recordings are copyright
subject matter under the Berne Convention.
Consequently in 1992, a decision was taken to split the Berne Protocol process
into two phases: an update of copyright provisions, and preparation of a possible
“new instrument” (i.e., treaty) on the protection of the rights of performers and8
producers of phonograms. The issues relating to the “new instrument” were
considered by six Committees of Experts.
This dual copyright and “new instrument” work program culminated in adoption
of two new treaties at a WIPO Diplomatic Conference in Geneva, Switzerland which
met from December 2-20, 1996.
7The United States is not a member of the 1961 Rome Convention on neighboring rights.
The United States adheres to a more narrow sound recording treaty — the Convention for
the Protection of Producers of Phonograms against Unauthorized Duplication of their
Phonograms (“Geneva Phonograms Treaty”)(Geneva, 1971). As the title indicates, the
Geneva Phonograms Treaty protects producers against unauthorized commercial piracy of
sound recordings. Members can opt for copyright, related rights, unfair competition,
criminal law, or a sui generis form of protection.
8“Phonograms” is the international term commonly used to refer to protection of sound
The WIPO Copyright Treaty is a special copyright agreement9 updating the
Berne Convention. The second treaty — the WIPO Performances and Phonograms
Treaty — is a new treaty dealing with the protection of performers and producers of
phonograms (i.e., sound recordings). The latter treaty does not specify under which
intellectual property law protection must be extended. Countries are free to legislate
protection under copyright, neighboring rights, or possibly misappropriation
theories of law.
The major policy issues that arose at the 1996 Diplomatic Conference in the
case of the Copyright Treaty were: 1) the liability of online service providers and
other communications entities that provide access to the Internet and 2) the scope of
the reproduction right as applied to copying of data transmitted over the Internet. In
the case of the Performances and Phonograms Treaty, the major policy issue was
whether or not performances in audiovisual works (e.g., motion pictures) would be
covered by the treaty.
The Copyright Treaty issues were resolved by two, separate “agreed statements”
of the participating States: 1) that mere provision of communications-Internet
physical facilities (i.e., wires, telephone lines, modems, and other communications
devices) does not constitute infringement; and 2) that existing Article 9 of the Berne
Convention — the reproduction right — applies to the use of works in digital form
and that storage of a protected work in digital form in an electronic medium
constitutes a reproduction. However, as part of a compromise, the actual article on
the reproduction right was dropped from the Copyright Treaty.
In the case of the Performances and Phonograms Treaty, the audiovisual issue
was resolved by excluding audiovisual performances from the treaty. The possibility
of extending new rights to audiovisual performances will be pursued in future
meetings within the WIPO.
In the copyright field, multilateral treaties or conventions generally establish a
few basic principles concerning the scope of protection, eligibility of foreigners to
enjoy protection, permissible range of limitations and exceptions to the rights
granted, and duration of protection. Copyright treaties, like the Berne Convention
and the new WIPO Copyright Treaty, do not govern protection for nationals of a
member country, do not govern who is liable for any infringement of rights, and, do
not regulate in any detail the enforcement of rights.
An international copyright treaty generally establishes its basic principles in
language that is less explicit than statutory language. This level of generality and
flexibility of language is ordinarily essential in order to achieve an international
consensus among so many countries with widely differing national legal systems.
The details of copyright policy are left to national legislatures.
9Although the WIPO Copyright Treaty was prepared as a special agreement within the
meaning of Article 20 of the Berne Convention rather than a complete revision of the treaty,
the ratification and implementation process in the United States is the same as for any other
treaty. That is, this is not an executive agreement; it is a treaty, which requires approval by
a two-thirds vote of the Senate.
There is usually some flexibility in carrying out even relatively explicit treaty
obligations. Very commonly, the treaty will specifically provide that certain issues
are left entirely to national legislation. If, however, implementing legislation is not
adopted, the treaty obligation may be interpreted by the courts of a country,
depending upon its system of jurisprudence.
International copyright treaties establish general principles or a framework
within which national copyright laws are enacted and enforced. The treaties operate
primarily to harmonize national laws concerning minimum rights and duration of
rights. National copyright laws usually do not have extraterritorial effect.
Suits for copyright violations are ordinarily brought in the place where the
infringement occurs. The court of the country where suit is filed applies its own law,
which includes both the national copyright law and any treaty to which the country
adheres.10 Choice-of-law issues are resolved under the national law, subject, in the
case of the Berne and WIPO Copyright treaties, to the principle of “national
treatment,” i.e., the foreigner enjoys the same rights as a national of the country.
Treaty Ratification and Implementation
United States adherence to one or both of the new WIPO treaties requires Senate
consent to ratification of the treaty by a two-thirds vote.11 In general, ratification of
intellectual property treaties requires implementing legislation to conform United
States domestic law to the treaty obligations. For this reason, the Senate’s consent
to treaty ratification usually occurs after, or concurrently with, enactment of any
necessary implementing legislation.
Unless the existing United States law is consistent with the obligations of an
intellectual property treaty, implementing legislation is necessary to avoid a situation
in which the United States would fail to meet its commitments to international law.
Intellectual property (“IP”) law treaties have not been considered self-executing
under U.S. law, even though the Supremacy Clause of the U.S. Constitution makes
a ratified treaty the “law of the land” if it is later in time than a statute.
IP treaties have not been considered self-executing primarily because they
represent private international law rather than public international law. A copyright
treaty, for example, creates personal property rights in authors (and perhaps other
10Suits alleging infringement of copyright treaty rights by individuals are not brought before
any international forum such as WIPO or the International Court of Justice. Under Article
33 of the Berne Convention, disputes about treaty interpretation between two or more
member countries — not between private litigants — may be brought before the
International Court of Justice, unless one of the countries in the dispute has declared itself
not bound by Article 33(1).
11The WIPO Copyright Treaty will not come into force for any country until 3 months after
the 30th country to accede or ratify has deposited its instruments of accession or ratification
with the Director General of WIPO. Each country follows its own treaty approval process
in accordance with national law.
persons) and fixes civil liability (at least) for persons who infringe those property
rights.12 Those property rights and the specific acts that give rise to liability are
ordinarily detailed in national laws. Any inconsistencies between the provisions of
the copyright treaty and the existing national copyright law are ordinarily resolved
by the time the treaty is ratified in order to satisfy United States international treaty
obligations and to make clear the rights of IP property owners and the potential
liability of IP users.
The exact content of the implementing legislation is subject to public debate and
legislative consideration. This legislative process ordinarily involves an assessment
of the minimum obligations of the treaty; analysis of, and some consensus, on the
settled interpretations of existing U.S. law; and the impact of the treaty and any
changes in U.S. law on various groups in this country. The Congress also may decide
to specify certain policies in the statute, and leave certain details to administrative
regulation or to the case-by-case decisions of the courts.
The WIPO Copyright Treaty has now been forwarded to the Senate for its
advice and consent, and bills were introduced to implement the changes in United
States law deemed necessary by the Administration.13 The original bills have now
been replaced by amended and successor bills (S. 2037 and H.R. 2281), known as the
Digital Millennium Copyright Act of 1998 (DMCA).
As passed by the Senate and House of Representatives, the different versions
of the DMCA address broader copyright policy issues in the digital environment
than originally proposed by the Administration for the WIPO implementation bills.
This outcome (thus far) is the result of efforts by groups, such as the Digital Future
Coalition (representing the electronics industry, library and educational groups, and
certain technology companies), the online service providers, telephone companies,
and other communications entities. These groups have successfully urged Congress
to clarify their liability for Internet uses of copyrighted works, in conjunction with
any ratification of the WIPO treaties.14
Content owners and computer software interests originally urged early
Congressional action on the Copyright Treaty and the implementing legislation by
12As noted earlier, international copyright treaties to date have not specified who is liable,
but they fix the major parameters for assessing liability by specifying rights and permissible
limitations on rights.
13In introducing S. 1121, Senator Hatch, Chairman of the Senate Judiciary Committee,
expressed the view that the United States “must act promptly to ratify and implement the
WIPO treaties in order to demonstrate leadership on international copyright protection, so
that the WIPO treaties can be implemented globally and so that further theft of our nation’s
most valuable creative products may be prevented.” 143 CONG. REC. (Daily sheets) at
S8582 (July 31, 1997).
14Leading Internet Industry Coalition Says Clarifying Legislation Must Accompany Pending
Copyright Treaties “Balanced” Solution Needed or Internet at Risk, PR Newswire, February
26, 1997; Recording, Telco Interests Spar Over Copyright Law, National Journal’s Congress
Daily, April 30, 1997; D. Braun, Copyright Laws Choke Tech Development, Group Warns,
TechWire, August 18, 1997.
adoption of the “minimalist” approach in S. 1121 and H.R. 2281,15 as originally
introduced. They initially argued that online service and access provider liability,
fair use, and other copyright policy issues could be addressed, if necessary, in
separate legislation, apart from the WIPO Treaty implementation bills.
The versions of the DMCA passed by the Senate and House of Representatives,
however, generally embody consensus, compromise agreements on formerly
contentious issues that apparently enjoy the support of both users and owners of
copyrighted material, except with respect to Titles V and VI of H.R. 2281.16
WIPO Copyright Treaty: Summary
Nature of Legal Instrument
The WIPO Copyright Treaty is a new treaty, but it also effectively “updates” the
1971 Paris version of the Berne Convention by providing strong links to the Berne
Convention and by incorporating Berne articles by reference.
For countries already bound by the Berne Convention, the new Copyright Treaty
is in the nature of a special agreement within the meaning of Article 20 of Berne.
Under Article 20, such special agreements are permitted provided they improve
protection for authors of copyrighted works or contain provisions not inconsistent
with Berne obligations. The WIPO Copyright Treaty clearly improves protection for
Non-Berne countries may adhere to the new treaty only by agreeing to comply
with the substantive articles of the 1971 Paris version of Berne, i.e., Articles 1-21 and
the Appendix for Developing Countries. In effect, the WIPO Copyright Treaty
legally binds non-Berne adhering countries to apply the Berne Convention, but such
countries do not become dues-paying, voting members of the Berne Union.
15Senator Hatch, in introducing S. 1121, confirmed that the bill took a “minimalist”
approach and was based on the assumption that “the substantive protections in U.S.
copyright law already meet the standards of the new WIPO treaties, and therefore very few
changes to U.S. law are necessary in order to implement the treaties.” 143 CONG. REC.
(Daily sheets) at S8582 (July 31, 1997).
16Adam Eisgrau, representing the Digital Future Coalition, has confirmed that his
organization has agreed not to oppose the House Commerce Committee’s compromise bill.
provided that the bill is not encumbered by “unrelated” copyright proposals such as
copyright term extension or database protection. As passed by the House, Title V of H.R.
Title VI embodies a boat design protection proposal (which was also passed separately as
H.R. 2696).Legislation: Commerce Panel Clears Digital Copyright Bill With Further
Concessions on Fair Use, 56 BNA PTC JOURNAL 326 (July 23, 1998).
In addition to requiring the adherents to comply with Berne’s substantive
articles, the new treaty explicitly incorporates Berne Articles 2-617 and requires
application of Article 18.18
Subject Matter Provisions
Computer Programs. The treaty makes clear that computer programs are
protected as literary works under Article 2 of the Berne Convention, whatever may
be the mode or form of their expression.19
Databases. The treaty makes clear that the parties must accord copyright
protection to databases that constitute “intellectual creations,” i.e., works in which
the selection or arrangement of the content is the result of intellectual effort. The
compilation of the content (or data) is protected as copyright subject matter, but
17Art. 3 of the WIPO Copyright Treaty. Berne Article 2 specifies the subject matter
protected (“literary and artistic works” in general; specific categories of works are listed).
Berne Article 2bis allows national legislation to exclude protection for political and legal
speeches, and to allow fair use of lectures, addresses and similar works by the press and
media, subject to the right of the author to copyright a collection of these works. Berne
Article 3 establishes the highly important rules concerning eligibility to claim protection
under the Convention, usually based on nationality of the author or place of first publication
(so-called “points of attachment”). Berne Article 4 establishes special eligibility rules for
cinematographic works (usually the place where the author’s production facilities are
headquartered or the author’s habitual residence in a member country) and works of
architecture (the Berne country where the building is located). Berne Article 5 prohibits
formalities on the enjoyment or exercise of rights, establishes that protection must be
extended to eligible foreigners based on the principle of national treatment, and establishes
rules defining the “country of origin” and provides that protection in the “country of origin”
is ordinarily governed by national law (i.e., the rights granted authors by the Berne
Convention do not have to be applied in the country of origin). Berne Article 6 permits
members to retaliate against (i.e., deny protection for works of) nationals of non-members
who fail to provide adequate protection for works of Berne member nationals, even though
the work is first published in a Berne member country and would otherwise be eligible for
protection under the Convention.
18Art. 13 of the WIPO Copyright Treaty. Berne Article 18 essentially requires some form
of retroactive protection (perhaps pursuant to a bilateral agreement) for works that entered
the public domain of a new member before adherence to the Berne Convention, but remain
under copyright in the country of origin.
19Art. 4 of the WIPO Copyright Treaty. The Diplomatic Conference also adopted an “agreed
statement” concerning the relationship between the Treaty, Article 2 of the Berne
Convention, and the provision on computer program protection in the Agreement on Trade-
Related Aspects of Intellectual Property Standards (“TRIPS Agreement”) of the Uruguay
Round of the General Agreement on Tariffs and Trade (1994), signed April 15, 1994. The
statement reads as follows:
“The scope of protection for computer programs under Article 4 of this Treaty,
read with Article 2, is consistent with Article 2 of the Berne Convention and on
a par with the relevant provisions of the TRIPS Agreement.”
protection does not extend to the content itself (unless the content is independently
a work of the intellect, in which case it enjoys a separate copyright).20
New or Clarified Exclusive Rights
Reproduction Right: No New Treaty Article. The most contentious copyright
issue at the WIPO Diplomatic Conference related to a draft article dealing with the21
reproduction right and its application to digital or electronic formats. Internet
service providers, telephone companies, and other telecommunications entities
generally objected to application of the reproduction right to indirect or temporary
copying by computers transferring files on the Internet and other computer networks.
In the end, draft Article 7 on the reproduction right was dropped entirely from the
text of the Copyright Treaty. The Diplomatic Conference, however, adopted an
20Art. 5 of the WIPO Copyright Treaty. The Diplomatic Conference adopted an “agreed
statement” concerning the relationship between the Treaty, Article 2 of the Berne
Convention, and the provision concerning protection of databases in the TRIPS Agreement.
The statement reads as follows:
“The scope of protection for compilations of data (databases) under
Article 5 of this Treaty, read with Article 2, is consistent with
Article 2 of the Berne Convention and on a par with the relevant
provisions of the TRIPS Agreement.”
21In the draft treaty, Article 7 (Scope of the Right of Reproduction) read as follows:
(1) The exclusive right accorded to authors of literary and artistic works in
Article 9(1) of the Berne Convention of authorizing the reproduction of their
works shall include direct and indirect reproduction of their works, whether
permanent or temporary, in any manner or form.
(2) Subject to the provisions of Article 9(2) of the Berne Convention, it shall be
a matter for legislation in Contracting Parties to limit the right of reproduction
in cases where a temporary reproduction has the sole purpose of making the work
perceptible or where the reproduction is of a transient or incidental nature,
provided that such reproduction takes place in the course of use of the work that
is authorized by the author or permitted by law.
“agreed statement” concerning the existing Article 9 of Berne.22 The meaning of this
“agreed statement” is now sharply contested among interests in the United States.
Public Distribution Right. Authors enjoy the exclusive right of authorizing23
the making available to the public of copies of their works. The Treaty permits, but
does not obligate, the parties to limit the public distribution right by the “first sale”24
or “exhaustion of rights” doctrines.
22The “agreed statement” on the reproduction right is tied to Article 1(4) of the Copyright
Treaty, which requires Contracting Parties to “comply with Articles 1 to 21 and the
Appendix of the Berne Convention.” The statement reads as follows:
“The reproduction right, as set out in Article 9 of the Berne Convention, and the
exceptions permitted thereunder, fully apply in the digital environment, in
particular to the use of works in digital form. It is understood that the storage of
a protected work in digital form in an electronic medium constitutes a
reproduction within the meaning of Article 9 of the Berne Convention.”
This “agreed statement” interpretive device is highly unusual in international copyright
treaties. The weight, as well as the meaning, of the statement will be debated in legislative
fora and argued in court cases. Its weight hinges upon the significance of the obligation in
the WIPO Copyright Treaty to “comply with” Articles 1-21 of the Berne Convention, given
that these articles were originally adopted by preceding diplomatic conferences. Article 9
of Berne was adopted by a Diplomatic Conference at Stockholm, Sweden in 1967. The
Stockholm substantive revision never came into force because developed countries rejected
the version of the “Protocol for Developing Countries” attached to it. Article 9 of Berne,
therefore, became effective only when the 1971 Paris revision came into force in 1974.
Ordinarily an interpretation of an existing article by a subsequent diplomatic conference
would be analogous to a comment in a committee report on a statutory provision enacted by
a preceding Congress. The incorporation in the WIPO Copyright Treaty of a general
obligation to “comply with” Articles 1-21 of Berne arguably authenticates the weight of the
“agreed statement,” but does not resolve the issue of the “meaning” of the statement.
23Art. 6(1) of the WIPO Copyright Treaty. The Diplomatic Conference adopted an “agreed
statement” concerning Articles 6 (“right of distribution”) and 7 (“right of rental”)
of the Treaty to confirm that these rights apply to fixed copies embodied in tangible objects.
The statement reads as follows:
“As used in these Articles, the expressions `copies’ and `original and copies,’
being subject to the right of distribution and the right of rental under the said
Articles, refer exclusively to fixed copies that can be put into circulation as
24Art. 6(2) of the WIPO Copyright Treaty. These doctrines are applied usually to limit the
public distribution right to the first sale authorized by the copyright owner (i.e., the
purchaser of a copy of a book may resell or otherwise redistribute the book without
obtaining permission from the copyright owner). See, for example, Section 109 of the U.S.
Copyright Act, title 17 U.S.C. In recent years, commercial rental rights have been granted
to copyright owners of computer programs and sound recordings by qualifying the
application of the first sale doctrine to these works. At the international level, a major issue
exists concerning national, regional, or international “exhaustion” of the public distribution
right (i.e., assuming the exhaustion doctrine is legislated, does the first sale in a given
Rental Right. Authors of computer programs, cinematographic works, and
works embodied in phonograms (which works are determined by national law in the
case of phonograms) enjoy a generally exclusive right of authorizing the commercial
rental of these works.25
There are three exceptions to the exclusive right. (i) In the case of computer
programs, the right does not apply where the program itself is not the essential object
of the commercial rental. (ii) In the case of cinematographic works, the right does
not apply unless commercial rental in a given country has led to widespread
unauthorized reproduction of copies, which materially impairs the right of
reproduction. iii) As a concession to Japan, if a country’s law in effect on April 15,
1994 (the date the GATT Agreement was adopted) provides only a right of equitable
remuneration for rental of works in phonograms, that remuneration right satisfies the
Treaty obligation as long as there is no “material impairment” of the exclusive right
Public Communication Right. Authors enjoy the exclusive right generally of
authorizing any communication to the public by wire or wireless means, if the public
can access the communication at different times and places.26 In effect, this amounts
country exhaust the distribution right only in the country of origin, or does exhaustion also
occur throughout a given region of affiliated states and/or worldwide).
25Art. 7(1) of the WIPO Copyright Treaty. The Diplomatic Conference adopted an “agreed
statement” concerning rental of works in phonograms. If the Contracting Party does not
grant authors rights in phonograms, then there is no obligation under the Copyright Treaty
to grant authors a rental right in phonograms. This statement interprets the provision in
Article 7(1) allowing national law to determine whether or not copyright protection is
accorded to phonograms. It reflects the fact that most countries, unlike the United States,
do not accord copyright protection to sound recordings. Note that these “non-copyright”
States would presumably extend rights to performers and producers of phonograms
analogous to the rights conferred on authors of other works under the copyright law. (These
related rights are covered by the separate Performances and Phonograms Treaty.) The
statement reads as follows:
“It is understood that the obligation under Article 7(1) does not
require a Contracting Party to provide an exclusive right of
commercial rental to authors who, under that Contracting Party’s
law, are not granted rights in respect of phonograms. It is
understood that this obligation is consistent with Article 14(4) of
the TRIPS Agreement.”
26Art. 8 of the WIPO Copyright Treaty. The Diplomatic Conference adopted an “agreed
statement” to the effect that mere provision of physical facilities to enable communications
is not itself an act of communication, i.e., does not infringe the public communication right.
The statement reads as follows:
“It is understood that the mere provision of physical facilities for enabling or
making a communication does not in itself amount to communication within the
meaning of this Treaty of the Berne Convention. It is further understood that
nothing in Article 8 precludes a Contracting Party from applying Article
to a transmission right, which extends to digital online and interactive
communications, as well as analog communications. The reference to individual
choice of reception is intended to exclude broadcasting, a right which remains
governed by the existing Berne Convention. Also, the public communication right
of the new Treaty explicitly cannot prejudice the existing public performance,
broadcasting, and communication rights of authors as set out in Berne Articles
Limitations on Rights
In addition to the limitations to the exclusive rights expressed in the grant of the
right,27 the Copyright Treaty permits two general limitations on the rights.
Article 2 provides that “[c]opyight protection extends to expressions and not to
ideas, procedures, methods of operation or mathematical concepts as such.” This
limitation on the scope of copyright reflects the well-settled principle known as the
“idea-expression dichotomy” — copyright protects against copying of original
expressions but does not inhibit copying of the ideas, concepts, methods, etc.
embodied in the expression of the idea, concept, or method.
Article 10 allows each Contracting Party to legislate limitations or exceptions
to the Treaty rights “in certain special cases that do not conflict with a normal
exploitation of the work and do not unreasonably prejudice the legitimate interests
of the author.”28 This general limitation would presumably justify the limitations and
exceptions of existing United States law and would permit additional limitations or
exceptions that do not conflict with the normal market for a work and do not
“unreasonably” harm the interests of the author.
The Diplomatic Conference also adopted an “agreed statement” concerning
Article 10 that has three main points. Contracting Parties may extend into the digital
environment any existing limitations and exceptions that have been considered
acceptable under the Berne Convention. They may also devise new exceptions and
limitations “that are appropriate in the digital network environment.” Finally, the
Conference expressed an “understanding” that Article 10(2) of the Copyright Treaty
Article 11bis(2) of the Berne Convention permits compulsory licensing of broadcasts and
communications to the public. At one stage of the Berne Protocol process, the WIPO staff
had proposed elimination of this compulsory license option in updating the Berne
Convention. That proposal was abandoned earlier and was not presented to the Diplomatic
27For example, Article 7 applies the rental right only to specified categories of works
(computer programs, cinematographic works, and, if specified in national law, works in
phonograms). Also, the rental right for works in phonograms can be limited to a right of
28This general limitation is drawn almost verbatim from Article 9(2) of the Berne
Convention, which has been part of the Berne Convention only since 1974.
“neither reduces nor extends the scope of applicability of the limitations and
exceptions permitted by the Berne Convention.”
Term of Protection for Photographs
Only one article of the Copyright Treaty deals with duration of protection.
Article 9 obligates a Contracting Party generally to apply the standard term of life of
the author plus 50 years to protection for photographic works.29 This provision
improves the protection accorded photographs under the Berne Convention, which
permits a term as short as 25 years.
Enforcement of Rights
The Berne Copyright Convention traditionally has not included detailed
provisions regarding enforcement of rights.30 The 1996 Diplomatic Conference
considered proposals to include detailed enforcement provisions in the Copyright
Treaty, either as an Annex to the treaty or by reference to the enforcement articles31
of the TRIPS Agreement. In the end, the Diplomatic Conference rejected both
proposals in favor of a brief enforcement article that makes no reference to the
provisions of the TRIPS Agreement.
Article 14 requires Treaty adherents to ensure that enforcement procedures exist
under domestic law to permit “effective action against any act of infringement of
rights covered by this Treaty, including expeditious remedies” to deter future
infringements. Paragraph (1) of Article 14 expresses the general obligation of
Contracting Parties “to undertake to adopt ... the measures necessary to ensure the
application of this Treaty.”
Article 13 of the Copyright Treaty binds adherents to apply the provisions of
Article 18 of the Berne Convention, which, in essence, requires some form of
29The term of copyright for works other than photographs would remain controlled by
Article 7 of the Berne Convention. The standard term is life of the author plus 50 years after
his or her death.
30Article 36 of the Berne Convention obligates its adherents to “undertake to adopt...the
measures necessary to ensure the application” of the Convention and also requires that, at
the time of joining the Convention, a country should have domestic law in place “to give
effect to the provisions” of the Convention. Berne Article 15 establishes a legal
presumption that an author is entitled to bring an infringement action if his or her name
appears on the work. Berne Article 16 provides that infringing copies shall be subject to
seizure in any member country. Except for these articles, the Berne Convention does not
deal with enforcement of rights. Traditionally, the Convention has been concerned with the
grant of rights to authors outside the country in which the work originated. Until the recent
Diplomatic Conference, there had been no serious attempt to include detailed enforcement
provisions in the Berne Convention.
31Articles 41 to 61 of the TRIPS Agreement.
retroactive protection for works that might have fallen into the public domain of the
new member of the Treaty but remain under copyright in the country of origin.
The Copyright Treaty in Article 11 establishes a new kind of legal protection for
authors. Treaty adherents shall provide “adequate and effective legal protection and
effective legal remedies against the circumvention of effective technological
measures” (that is, protection against devices or services that defeat anti-copying
The obligation is expressed in general language and leaves the details of
protection to national law. Strong opposition had been expressed domestically to the
related proposal in S. 1284 and H.R. 4221 of the 104th Congress (the bills that would
have amended the copyright law concerning use of copyrighted works on the Internet
and other computer networks). The electronics industry objected to civil liability for
devices whose “primary purpose or effect” was to circumvent anti-copying systems.
The final version of the Copyright Treaty dropped this controversial language from
Rights Management Information
Pursuant to Article 12, Treaty adherents must provide “adequate and effective
legal remedies against any person knowingly performing” prohibited acts relating to
the removal or alteration of electronic rights management information.
This obligation extends only to rights management information in electronic
form. By implication, the remedies could be criminal or civil.33 In the case of civil
remedies, protection should apply against someone who has reasonable grounds to
know that he or she has engaged in a prohibited act.
“Rights management information” (RMI) means information that identifies the
work, the author, the rightsholder, or discloses terms and conditions concerning use
of the work. The intent is to facilitate widespread use of this information by
rightsholders in order to make licensing of works, or permission to use works, more
readily available to the public.
32The Digital Future Coalition, which includes electonics industry groups, supports the
general obligation expressed in Article 11 of the Copyright Treaty, but strongly opposed the
original provisions of S. 1121 and H.R. 2281 that would have implemented the
technological measures obligation of the Treaty. These groups apparently support the
compromises embodied in the Digital Millennium Copyright Act, as passed by the Senate
and House in different versions.
33S. 1121 and H.R. 2281 create legal protection for copyright management information
(“CMI”) systems in analog or electronic form, and provide criminal as well as civil
remedies. S. 1146 creates only civil remedies and apparently applies only to CMI in
The Diplomatic Conference adopted an “agreed statement” concerning the
interpretation of Article 12. First, the Conference expressed an “understanding” that
the reference to “infringement of any right covered by this Treaty or the Berne
Convention” encompasses both exclusive rights and rights of remuneration. As a
second “understanding,” the Conference stated the Contracting Parties will not use
Article 12 to devise or implement RMI systems that would have the effect of
imposing formalities, prohibiting the free movement of goods, or impeding the
enjoyment of rights under the Treaty.
Any member State of the World Intellectual Property Organization may become
a party to the Copyright Treaty.34 The Treaty enters into force three months after 30
States ratify or accede to it.35 No reservations are permitted, that is, a country must
accept the obligations of the entire treaty and cannot decline to be bound by certain
Article 15 establishes an “Assembly” of the member States that provides some
organizational structure for dealing with future questions about maintenance,
development, or revision37 of the Treaty. The Assembly meets in regular session
once every two years upon convocation by the Director General of WIPO.
The International Bureau of WIPO performs any administrative tasks concerning
Treaty Implementation Issues
In general, the decision whether or not to submit implementing legislation, and
the form of that legislation, depends upon interpretation of existing United States
law.39 The Clinton Administration and most copyright/content owners initially took
34Art. 17 of the Copyright Treaty.
35Art. 20 of the Copyright Treaty.
36Art. 22 of the Copyright Treaty.
37Revision of the Treaty would entail convocation of another diplomatic conference. Art.
38Art. 16 of the Copyright Treaty.
39For example, does electronic transmission in computer networks without further public
distribution or downloading of any copy infringe the existing rights of reproduction (a
“copy” is made automatically by operation of the computer network in order to transmit the
data/work) or public distribution? To what extent are Internet service providers now
contributorily liable for any infringements of their customers? To what extent does the
doctrine of “fair use” apply to excuse certain otherwise infringing activities on the Internet?
the position that United States law — including state law and other federal laws in
addition to the copyright law — is now consistent with the obligations of the Treaty,
except for protection against circumvention of anti-copying systems, protection
against removal or alteration of copyright management information, and technical
amendments concerning the eligibility for works of foreign-origin to claim copyright
in the United States.
Those who held this viewpoint argued that the WIPO Copyright Treaty mainly
clarifies certain rights and subject matter issues, and that, to the extent the Treaty
grants new rights, it tracks changes that have already been legislated in the United
States copyright law. Also, some have argued that the courts could deal with the
few, if any, remaining issues concerning the consistency of U.S. law with the Treaty,
which were not covered by the original implementation bills.
The opposing viewpoint is that United States law relating to use of copyrighted
works on the Internet and other electronic or computer networks is not settled. Some
argued that existing U.S. law is inconsistent with certain Treaty obligations. Others
argued that, at a minimum, legislation would be needed to achieve a higher degree
of certainty on a number of controversial legal issues. Judicial resolution of these
issues, they argued, takes too long, is too fraught with uncertainty for conducting
Internet business, and seldom provides clear, nationwide interpretations of the law.
S. 1146, H.R. 3048, H.R. 2180, and H.R. 3209 essentially responded to the concerns
of those who seek legislative clarification of the U.S. law about copyright liability in
digital, electronic environments.
Finally, it was argued, if the Treaty were ratified without amending United
States law on issues such as the scope of rights and limitations on the rights, the
Treaty language might be cited in court to determine the outcome of cases and in
future legislative fora as a barrier to enactment of certain legislation. The Treaty will
shape the interpretation of U.S. law and future legislative debate; certain positions
and interpretations will arguably be foreclosed by the Treaty, unless the Treaty
content is shaped by U.S. implementing legislation before, or simultaneous with,
In debating the implementing legislation, in addition to the provisions included
in the original versions of S. 1121 and H.R. 2281, the following copyright policy
issues have received legislative consideration: online service provider (OSP)
liability for contributory or vicarious infringements; the scope of the exclusive rights
(especially those relating to reproduction, distribution, “transmission,”40 and “public
40Neither the WIPO Copyright Treaty nor United States copyright law expressly mention
any “transmission” right. The “public communication” right of Article 8 of the Treaty,th
however, essentially creates a transmission right. Domestically, the NII bills of the 104
Congress would have created a transmission right as a subset of the public distribution right.
Some argue that existing United States law can be interpreted to protect against
unauthorized transmissions as a violation of the public distribution right. The opposing
communication”);41 and the limitations on rights (such as fair use and the first sale
Summary of S. 2037 and H.R. 2281
General Scope of the Bills. The implementation bills recommended originally
by the Clinton Administration and supported by most copyright/content owners
assumed that existing United States law is already in compliance with the minimum
obligations of the WIPO Copyright Treaty, except for two articles which require:
i) legal protection against circumvention of anti-copying technology [Article 11];
ii) legal remedies against knowing performance of prohibited acts relating to42
removal or alteration of electronic rights management information [Article 12].
The only other amendments proposed in the original implementation bills were
technical in nature and related primarily to consequential adjustments to those
definitions of the Copyright Act that affect treaty relationships and the eligibility of
foreigners to claim copyright in the United States. Technical amendments are
proposed for the same reasons in three substantive sections of the Copyright Act:
section 104, which governs eligibility of foreign authors to claim copyright under
United States law; section 104A, which concerns restoration of copyright in certain
foreign-origin works; and section 411, which makes copyright registration in the
United States Copyright Office a jurisdictional prerequisite to a suit for copyright
infringement, except for certain works of foreign-origin.
The versions of the Digital Millennium Copyright Act passed by the Senate and
House of Representatives (S. 2037 and H.R. 2281) address many copyright policy
issues concerning use of copyrighted works in digital, electronic environments
beyond the circumvention and copyright management information provisions of the
original implementation bill.
Circumvention of Copyright Protection Systems. The implementation bills
would add a new chapter 12 to the Copyright Act, title 17 U.S.C., creating civil and
criminal liability for circumvention of copyright protection systems.
The proposed section 1201 would prohibit the manufacture, importation,
offering to the public or other trafficking in any technology, product, service, device,
view is that transmissions fall under the public performance right of existing law and that
certain transmissions are exempt because they are not made to the “public.”
41While United States copyright law does not expressly grant a “public communication”
right, the public performance right of U.S. law seems to encompass the rights granted by
Article 8 of the WIPO Copyright Treaty.
42Statement of Senator Hatch, accompanying the introduction of S. 1121. 143 CONG. REC.
(Daily sheets) at S8582 (July 31, 1997).
component or part thereof that is primarily designed or produced to circumvent
an anti-copying system.
Proposed civil penalties include: injunctions, impoundment of infringing
material or equipment, actual damages and any additional profits of the violator or
statutory damages ranging from $200-$2500 per act of circumvention, product, or
performance of service or, at the plaintiff’s option, a total award bertween $2500-
$25,000. For repeated violations within three years, the court may triple the
damages. The court also has the discretion to reduce or remit damages if the violator
proves, and the court finds, he, she, or it was not aware and had no reason to believe
that the law was violated.
Criminal penalties would apply to willful violation of section 1201 for purposes
of commercial advantage or private financial gain.43 First offenders could be fined
up to $500,000 or imprisoned up to 5 years or both. The maximum fine and time in
prison can be doubled for subsequent offenses.
As passed by the Senate and House of Representatives, both bills have been
amended to clarify and narrow the scope of the anti-circumvention requirements.
These amendments: 1) exempt nonprofit libraries, archives, and educational
institutions from liability to the extent they merely access a copyrighted work for the
sole purpose of making a purchase decision or to engage in conduct otherwise
permitted under the Act (such as fair use of the work); 2) exempt lawfully authorized
law enforcement and intelligence activities; 3) permit the circumvention of access
control technologies for the sole purpose of achieving computer software
interoperability (reverse engineering); 4) permit circumvention if necessary to enable
controls on minors’ access to Internet material; 5) require the copyright owner to
permit access by a broadcaster if necessary to make a recording as authorized by the
ephemeral recording exemption of 17 U.S.C. 112; 6) exempt any nonprofit library,
archives, or educational institution from criminal liability; 7) in civil cases, remit
any monetary damages against a nonprofit library, archives, or educational institution
that proves it was not aware and had no reason to believe its acts violates the anti-
circumvention provisions; 8) declare that nothing in the anti-circumvention
provisions enlarges or diminishes the existing doctrines of vicarious or contributory
infringement or affects existing defenses such as fair use; and 9) clarify that
electronics manufacturers have no obligation to design consumer products to achieve
protection against circumvention.
H.R. 2281 has been further amended to: 1) delay for two years the
implementation of the anti-circumvention provisions and require an initial regulatory
review by the Secretary of Commerce, followed by reviews every three years, of the
impact of any technology-protection measures on the application of fair use; 2)
exempt certain encryption research activities; 3) clarify that the bill neither enlarges
nor diminishes Constitutional protection for freedom of speech and press; and 4)
43Since the bills do not contain any definition of “commercial advantage” or “private
financial gain,” it seems likely that the mens rea standard of existing copyright law, as
developed by court decisions, would apply.
mandate two agency reports — the first on the impact of the bill on electronic
commerce, and the second on the impact of anti-circumvention technology on
research and development, including the effect on reverse engineering.
Integrity of Copyright Management Systems. The WIPO Copyright Treaty
implementation bills would add a new section 1202 to the Copyright Act prohibiting44
the knowing provision of false copyright management information (“CMI”).
Specifically, the bills would prohibit the knowing distribution or importation of false
CMI with the intent to induce, enable, facilitate or conceal a copyright infringement.
The intentional removal or alteration of CMI would also be prohibited.
The purpose of these provisions would be to facilitate widespread use of CMI
by rightsholders in order to make licensing of works (or permission to use works)
more readily available to the public. Consistent with the Treaty, the provisions
cannot be legislated as a formality (i.e., a condition of the erercise or enjoyment of
the copyright) or prohibit the free movement of goods.
Both civil and criminal remedies are proposed. These remedies are the same as45
described above for violations of the anti-circumvention provisions.
The new rights to protect the integrity of CMI systems apply both to analog and
digital formats. In this respect, the bills apparently exceed the minimum treaty
obligation since the WIPO Copyright Treaty requires protection only for electronic
rights management information.
As passed by the Senate and House of Representatives, both bills: 1) exempt
lawfully authorized law enforcement and intelligence activities from the CMI
requirements; 2) exempt nonprofit libraries, archives, and educational institutions
from criminal liability; 3) exempt the same nonprofit entities from civil liability if
they prove they had no awareness of a CMI violation or reason to believe they
committed a violation; and 4) limit the liability of broadcasters, cable systems, and
other transmitting organizations depending upon whether CMI compliance is
technically feasible or would create an undue financial hardship in the case of analog
transmissions, and depending in general upon the existence of industry standards in
the case of digital transmissions.
Online Service Provider Liability —Title II. The Administration’s original
implementation bills (S. 1121 and H.R. 2281) did not address the issue of who is
liable for copyright infringement of copyrighted works, as a result of actions by46
customers and users of online service and access providers (OSPs).
44This new right would implement Article 12 of the WIPO Copyright Treaty, although the
treaty uses the terminology “rights management information.”
45The civil remedies would be codified as 17 U.S.C.§1203. The criminal remedies would
be codified as 17 U.S.C.§1204.
46This Report uses “OSP” as short-hand for persons who transmit, route, provide
connections, or otherwise facilitate computer network service and access for clients without
initiating or altering the content of the transmission. Although OSPs are the main
The Ad Hoc Copyright Coalition, consisting of telecommunications companies
and online service providers (“OSPs”), urged enactment of legislation clarifying their
copyright liability in conjunction with any ratification of the WIPO Copyright Treaty.
The Digital Future Coalition (which includes the electronics industry, and library,
educational and telecommunications groups) also urged enactment of domestic
legislation to clarify OSP liability in any legislation to implement the Treaty.
Although the WIPO Copyright Treaty could be implemented without clarifying
OSP liability, that outcome would leave to the courts decisions about OSP liability.
At least one court decision suggests that OSPs may be liable as contributory
infringers for the copyright violations of their customers.47
S. 2037 and H.R. 2281, as passed by the Senate and House of Representatives,
respectively, basically absolve OSPs who transfer information via the Internet,
without having any control of the content, from either direct, vicarious, or
contributory copyright infringement. Upon receiving a notice of infringement that
complies with statutory requirements,48 an OSP is expected expeditiously to remove,
disable or block access, to the extent blocking is technologically feasible and
economically reasonable. Upon receipt of a counter-notice by a provider of the
blocked site, the OSP shall retain the block for 10-14 days but no longer, unless the
copyright owner files suit for copyright infringement. The exemptions from liability
apply both to network service transmissions and to private and real-time
The bills implement a recent consensus agreement on OSP copyright liability
reached by the private sector interests most directly affected by this legislation —
copyright owners, publishers and other disseminators of copyrighted works, online
service providers, telecommunications interests, the electronics industry, and libraries
and educational institutions.
The bills also contains provisions that would: i) absolve OSPs from liability to
the person whose material is blocked or removed from the Internet when the OSP
acts in reliance on a statutory notice of infringement; and ii) establish the principle
that traditional copyright defenses (such as fair use) are unaffected by an OSPs
blockage of, or failure to block, access to alleged infringing material.
Digital Network Communications. An OSP is not liable for monetary relief and
injunctive relief is carefully circumscribed when an OSP acts as a “mere conduit” in
transmitting the copyrighted work. Some of the specific restrictions to qualify for
this exemption are:
beneficiaries of the copyright liability proposals in Title II of the bills, entities other than
OSPs can claim the exemption if they meet the statutory conditions.
47Religious Technology Center v. Netcom, 907 F. Supp. 1361 (N.D. Cal. 1995)
48Among other requirements, the notice must be in writing, describe the infringing material,
give information about its location on the network, identify the copyrighted work, contain
a sworn statement that the notice of infringement is accurate, and be signed physically or
electronically by an authorized person.
!the transmission was initiated by someone other than the OSP;
!the transmission is provided through automatic, technical processes without
selection of content by the OSP;
!the OSP does not select the recipients of the copyrighted material except as an
automatic response to provide service;
!the OSP does not maintain a copy of the copyrighted material that is
accessible to recipients for a longer period than is reasonably necessary for the
!the material is transmitted without changes.
System Caching. An OSP is not liable for monetary relief and injunctive relief
is carefully circumscribed when the copyrighted material is temporarily stored on the
system or network as part of an automatic process without change for use in
refreshing, reloading, or other updating in accordance with accepted industry
standards for data communications.
Information Storage. An OSP is not liable for monetary relief and injunctive
relief is carefully circumscribed when an OSP stores infringing material on its
network at the direction of a system user if the OSP does not have actual knowledge
of the infringement, is not aware of facts or circumstances that make the infringement
apparent, or, upon obtaining such knowledge or awareness, the OSP acts
expeditiously to remove or disable access to the infringing material.
Information Location Tools. The standards applicable to storage of information
apply generally to OSP liability for referring or linking users to an online location
that may contain infringing material., That is, the OSP is not liable without actual
knowledge or awareness of facts that make the infringement apparent, or if the OSP
acts expeditiously to remove or disable access upon obtaining knowledge or
awareness of an infringement.
The bills propose penalties for knowing, material misrepresentations about
infringing activity, absolve OSPs of noncopyright liability if the OSP in good faith
acts to disable or remove allegedly infringing material; provide that copyright owners
who seek the identification of the direct infringer from the OSP must obtain a court
order first; in the narrow cases where injunction relief is available, place limits on the
scope of the relief orders; and make OSPs terminate subscribers who are repeat
infringers but do not require OSPs to monitor the network to seek out infringers.
Computer Maintenance or Repair Exemption — Title III. Both bills
incorporate the free-standing bill (H.R. 72) which overturns a Ninth Circuit49
decision holding that a computer service/repair company infringes the copyright in
a computer program by activating the machine. Under the bills, the loading of the
49MAI Systems Corp. V. Advanced Computer Systems of Michigan, Inc., 992 F. 2d 511 (9th
computer program into a computer’s RAM for service or repair purposes would be
noninfringing, even though this act reproduces a copy of the program.
Miscellaneous Internet Copyright Provisions — Title IV. The bills also
propose several amendments that would update the limitations on the rights of the
copyright owner in the context of digital, electronic uses of copyrighted works.
Although the bills contain some common provisions, other provisions are not
common to both bills.
Library Preservation Copying. The library exemption of 17 U.S.C. §108 would
be expanded by permitting library reproduction of three copies or phonorecords
rather than the one copy of existing law, by deleting the references of existing law
to reproduction only in “facsimile form,” and by adding, as a new justification for
library reproduction, the factor that the work is stored in an obsolete format.
Distance Learning. The Copyright Office would be directed to study and report
back to the Congress concerning proposals to expand the existing instructional
broadcasting exemption of 17 U.S.C. §110(2) to exempt “distance learning” — that
is, performances, displays, or distributions of works by analog or digital
transmission to remote sites for reception of systematic instructional material by
students officially enrolled in the course and by government employees as part of
their official duties. The report would be due 6 months after enactment.
Ephemeral Recordings. Section 112 of the Copyright Act, which deals with
ephemeral recordings of works by primary transmitting organizations (such as
broadcasters) would be expanded in two ways. First, the exemption would apply to
nonsubscription broadcasts of sound recordings in digital formats.
A second amendment of Section 112 relates to the new protection against
circumvention of anti-copying technology. Both bills require that the copyright
owner must make available to the broadcaster the necessary means to make an
ephemeral recording of a technology-protected program, if it is technologically
feasible and economically reasonable to do so. If the copyright owner fails to provide
copying access in a timely manner in accordance with reasonable business
requirements, the broadcaster is not liable for circumventing the anti-copying
Under Secretary of Commerce for Intellectual Property Policy (H.R. 2281 only).
SEC. 401 of H.R. 2281 would create a new position in the Department of Commerce
for an Under Secretary of Commerce for Intellectual Property Policy. This Under
Secretary would be authorized to advise the President on national and certain
international issues relating to patent, trademark, and copyright policy. The Office
would be funded by patent and trademark fees, up to 2 percent of the annual revenues
of the Patent and Trademark Office. SEC. 402 seeks to clarify the authority of this
new Office with the duties of the United States Trade Representative, the Secretary
of State, and the Register of Copyrights.
Assumption of Motion Picture Collective Bargaining Contracts (H.R. 2281
only). With the exception of collective bargaining agreements limited to the public
performance rights, SEC. 416 of H.R. 2281 requires that the transfer of motion
picture rights shall be deemed to incorporate the collective bargaining agreements
negotiated after enactment of the bill, if the transferee knew or had reason to know
about the agreements, or if there is an existing court order against the transferor
which the latter is not able to satisfy within 90 days after the order is issued. If the
transferor of motion picture rights fails to notify the transferee of the contractual
obligations and the transferee becomes bound by a court order to make payments
under the collective bargaining agreement, the transferor is liable to a damages claim
by the transferee.
Fair Use and First Sale Doctrine Clarifications (H.R. 2281 only). SEC. 414 of
H.R. 2281 would amend the fair use doctrine of 17 U.S.C. 107 to clarify its continued
application in digital contexts. SEC. 417 of H.R. 2281 would amend the first sale
doctrine of 17 U.S.C. 109 similarly to clarify its continued application in digital
Collections of Information Antipiracy Act — Title V of H.R. 2281. The
WIPO Copyright Treaty and both implementing bills, S. 2037 and H.R. 2281, would
clarify and perhaps expand protection for databases that are intellectual creations and
qualify for protection as works of authorship under the Copyright Act.
Under the decision of the Supreme Court in Feist Publications v. Rural
Telephone,50 however, databases that lack at least a modest amount of creative
expression are not constitutionally eligible for copyright protection. Database
producers have become concerned about a lack of protection for noncreative
databases. Also, the European Union has issued a directive mandating a new form
of protection for collections of information known as an “extraction right.”
American database producers will be able to enjoy this new form of protection only
if the United States enacts reciprocal legislation that protects European Union
Title V of H.R. 2281 responds to the petition of database producers for
protection of databases that cannot qualify under the copyright law as interpreted by
the Feist case. Essentially, collections of information that result from substantial
investments of time, money, or resources would enjoy a misappropriation-style of
protection against piracy for 15 years. This proposal passed the House of
Representatives as a separate bill (H.R. 2652) over the objections of the library,
educational, and scientific communities in the United States.
Vessel Hull Design Protection Act — Title VI of H.R. 2281. The House-
passed bill incorporates another new form of intellectual property protection not
included in S. 2037 — Title VI of H.R. 2281 embodies the Vessel Hull Design
Protection Act. This Title creates a new , 10 year form of design protection for boat
hulls, which essentially fills in a perceived gap between the design patent and
copyright laws. The overall shape of a boat larger than a rowboat and smaller than
the boat design proposal passed the House of Representatives as a separate bill (H.R.
50499 U.S. 340 (1991).
Bonito Boats v. Thunder Craft Boats,51 which held that state law protection of boat
designs was an unconstitutional interference with the federal patent and copyright
The boat design title would enact a design protection proposal that has been
presented to the Congress over several decades and rejected for various reasons when
the proposal extended to designs of useful articles in general. The pending proposal
is restricted to boat designs simply by a few definitions (e.g., the definition of useful
article). One of the objections to the legislation may be that this is the first
unwelcome (to some) step toward enactment of general design legislation, which has
been controversial in the past. Again, like database protection, design protection
is the subject of a European Union harmonization project. For American designers
to obtain design protection in Europe, the United States would have to enact new
design legislation. When design protection was considered by earlier Congresses,
objections from the insurance industry, consumers, retailers, and others concerned
about the alleged anti-competitive effect of design protection led to the rejection of
the design bill.
Adoption of the WIPO Copyright Treaty by the 1996 Geneva Diplomatic
Conference culminates an international effort to modernize the Berne Copyright
Convention that began 8 years ago as the “Berne Protocol” proposal. Although the
purpose of this Treaty is to update and strengthen the protection afforded to authors
by the Berne Convention, the WIPO Copyright Treaty is a new multilateral treaty.
It will come into force 3 months after 30 countries have deposited their instruments
of accession or ratification with the Director General of WIPO, whether those
countries are members of the Berne Convention or not. The Treaty is subject to
ratification by the United States with the advice and consent of the Senate.
The Copyright Treaty clarifies that computer programs and databases that
constitute “intellectual creations” are literary works. The Diplomatic Conference
adopted an agreed statement confirming that these categories of works are eligible
for copyright protection under Article 2 of the Berne Convention as well as under the
Several exclusive rights of authors are clarified or extended by the Copyright
Treaty, including the rights of public distribution, commercial rental, and public
communication. With respect to the reproduction right, the Copyright Treaty
contains no new text. An agreed statement of the Diplomatic Conference interprets
the reproduction right of Article 9 of the Berne Convention.
Limitations on rights are generally left to national law except that: 1) some
qualifications are expressed in the grant of rights articles; 2) the Treaty embodies the
principle that copyright protects expression and not ideas; and 3) Article 10
specifically permits national law to enact limitations that do not conflict with normal
51489 U.S. 141 (1989).
exploitation of the work and do not unreasonably harm the author’s legitimate
interests. In an agreed statement, the Diplomatic Conference interpreted Article 10
of the Treaty and the Berne Convention as permitting appropriate limitations in
digital, computer network environments.
The Copyright Treaty also includes a general article on enforcement of the treaty
rights, an obligation to provide adequate and effective remedies to prevent the
circumvention of technological measures designed to inhibit copying, and an
obligation to assure adequate and effective remedies against knowing removal or
alteration of electronic rights management information.
The WIPO Copyright Treaty was submitted to the Senate for its consideration
in July 1997. At the request of the Clinton Administration, S. 1121 and H.R. 2281
were introduced to implement the treaty obligations. The original bills proposed no
changes in the rights or limitations on rights of existing law, on the assumption that
existing law is consistent with the Treaty. The Administration’s implementation bills
did propose the creation of new protection against circumvention of anti-copying
systems and against removal or alteration of copyright management information. The
bills made technical amendments relating to treaty relationships and the eligibility of
foreigners to claim copyright in the U.S.
Alternative implementation bills, S. 1146 and H.R. 3048, were also introduced.
These bills differed in important respects from the circumvention and CMI
protection proposals of the Administration bills. S. 1146 also proposed amendments
relating to OSP copyright liability, ephemeral copying, fair use, and distance
learning. H.R. 3048 tracked many of the provisions in S. 1146 except for OSP
liability, and added other provisions on the first sale doctrine and “shrink-wrap”
Copyright owners, authors, publishers and other producers/disseminators of
copyrighted works originally urged implementation of the WIPO Copyright Treaty
based upon enactment of the minimal changes proposed in S. 1121 and H.R. 2281
as introduced. These content providers initially argued that United States law is
already consistent with the Treaty with respect to exclusive rights and limitations on
rights. They favored early ratification and enactment of the bills to send an
appropriate signal to other countries, which would encourage them to adhere to the
Treaty and generally upgrade protection for the use of copyrighted works in
electronic, digital environments.
Groups representing the telecommunications and electronics industries,
libraries, and other educational interests generally support the ratification of the
WIPO Copyright Treaty in principle, but only on the basis of implementing
legislation that addresses their concerns about OSP liability, fair use, distance
learning, ephemeral copying, and other issues concerning use of copyrighted works
on the Internet and in electronic environments. They argue that United States law is
not settled concerning the scope of rights and limitations on rights in digital,
electronic environments. It is asserted that these issues must be addressed in
legislation rather than through judicial decision-making. S. 1146 and H.R. 3048
responded to many of the concerns of these groups.
Through the legislative process of hearings, debate, consideration, and
amendment, the original implementation bills have been substantially modified. S.
2037 has replaced S. 1121. As amended, S. 2037 and H.R. 2281 have passed the
Senate and House of Representatives, respectively, under the short title of the
“Digital Millennium Copyright Act of 1998.” The bills have many common
provisions, but also differ in significant respects.
The bills embody a consensus agreement by private sector interests concerning
online service provider copyright liability. Other amendments: declare that nothing
in the anti-circumvention provisions enlarges or diminishes the existing doctrines of
vicarious or contributory infringement or affects existing defenses such as fair use;
clarify that electronics manufacturers have no obligation to design consumer products
to achieve protection against circumvention; expand the exemption of 17 U.S.C. 112
relating to ephemeral copying by broadcasters to apply in digital contexts and to
override the anti-circumvention measures of the copyright owner under certain
conditions; expand the exemption of 17 U.S.C. 108 for libraries and archives to
preservation activities in digital formats; protect personal privacy interests on the
Internet; provide exceptions from the anti-circumvention provisions (i) for computer
interoperability, (ii) for libraries and nonprofit educational institutions in making
purchasing decisions, and (iii) with respect to the right to control access by minors
to the Internet; except law enforcement and intelligence activities from the anti-
circumvention and CMI provisions; and direct the Copyright Office to study and
report on distance learning and on the liability of nonprofit educational institutions
and libraries when they provide online service to patrons.
H.R. 2281 includes additional amendments concerning the issues of
circumvention of technological measures, fair use, the first sale doctrine, and
encryption research. Moreover, H.R. 2281 adds two new forms of intellectual
property protection — 15 years of misappropriation-style protection for databases
that are not eligible for copyright and 10 years of design protection for designs of
boat hulls. These proposals were not considered part of the WIPO treaties
implementation issues until Titles V and VI were added to the bill as passed by the
It appears that compromises have been reached on formerly contentious issues
such as OSP liability, the anti-circumvention provisions, and several issues of
concern to libraries and educational institutions. Except for the inclusion in H.R.
2281 of Title V (“Collections of Information Antipiracy Act”) and Title VI (“Vessel
Hull Design Protection Act”), it seems likely that both copyright users and copyright
owners are in general agreement on enactment of WIPO treaties implementing